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Wednesday, 30 January 2008

London Agreement: 1 May 2008

Further to the IPKat's post yesterday, he has now received reliable information from impeccable sources that the London Agreement will be entering into force on 1 May 2008. The French instrument of ratification, the final hurdle to getting the agreement going, was indeed deposited yesterday (29 January). Expect to see official confirmation shortly from the EPO (and their status page here).

11 Feb update: The EPO have now published a useful list of 'key points' regarding the countries in which the London Agreement will enter into force, and what will be required as from 1 May 2008.

21 comments:

Filemot said...

I think we can rely on a UKIPO press release
http://www.ipo.gov.uk/press/press-release/press-release-2008/press-release-20080130.htm.
Now we need to start encouraging those countries who aren't signed up that it really is worth it

David said...

What's interesting about the UK-IPO's approach is that the requirement to file translations will effectively be ending as from this Friday, due to the 3 month requirement under rule 56.

Gobhicks said...

David, would you care to elaborate on that? Do you mean that a patent granted on 1 Feb won't need a translation? If so, why?

David said...

Quoting from the UK-IPO's press release:

"Applicants for European patents which designate the UK will be able to take advantage of the three-month period for filing translations with the UK-IPO, see Patents Rules 2007, Rule 56(6), meaning that translations will not need to be filed with the UK-IPO for European patents granted from 1 February 2008: three months prior to the date of entry into force. Any translations filed within this three month period will continue to be dealt with according to the current law. The UK-IPO will publish detailed guidance for practitioners shortly."

Does that make it clear enough, or am I missing something?

Gobhicks said...

Sorry David - foolishly I read the Rule instead of the Press Release, the latter being less ambiguous but lacking the weight of statutory authority. In my defence, I had a definite idea in my head that the London Agreement would only apply to patents granted from the date of entry into force - I'll need to check where that idea came from.

If nothing else, it shows that posting comments from work at the end of a hard day isn't necessarily a better idea than doing so in the wee small hours of a Friday night/Saturday morning...

Anonymous said...

I think Gobhicks' idea comes form the London Agreement itself, Article 9:
"This Agreement shall apply to European patents in respect of which the mention of grant was published in the European Patent Bulletin after the Agreement entered into force for the
State concerned."
I for one will arguing that any patent granted in German before 12st May and for which no translation was filed is void (unless of course it's my client's).

Bill said...

London Agreement Art 9:
Scope
This Agreement shall apply to European patents in respect of which the mention of grant was published in
the European Patent Bulletin after the Agreement entered into force for the State concerned.
I shall be arguing that any patent in French or German granted before 1st May and not translated into English is void. Unless its my client's.

Anonymous said...

Art 9 of London Agreement
Scope
This Agreement shall apply to European patents in respect of which the mention of grant was published in
the European Patent Bulletin after the Agreement entered into force for the State concerned.
So I'll be arguing any patent granted in German before 1st May for which no translation was filed is void. Unless its my client's.

Gobhicks said...

Further to my last comment, Article 9 of the London Agreement does say:

Article 9
Scope
This Agreement shall apply to European patents in respect of which the mention of grant was published in the European Patent Bulletin after the Agreement entered into force for the State concerned.

... which is pretty clear, but I guess it doesn't stop any State applying it to earlier granted patents.

At least I'm not losing my mind completely.

Anonymous said...

I can't believe the UKIPO press release is right. Sounds like a really dodgy intepretation of the interplay between the London Agreement and Rule 56.

We all know how good the UKIPO's recent track record in interpreting the law has been (Astron Clinica, anyone?)

Bill said...

Sorry, I'll get the hang of posting comments eventually.

Anonymous said...

Just heard from the UKIPO:

Their press release IS correct, but only because the UK did not implement article 9 of the London Agreement and therefore these transitional provisions do not apply under UK law.

Instead, since Section 77 ceases to have effect on 1 May by virture of Rule 56, no translations will be necessary after on or after 1 May, so any patent granted on or after 1 Feb will not require a translation.

I'm informed that there aren't any other provisions of the LA that the UK hasn't implemented, so no more surprises there.

Bill said...

If Section 77(6) really ceases to have any effect on 1st May, then surely that repeal must apply for all time in the past. Thus a failure to file a translation required, say six months ago, will no longer matter. The patent is now void, but will spring back into life if it hasn't lapsed in the meantime for failure to renew it.

Anonymous said...

My thoughts exactly, Bill

But the UKIPO were quite convinced of their position and slightly frustrated by the apparently high number of queries they've had this morning.

Apparently, for full information you need to read up on the consultation the UKIPO did on the LA where it was decided that the UK should have more advantageous transitional provisions than were explicitly laid out in the LA itself.

That consultation is here:http://www.ipo.gov.uk/policy/policy-issues/policy-issues-patents/policy-issues-patents-london.htm

Gerontius

Anonymous said...

The EPO status page for the London Agreement (http://www.epo.org/patents/law/legislative-initiatives/london-agreement/status.html) notes that:

for Denmark, "The date of deposit of the instrument of ratification and thus of entry into force of the amendment to the Patents Act will be decided by the competent minister"; and

for Sweden, "the date of deposit of the instrument of ratification and thus of entry into force of the amendments to the Patents Act will be decided by the Government".

Can any Danish or Swedish attorneys out there advise whether this means that it is not yet certain that the London Agreement takes effect in those countries on 1 May 2008? Is it still subject to a politician's decision / whim whether to get round to it on time?

Anonymous said...

Does anybody have information as to what prescribed languages have been chosen for the countries not having an EPO language as their official language? No they actually require the claims to be translated?

Thanks.

Anonymous said...

I can't get the link to the UKIPO press release to work - "You have been referred to a page that no longer exists from another website" - or find it on their site.

Has it been pulled or am I looking in the wrong place?

Rainer said...

The Swiss have the same liberal ruling (see http://www.ige.ch/d/jurinfo/j10008.shtm, sorry in German only).

The Germans have a problem, because the implementing law of 2003 is wrong (see http://www.bgblportal.de/BGBL/bgbl1f/bgbl103s2470.pdf, again sorry for the language, but there is no translation needed). Under current German Law, the London Agreement will enter into force in Germany on September 1, 2008, while the 3-months-term for German after May 1, 2008 would expire on August 1, 2008. I heard they are repairing now.

What else is crazy in other countries?

Bill said...

Here's what the (then) UK Patent Office said in 2005:

"5. The new legislation aims to enact the provisions of the Agreement on Translations, in a way that ensures that the reciprocal nature of the Agreement is
maintained. The Patents (Translations) Rules 2005 [effecively identical to the corresponding rule in the Patents Rules 2007] therefore will only come into effect when the Agreement as a whole enters into force. Under the provisions of
the Agreement, this will occur three months after eight states, which must include the UK, France and Germany have ratified. Until this "appointed day," applicants
will still have to file such translations if they wish to obtain protection in the UK."
Now they've changed their tune to "three months before the appointed day - or five months, if you get an extension of time"

David said...

I hate it when the Patent Office change their URLs for no apparent reason. Clearly press releases are only there for a limited period. Here are the details of the UK implementations. How long this link will stay active I have no idea.

Gobhicks said...

Bill said, above: "If Section 77(6) really ceases to have any effect on 1st May, then surely that repeal must apply for all time in the past. Thus a failure to file a translation required, say six months ago, will no longer matter. The patent is now void, but will spring back into life if it hasn't lapsed in the meantime for failure to renew it."

The answer to this seems to be in 77(7): "Where such a translation is not filed, the patent shall be treated as always having been void.", which is unaffected by the London Agreement/77(9).

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