In Practice
"EPO and Montenegro sign extension agreement"
16 February 2009
"Macedonia accedes to the European Patent Convention"
Documents were added in december 2008.
"EPO and Montenegro sign extension agreement"
*The European Patent Organisation and Montenegro* have signed an agreement on the extension of European patents to Montenegro. The date of entry into force of the Agreement will be determined by a mutual exchange of notes between the Government of Montenegro and the Organisation later this year.
"Macedonia accedes to the European Patent Convention"
On 28 October 2008, the Government of the former Yugoslav Republic of Macedonia (MK) deposited its instrument of accession to the European Patent Convention (EPC).
The EPC will accordingly enter into force for the former Yugoslav Republic of Macedonia on 1 January 2009.
The European Patent Organisation will thus comprise the following 35 member states as from 1 January 2009:
Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, Norway, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland,Macedonia, Turkey and the United Kingdom.
European patent applications filed on or after 1 January 2009 will include the designation of the Macedonia.
Any PCT request filed on or after 1 January 2009 will automatically designate the Macedonia, as new EPC contracting state, for the purpose of obtaining a European patent.
The extension system will, however, continue to apply to all European and international applications filed prior to 1 January 2009, as well as to all European patents granted in respect of such applications.
The London Agreement enters into force in all participating member states of the European Patent Convention (EPC) on 1 May 2008. It will reduce the post-grant translation costs for European patents considerably and make patenting in Europe less expensive.
With the ratification of the London Agreement the participating states agree to largely or entirely waive the requirement for translations of granted European patents into their national languages.
As yet, the parties to the London Agreement are:
Croatia, Denmark, France, Germany, Iceland, Latvia, Liechtenstein, Luxembourg, Monaco, Netherlands, Slovenia, Switzerland, Sweden and the United Kingdom.
The majority of EPC-member states have not yet ratified the Agreement, but it is expected that some of the remaining states will sign up as soon as it comes into force. Austria opposes the Agreement and is not very likely to sign up it in the near future.
The current system
European patents are filed in one of the official languages of the European Patent Office (EPO) - English, French or German. For grant to occur, translations of the allowed claims into the other two languages are required.
After grant, the patent holder decides whether to validate the patent in one, several or all of the EPC-member states. Where the language of the proceedings is different from the official language of the state in which the patent is to be validated, currently a translation of the granted text must be filed for the patent to take effect. This step can be very expensive.
The "London Agreement" (2000)
With the London Agreement entering into force on 1 May 2008, post-grant translation costs for European patents will be reduced considerably. The London Agreement distinguishes between two groups of participating states:
(1) States having an official language in common with one of the official languages of the EPO dispense with translation requirements. No translation has to be filed in these states. Thus, no national publication fees and related attorney's fees have to be paid. Members of this group are France, Germany, Liechtenstein, Luxembourg, Monaco, Switzerland and the United Kingdom.
(2) All the other states require that a translation of the European patent claims into one of their official languages be supplied. In addition, these states may require that the description of the European patent be supplied in one of the official languages of the EPO.
2aThe following states require that the claims be supplied in their official language: Croatia, Denmark, Iceland, Latvia, Netherlands, Sweden and Slovenia.
2b The following states ask for an English description: Croatia, Denmark, Iceland, Netherlands and Sweden.
-In Denmark, Iceland, the Netherlands and Sweden, the European patent may also be supplied in the national language.
-The Latvia have not prescribed any language under Article 1(2) of the London Agreement
The translation of the claims as granted in the other two official languages of the EPO still has to be filed. In case of a dispute under a patent, all participating states reserve the right to demand a translation of the patent in the local official language of that state.
The Agreement will apply to all European patents for which the mention of the grant is published in the European Patent Bulletin after the agreement enters into force in the state concerned.
Effects for applicants
Patenting strategies should be revised taking into consideration the effects of the London Agreement. It might be advantageous to designate more contracting states that have dispensed with translation requirements in order to extend the scope of protection. However, the need to pay annuities in these states has to be kept in mind.
Since the status of the London Agreement will change frequently in the near future due to the possibility for member states of the EPC to opt into it at any time, it is advisable to check for changes before applying for a European patent and designating contracting states.
VLAHOVIC IP office will gladly provide you with further information on the latest developments in this matter.