Intellectual Property Unit: Patents (further information)

Background

The costs of translating a European Patent into the official languages of the Contracting States makes up a very sizeable portion of the costs of acquiring a European Patent. Having regard to these extensive translation costs the Paris Intergovernmental Conference of June 1999 mandated a Working Party on Cost Reduction to prepare a report to the Governments of the Contracting States showing how the translation costs for European patents into the official languages of the Contracting States could be reduced by approximately 50%. This working party produced the London Agreement on the Application of Article 65 of the European Patent Convention which was adopted by the Inter-Governmental Conference in London on 17 October 2000.

Current Requirements re Translation of European patents

Under Article 65 EPC any contracting state may require a translation of the text of a European patent into one of its languages if that language is different from the language in which the patent was granted. Currently, every EPC state apart from Luxembourg and Monaco require a translation of the specification to be filed with their national patent offices.

Requirements under the Optional Agreement

The Optional Agreement aims to liberalise the translation arrangements for European patents. The parties to the agreement undertake to waive, entirely or largely, the requirement for translations of European patents to be filed in their national language.

More specifically under this agreement any State having an official language in common with the European Patent Office (English, German or French) shall dispense with all the translation requirements provided for under Article 65 EPC, whilst maintaining the requirement to supply the claims in the three EPO languages provided for under Article 14 (7) EPC. Any States having no official language in common with the EPO shall retain the right to require a translation of the claims in one of its official languages; it shall dispense with requirements to translate the European Patent into one of its official languages if such a translation has been supplied in the EPO language prescribed by that state. European Patent claims will continue to be published in all 3 EPO languages.

Under the agreement States with English, French or German as an official language will dispense with translation requirements for the patent to come into effect after grant. Other states i.e. those who do not have English, French or German as an official language can require a translation of the description into the one of those three languages that they prescribe, while retaining the right to require a translation of the patent claims into their official language.

For the Agreement to come into force it must be ratified by eight states including the UK, France and Germany. To date 15 contracting states have deposited their instruments of ratification or accession including the three most frequently designated states, Germany, the United Kingdom and most recently France who signed on 29 January, 2008. The Agreement entered into force on 1 May 2008.

Advantages to Ratification

There will be advantages in the agreement for Irish investors seeking patent protection abroad in that they will no longer be required to furnish translations to the same extent as now in those countries who become a party to the Agreement. Clearly users who are applying for a patent covering the whole of Europe would like to be able to do that in one language, without having to file and pay for translations in each country concerned. However it should be noted that these advantages will accrue to Irish applicants irrespective of whether Ireland ratifies the Agreement, thus Irish applicants can avail of these benefits due to other countries having ratified the Agreement. In addition and having outlined such benefits other users, who may themselves have an interest in applying for patents, may want to have access to the legal and technical information contained in patent specifications specifically in the description, in a language which is relatively convenient for them.

Irish Position

The current situation is that Irish applications for European Patents file in English. The application is then processed in English and upon grant the EPO translates the granted claims into French and German. Depending on which countries the applicant is seeking protection in, the applicant must file translations of the complete specification in whichever countries are designated.

Section 119(6) of the Patents Act 1992 requires that where a European patent designates Ireland and is drawn up in either French or German, the specification of such a patent must be translated into English or Irish within a specified time limit for that patent to be validated in Ireland.

If Ireland was to ratify the Agreement the existing system would change as follows :

(i) Under Article 1(1) of the London Agreement, any state party to the Agreement which has an official language in common with the European Patent Office (EPO) i.e. French, English or German, will not be able to seek a translation under the terms of Article 65 (1) EPC. Ireland, having English as an official language would therefore have to dispense with the requirement to seek a translation of European patents drawn up in French or German. This would require a change to Section 119 of the Patents Act 1992 as amended by the Patents (Amendment) Act 2006.

The patent claims, which is that part of the specification which defines what is protected by the patent, and which have always had to be published in the three official EPO languages, will continue to be so published under the London Agreement.

Legislative Amendment

If Ireland ratifies the London Agreement, amendments to primary legislation will first be required in order to effect the necessary changes to Section 119 of the Patents Act 1992 as amended by the Patents (Amendment) Act 2006.

Regulatory Impact Assessment

The Department undertook a Regulatory Impact Assessment (PDF, 348KB) to consider whether Ireland should accede to the London Agreement. It concluded that Ireland should accede to the Agreement and subsequently Government approval was given to bring Ireland’s legislation in line with the provisions of the London Agreement. Preparation has now commenced to bring the proposed amendments to the Patents Act, 1992 before the Houses of the Oireachtas.

Introduction

Ireland has been a party to the European Patent Convention (EPC) and a member of the European Patent Organisation since 1 August 1992. The EPO is a non-EU institution with 35 European countries as Contracting States.

The executive arm of the Organisation, the European Patent Office, grants, in effect, a bundle of national patents for the Contracting States designated by the patent applicant. After grant, each becomes subject to the national law of the designated country in the same way as a national patent i.e. a European patent designating Ireland has the same effect as if it were a full-term patent granted by the Irish Patents Office.

The Convention, therefore, has very significant benefits for patent applicants in that it removes the need for them to make separate applications to the patent office of each State in which they desire to patent their inventions.

The Patents Act, 1992 enabled effect to be given to the European Patent Convention in national law.

Revision of European Patent Convention

The EPC was revised by a Diplomatic Conference on 29 November 2000. At the institutional level, the Administrative Council of the Organisation was authorised to adapt the EPC to international treaties and European Community law. To bring the European Patent Organisation more firmly within the political responsibility of the contracting states, a new Article 4A was inserted in the Convention stipulating that a regular conference of ministers be held. In addition to these institutional aspects, some amendments to substantive patent law were agreed. The Conference also approved amendments aimed at simplifying and streamlining the patent grant procedure before the European Patent Office, thereby ensuring greater legal certainty for applicants and patent proprietors. Many of the requirements were moved to the Implementing Regulations to facilitate easier amendment of these provisions.

The revised version of the European Patent Convention (EPC 2000) came into force on 13 December 2007. The Patents Act, 1992 was amended by the Patents (Amendment) Act 2006 to implement the changes brought about by EPC 2000 in national law. The provisions of the Patents (Amendment) Act 2006 consequent on the revision of the EPC commenced on 13 December 2007 as well as the ( Patents (Amendment) Act 2006 (Certain Provisions) (Commencement) Order 2007 (S.I. 761 of 2007).

• Amendments to give effect to certain provisions under the TRIPs Agreement;

• Amendments consequent on the revision of the European Patent Convention (EPC)

• Provisions to give effect to the Patent Law Treaty which was concluded under the auspices of the World Intellectual Property Organisation (WIPO),the UN agency which administers international treaties in the field of intellectual property

• Miscellaneous necessary amendments to intellectual property legislation, (Patents, Trade Mark, Design and Copyright), mainly by way of clarification or correction.

The Act was enacted as follows:

• Sections 1, 2(a), (f) and (g), 7, 10, 12, 15, 16, 18 to 25, 29(c)(ii), 31(c), 32, 34, 36 to 40 and 42 to 50 and 51 came into operation on the passing of the Act.
• Sections 2(b), (c), (d) and (e), 3, 4, 5, 11, 13, 14, 17, 29(a), (b), (c)(i) and (d), 31(a), (b) and (d), 33 and 35 came into effect on 13^th December 2007 to coincide with the entry into force of the revised European Patent Convention.
• Sections 6, 8, 9, 26, 27, 28, 30 came into effect on 21^st May 2009 coinciding with the commencement of the Patent (Amendment) Rules 2009, which bring Irish law into line with the provisions of the Patent Law Treaty.

Section 41: Registration of transactions affecting registered trade mark (which will amend section 29 of the Trade Marks Act 1996) is the only remaining section of the Act which has yet to come into effect.

A copy of Patents (Amendment) Act 2006 (PDF) is available on the Oireachtas website.