Introduction
The London Agreement aims to reduce translation costs incurred after the grant of a European patent.  It will enter into force on 1 May 2008.  It will apply to all patents granted after the entry into force and there are various steps which can be taken now to try and ensure that allowed European applications are granted after the Agreement has entered into force to take advantage of the potential cost reduction.

Current Law
At present, when an application is allowed, it is necessary to file a translation of the claims into French and German (assuming that the application is in English).

After grant, most member states of the European Patent Convention (EPC) require the filing of a complete translation of the patent specification into the national language of the state in order for the patent to have effect in that state.

The preparation of these necessary translations can account for up to around 40% of the total cost of obtaining a European patent.

The London Agreement
Under the London Agreement, the member states of the EPC are divided into two types.

Countries having English, German or French as an official language

These countries will no longer require a translation of the patent specification in order to validate the granted patent in that country.

Countries having a language other than English, French or German as an official language

These countries will select one of these three languages (English, French or German) and will only require a translation of the patent specification into the selected language.  They may require a translation of the claims of the patent into their national language.

For all countries

It will still be necessary to file a translation of the claims into French and German (assuming that the application is in English) prior to grant.

It may be necessary to file a full translation of the patent specification into the national language of a country should the patent become the subject of a dispute in that country.

Countries signed up to the London Agreement
Signing up to the London Agreement is optional.  For countries not signing up, the current law will remain i.e. they may require full translation of the patent specification into their national language in order for the patent to take effect in their country.

So far, the following countries have approved the Agreement: 

Of these, UK, France, Germany, Liechtenstein, Luxembourg, Monaco and Switzerland have either English, German or French as an official language and therefore will require no translation of the specification for validation of the patent in their country.

Denmark, Iceland, Latvia, Netherlands, Slovenia, Croatia and Sweden do not have English French or German as an official language.  Denmark and Sweden have selected English as their language for translation but require translation of the claims into Danish and Swedish respectively.  Iceland and Netherlands are expected to select English (with Icelandic/Dutch claims) and we are still waiting to see what language Latvia, Slovenia and Croatia select.

Potential Cost Reductions
The potential translation cost reduction varies depending on which countries are selected for validation.

Of course, cost reductions will be greatest where the validation countries include those which have signed up to the London Agreement although these savings may be negated by the inclusion of validation countries having German/French as an official language and which have not signed up (see Example 4).

Examples are given below for an English language specification:

Example 1 – Validation in UK, France and Germany only

At allowance – translation of claims into French and German
At grant – no further translations needed

Cost savings – significant since translation of specification into French and German no longer needed   

Example 2 – Validation in UK, France, Germany, Italy and Spain

At allowance – translation of claims into French and German
At grant – translation of whole specification into Italian and Spanish

Cost savings – significant since translation of specification into French and German no longer needed   

N.B. Italy and Spain are not expected to join the London Agreement

Example 3 – Validation in UK, Germany, Denmark, Sweden, Finland

At allowance – translation of claims into French and German
At grant – translation of claims into Danish and Swedish, translation of whole specification into Finnish

Cost savings – significant since translation of specification into German, Danish and Swedish no longer needed.   

N.B.  Finland may join the London Agreement in due course

Example 4 – Validation in UK, France, Belgium, Germany and Austria

At allowance – file translation of claims into French and German
At grant – translation of whole specification into French (for Belgium) and German (for Austria)

Cost savings – none since translation of specification into French and German still required

N.B.  Belgium and Austria are not expected to join the London Agreement in the near future

Entry into Force
The London Agreement will enter into force on 1 May 2008 and will apply to all patents granted after that date.  This means that the London Agreement will apply to all applications recieving a Rule 71(3) communication (reporting allowance of the application) from now on.

What can Applicants do now?
It may be desirable to delay the grant of a pending European application to take advantage of the potential for reduced translation costs after grant.

If a Rule 71(3) communication has recently been received, it may be possible to delay grant until after the entry into force of the London Agreement by using the EPO’s further processing provisions.  This involves letting the application lapse (by failing to file claims translations into French and German (assuming the application is in English)) and then automatically reviving the application by payment of a modest fee within two months of receiving a lapse communication from the European Patent Office.

Of course this is only desirable if the potential translation cost savings are greater than the further processing fee.

Please ask your usual contact for advice on specific applications.

This information is simplified and must not be taken as a definitive statement of the law or practice.