London Agreement (2000)

The London Agreement, formally the Agreement on the application of Article 65 of the Convention on the Grant of European Patents and sometimes referred to as the London Protocol, is a patent law agreement concluded in London on 17 October 2000 and aimed at reducing the translation costs of European patents granted under the European Patent Convention (EPC).[1] The London Agreement is an agreement between some member states of the European Patent Organisation,[1] and has not altered other language requirements applying to European patent applications prior to grant.

For other uses, see London Agreement (disambiguation).

London Agreement
Agreement on the application of Article 65 of the Convention on the Grant of European Patents
  Parties not requiring translation
  Parties requiring translation of the claims in the official language of the State under consideration
  Parties requiring the description in English, and the claims in the official language of the State under consideration
  European Patent Convention parties, which are not parties to the Agreement
Signed17 October 2000 (2000-10-17)
LocationLondon, United Kingdom
Effective1 May 2008
Conditionratification by eight states (including Germany, France and the United Kingdom)
Signatories10
Parties22
DepositaryGovernment of the Federal Republic of Germany
Citationshttps://www.epo.org/law-practice/legal-texts/london-agreement/status.html
LanguagesEnglish, French and German

The London Agreement entered into force on 1 May 2008.[2]

Background

Before 1 May 2008, once a European patent was granted or more precisely within three months[3] (or six months for Ireland[4]) from the date of grant, the patent had to be translated into an official language of each country in which the patentee wanted patent protection. If the translation of the European patent was not provided to the national patent office within the prescribed time limit, the patent was "deemed to be void ab initio in that State."[5] This situation still applies in the Contracting States wherein the Agreement has not entered into force.

This situation led to high translation costs for patent holders, reduced the incentives to apply for a European patent and, many argued, the situation was a burden on the competitiveness of the European economy, compared to the situation in the United States (see also EU's Lisbon Strategy).

Content

The agreement provides that Contracting States that have an official language in common with an official language of the European Patent Office, i.e. English, French or German, no longer require translation of European patents into one of their official languages. Other contracting states have to choose one of the official languages of the EPO as a "prescribed language," in which European patents have to be translated to enter into force in their country. They however keep the right to require translation of the claims in one of their official languages.

In addition, a Contracting State to the Agreement also keeps the right to require that, in case of a dispute relating to a European patent, a translation should be provided by the patentee in one of the official languages of the state.

The agreement has not altered other language provisions applying prior to grant of a European patent, such as the requirement that the claims of a European patent application have to be translated "in the two official languages of the European Patent Office other than the language of the proceedings" after receiving the communication under Rule 71(3) EPC indicating that the EPO intends to grant a European patent.

Implementation

The London Agreement entered into force for 14 countries on 1 May 2008, then for Lithuania as 15th contracting state on 1 May 2009,[6] for Hungary as 16th contracting state on 1 January 2011,[7] for Finland as 17th contracting state on 1 November 2011,[8] for North Macedonia as 18th contracting state on 1 February 2012,[9] and for Albania as 19th contracting state on 1 September 2013.[10] In September 2012, the Irish patent legislation was amended "paving the way for Ireland's accession to the London Agreement."[11] Namely, for European patents granted in French or German on or after 3 September 2012, the filing of a translation into English is no longer required in Ireland.[11][12] Formally, Ireland became the 20th contracting state to the London Agreement on 1 March 2014.[13] The London Agreement entered into force for Norway as 21st contracting state on 1 January 2015.[14] On 1 January 2017, Belgian law was amended "paving the way for Belgium's accession to the London Agreement."[15] Namely, for European patents for which the mention of grant was published in the European Patent Bulletin on or after 1 January 2017, the filing of a translation "into a Belgian national language" is no longer required in Belgium no matter the language of the patent.[15] Eventually, the London Agreement formally entered into force for Belgium as 22nd contracting state on 1 September 2019.[16]

The current implementation of the London Agreement is as follows:[2][17]

Implementation of the London Agreement in its Contracting States
States dispensing with translation requirements (Article 1(1) of the London Agreement) States requiring that the description of the European patent be supplied in the official language of the EPO prescribed by that state (as specified within the brackets) (Article 1(2) of the London Agreement) States dispensing with translation requirements for the description (Article 1(2) of the London Agreement) States requiring translation of the claims of the European patent into one of its official languages be supplied (as specified within the brackets) (Article 1(3) of the London Agreement)

Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland, United Kingdom

Albania (English), Croatia (English), Denmark (English), Finland (English), Hungary (English), Iceland (English), Netherlands (English), Norway (English), Sweden (English)

Latvia, Lithuania, North Macedonia, Slovenia

Albania (Albanian), Croatia (Croatian), Denmark (Danish), Finland (Finnish), Hungary (Hungarian), Iceland (Icelandic), Latvia (Latvian), Lithuania (Lithuanian), North Macedonia (Macedonian), Netherlands (Dutch), Norway (Norwegian), Slovenia (Slovenian), Sweden (Swedish)

European patent law
European Patent
Organisation
European Union
Eurasian Patent
Organization
Centralization
and harmonization
Historical proposals

Pursuant to article 9 of the Agreement, the regime applies to European patents in respect of which the mention of grant was published on or after 1 May 2008. The new language regime however already applied for Switzerland, Liechtenstein and the United Kingdom to European patents granted on or after 1 February 2008.[2] Germany had some trouble with the implementation of the London Agreement. The original implementation bill was flawed due to miscalculations of the date of entry into force of the new translation requirements for European patents designating Germany.[18] A new implementation bill was then published on 11 July 2008. The old translation requirements are no longer applicable in Germany retroactively as of 1 May 2008.[19]

On 14 April 2010, the Court of Appeal of Paris, France, issued 24 similar court decisions, holding that, since France has ratified the London Agreement, no translation in French needed to be filed at the French Patent Office (INPI) with respect of European patents maintained as amended after opposition proceedings, and that this applied also to European patents maintained as amended for which the original mention of grant has been published prior to the entry into force of the London Agreement.[20][21][22] The French Court of Cassation upheld these decisions in November 2011.[23][24]

History

The Agreement resulted from a process started at the Paris Conference on 24–25 June 1999, an intergovernmental conference of the member states of the European Patent Organisation held in Paris at the invitation of the French government.[25] The conference adopted a mandate setting up two working parties with the task of submitting reports to the governments of the contracting states on reducing the cost of European patents and harmonising patent litigation.[25] The first working party eventually led to the London Agreement while the second led to the proposed European Patent Litigation Agreement. More precisely, the first working party was instructed to draft an "optional protocol to the EPC, under which its signatory states undertake not to require the translation of the description of the European patent, provided that it is available in English... [or alternatively] provided that it is available in one of the official EPO languages as designated by each signatory state".[25] The name "London Protocol" is sometimes used to refer to the London Agreement, because the initial mandate mentioned a Protocol, rather than an Agreement.[notes 1]

The approval of the London Agreement by the French Senate (amphitheater pictured), on 9 October 2007 was the last major step (not counting the deposit of the ratification instruments) before its entry into force.

The Agreement was then adopted at the London Conference of 2000,[1] followed by a seven-year ratification process. On 18 April 2007, at the European Patent Forum in Munich, Germany, Angela Merkel said that she and German Justice Minister Brigitte Zypries would fight to see the London Agreement realised.[27] She called the London Agreement "an important step in the right direction".[27]

This agreement was signed by 10 countries, namely Denmark, France, Germany, Liechtenstein, Luxembourg, Monaco, Netherlands, Sweden, Switzerland and the United Kingdom. To enter into force, the deposit of instruments of ratification by at least eight countries, including at least France, Germany and the United Kingdom had to take place. Up to now, Monaco, Germany, United Kingdom, Switzerland, Netherlands, Liechtenstein, Luxemburg, Denmark, and France have deposited their instrument of ratification to the London Agreement while Slovenia, Iceland, Latvia and Croatia have deposited their instrument of accession (accession is also taken into account for the entry into force of the agreement). Sweden ratified on 29 April 2008.[28]

Since France deposited its instruments of ratification on 29 January 2008, the agreement entered into force on 1 May 2008.[2]

The ratification of the London Agreement by France, which for some time was the last missing step for the Agreement to enter into force, followed a number of steps, including the recommendation in May 2006 by the French National Assembly and the French Senate to adopt the Agreement,[29] the approval by the French Constitutional Council,[30] the announcement in August 2007 by the new Prime Minister François Fillon that the London Agreement would soon be ratified,[31] the approval by the French Council of Ministers,[32] and eventually the adoption by the National Assembly and the Senate of the ratification act on 26 September 2007 and on 9 October 2007 respectively.[33][34][35][36]

Notes
  1. Similarly, the European Patent Litigation Agreement (EPLA) was called "European Patent Litigation Protocol" before being renamed "European Patent Litigation Agreement" for reasons of international law.[26]

References
  1. European Patent Office (EPO) web site, London Agreement to enter into force in first half of 2008, News, 11 September 2007.
  2. "London Agreement: Key points". European Patent Office. Retrieved 1 May 2008.
  3. Article 65(1) EPC
  4. EPO web site, "National law relating to the EPC (14th edition)", IV. Translation requirements after grant, Ireland, 4. Consulted on 13 March 2010.
  5. Article 65 EPC
  6. Lithuania accedes to the London Agreement, EPO web site, Updates, 27 May 2009. Consulted on 28 May 2009. See also EPO, Lithuania accedes to the London Agreement, EPO Official Journal 6/2009, p. 398.
  7. Hungary accedes to the London Agreement, EPO web site, Archive, 27 October 2010. Consulted on 3 November 2010.
  8. Finland accedes to the London Agreement, EPO web site, 4 October 2011. Consulted on 6 October 2011.
  9. Former Yugoslav Republic of Macedonia accedes to the London Agreement, EPO web site, 25 November 2011. Consulted on 1 December 2011. Former Yugoslav Republic of Macedonia accedes to the London Agreement, EPO Official Journal, 1/2012, page 2.
  10. "Albania accedes to the London Agreement, EPO Official Journal 8-9/2013, p. 404" (PDF). EPO.org. European Patent Office. Retrieved 12 September 2013.
  11. "London Agreement – Ireland dispenses with the translation requirements under Article 65 EPC". News. European Patent Office. 17 September 2012. Retrieved 2 October 2012.; Ireland dispenses with the translation requirements under Article 65 EPC, EPO Official Journal, 10/2012, page 510.
  12. "London Agreement – Changes to Patents Office Practice and Procedures". News. Irish Patents Office. 19 September 2012. Retrieved 2 October 2012.
  13. "Ireland accedes to the London Agreement (OJ EPO 2014, A18)". epo.org. European Patent Office. 28 February 2014. Retrieved 9 March 2014.
  14. "Norway accedes to the London Agreement (OJ EPO 2014, A105)". European Patent Office. 28 November 2014. Retrieved 29 November 2014.
  15. "Belgium dispenses with the translation requirements under Article 65 EPC". Official Journal of the European Patent Office. European Patent Office (2016/12): A99. 23 December 2016. Retrieved 7 January 2017.
  16. "Belgium accedes to the London Agreement (Official Journal EPO 2019 A71)". epo.org. European Patent Office. 30 August 2019.
  17. The London Agreement has entered into force Archived 12 June 2011 at the Wayback Machine, Swedish Patent and Registration Office, 7 May 2008. Consulted on 13 May 2008.
  18. Axel H Horns, London Agreement and IPRED-1 in the German Parliament, BLOG@IP::JUR, 14 April 2008. Consulted on 1 May 2008.
  19. (in German) Deutsches Patent- und Markenamt (DPMA), Londoner Übereinkommen – Aktualisierter Hinweis zur Umsetzung des Londoner Übereinkommens im nationalen Recht, 17 July 2008. Consulted on 26 July 2008. See also actual implementation bill: (in German) Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums, Bundesgesetzblatt BGBl I p. 1191 of 11 July 2008 (pdf).
  20. Judgments of 14 April 2010 by the Paris Court of Appeal, division 5, 1st chamber, in Official Journal EPO 10/2010, p. 556.
  21. (in French) Laurent Teyssedre, "INPI : ne traduisez plus !", Le blog du droit européen des brevets, 2 June 2010. Consulted on 13 June 2010.
  22. (in French) Faustine Chaudon, Traduire ou ne pas traduire un brevet européen modifié après opposition ? Application immédiate du nouvel article L. 614-7 du CPI, Institut de Recherche en Propriété Intellectuelle Henri-Desbois (IRPI), Lettre d'information n° 36, Mai 2010, dated 29 April 2010. Consulted on 13 June 2010. See also (in French) CA Paris, Pôle 5 ch. 1, 14 avr. 2010, Société Unilever NV c/ Directeur de l'INPI – 1.
  23. (in French) Cass. com., 2 Nov. 2011, pourvoi n° 10–23.162, Rolls-Royce Plc. c/ Directeur général de l’INPI.
  24. (in French) Benoit Galopin, L’accord de Londres s’applique à un brevet européen délivré avant son entrée en vigueur mais modifié ensuite, La lettre d'information de l'IRPI, 10 November 2011. Consulted on 2 December 2011. (Archived version)
  25. European Patent Office, Intergovernmental conference of the member states of the European Patent Organisation on the reform of the patent system in Europe, Paris, 24 and 25 June 1999, OJ EPO 8–9/1999, pp. 545–553.
  26. Swiss Federal Institute of Intellectual Property, European Patent Litigation Agreement (EPLA) Archived 17 September 2008 at the Wayback Machine, 18 November 2002. Retrieved 11 July 2006.
  27. EPO web site, "Patents are the future". Consulted on 20 April 2007.
  28. "London Agreement: Status". European Patent Office. Archived from the original on 6 June 2008. Retrieved 2 July 2008.
  29. Future patent policy in Europe, Public hearing, Consultation on future patent policy in Europe – preliminary findings, 12 July 2006, page 13.
  30. "La compatibilité de cet accord avec la Constitution a été confirmée par une décision du Conseil constitutionnel du 28 septembre 2006 (décision n° 2006-541 DC)." in (in French) Assemblée Nationale, Projet de Loi autorisant la ratification de l’accord sur l’application de l’article 65 de la convention sur la délivrance de brevets européens,, 24 August 2007, page 4.
  31. (in French) "Dans les prochains jours, nous annoncerons une réforme radicale du crédit impôt recherche pour que 100% des dépenses de recherche soient prises en compte. Parallèlement, on va (...) ratifier l'accord de Londres sur les brevets." in François Fillon ne veut "aucune mesure de durcissement du crédit", Le Monde, 21 August 2007.
  32. (in French) "Le projet de ratification du protocole de Londres sur les brevets européens a été approuvé vendredi par le Conseil des ministres..." and "En attendant, le gouvernement doit préciser la date à laquelle il soumettra le texte au vote du Parlement. Une fois voté, il sera alors officiellement ratifié par la France et le protocole de Londres entrera en vigueur." in Frank Niedercorn, Les industriels saluent la volonté du gouvernement de ratifier l'accord de Londres, Les Echos, 27 August 2007.
  33. (in French) Assemblée Nationale, Projet de Loi autorisant la ratification de l’accord sur l’application de l’article 65 de la convention sur la délivrance de brevets européens, 24 August 2007.
  34. EPO web site, French Assemblée nationale votes on the London Agreement, 27 September 2007.
  35. (in French) French Senate web site, Projet de loi autorisant la ratification de l’accord sur l’application de l’article 65 de la convention sur la délivrance de brevets européens, Consulted on 10 October 2007.
  36. (in French) EPO web site, L'Accord de Londres approuvé par le Parlement français, 10 October 2007.
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