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Wednesday, 23 July 2008

Good news for anyone who doesn't want to translate a European patent

The IPKat has received the following good news from Andy Cloughley (MSK Patents):

"You may recall that Germany slipped up in its implementation of the London Agreement, to the extent that it was accidentally due to come into force only on 1 September 2008.

Right: London celebrates in traditional style

We have recently been informed that the new law correctly implementing the London Agreement has now been officially published in the Bundesgesetzblatt and that it has entered into force with retroactive effect, as of 1 May 2008. This makes it definite that no translations need to be filed for any European patent for which the mention of grant was published on or after 1 May 2008.".

"Of course, this was widely expected", Andy adds, "but it's nice to know for certain". The IPKat knew it all along, of course. He couldn't tell anyone, though, because then they'd know how quickly he'd mastered German.

Retrospective legislation here
Earlier IPKat post and vast follow-up correspondence on 1 May and the London Agreement here

3 comments:

Birgit said...

Here a link to the German Patent and Trade Mark Office's (DPMA) press release in this regard:

http://www.dpma.de/service/aktuelles/londonerprotokoll/index.html

The implementing law was published in the Bundesgesetzblatt BGBl I p. 1191 of 11 July 2008

http://www.bgblportal.de/BGBL/bgbl1f/bgbl108s1191.pdf

Gerontius said...

I've seen advice from some sources that there is not 100% certainty of the validity of the German retrospective implementation of the London Agreement (LA). Consequently, a party seeking revocation of a (non-German-language) patent granted between 1 May and 11 July (or even 1 September) could apply to the courts to do so on the grounds that a translation into German was required but not filed.

Now, I'm 99.9% sure the German courts would give such an argument very short shrift, but I know some litigation-minded patent-holders that would prefer to remove even the possibility of such an attack on their patent.

There's a similar story in the UK where someone's "counsel" said that the UK(I)PO's interpretation of the UK implementation of the LA was wrong and that it didn't take effect from February 2008 as they thought. Any (non-English-language) patents granted between 1 February and 1 May therefore arguably require a translation and, if no translation was filed, the patent would be invalid.

I spoke with someone at the UK(I)PO about this and they said that part of their justification for their interpretation was that some research done into the LA for the UK(I)PO concluded that early implementation was good for the UK economy. I managed to find the research they were talking about and, yes, it said that the LA would be good for the UK. However, it also said that the LA should only be entered into at the same time as other countries. Otherwise, the UK would have discarded the requirement to file translations independently of the LA.

Basically, there's a lot of mess surrounding the London Agreement in the UK and Germany with conflicting opinions being mooted suggesting the potential for patents to be invalidated. Importantly, the "risk" associated with this potential is moderate; though the chance of a patent being found invalid is low (I would say vanishingly small) the damage resulting from such a finding would be high.

Has anyone else come across these problems as I'd be interested to know what approaches different attorneys and applicants are taking in view of these conflicting opinions and risks?

Birgit said...

The DPMA at least states on its website (... whether you can rely on this in a (German) court, is a different matter...) that 1 May 2008 is the cut-off deadline.

Patent granted and this published...

1) Up until 30 April 2008: translation needed

2) From 1 May 2008: no translation required and if a translation has been filed, the DPMA will not publish it.

Here the relevant part:

Nach den vom Bundestag beschlossenen Umsetzungsregeln fällt die Übersetzungspflicht in Übereinstimmung mit dem Londoner Übereinkommen für diejenigen europäischen Patente weg, bei denen der Hinweis auf die Erteilung am 1. Mai 2008 oder später im europäischen Patentblatt bekannt gemacht wird. Für Altpatente - d.h. für solche europäischen Patente, für die der Hinweis auf die Erteilung bis einschließlich 30. April 2008 im Europäischen Patentblatt veröffentlicht worden ist - bleibt die Übersetzungspflicht bestehen.

Das Deutsche Patent- und Markenamt wird daher Übersetzungen, die zu europäischen Patenten eingereicht werden, bei denen der Hinweis auf die Erteilung am 1. Mai 2008 oder später im europäischen Patentblatt bekannt gemacht wird, im Hinblick auf den rückwirkenden Wegfall des Übersetzungserfordernisses nicht veröffentlichen.

Link: http://www.dpma.de/service/aktuelles/londonerprotokoll/index.html

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