2 Intellectual Property
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11805/10
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| Draft Council Regulation on the translation arrangements for the European Union patent
Commission staff working document: Impact Assessment accompanying document to the Proposal for a Council Regulation on the translation arrangements for the European Union patent
Commission staff working document: Summary of the Impact Assessment accompanying document to the Proposal for a Council Regulation on the translation arrangements for the European Union patent
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| Legal base | Article 118 TFEU; unanimity; consultation
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| Document originated | 30 June 2010
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| Deposited in Parliament | 6 July 2010
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| Department | Business, Innovation and Skills
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| Basis of consideration | EM of 15 July
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| Previous Committee Report | None; but see (31064) 13706/09: HC5-i (2009-10), chapter 6 (19 November 2009)
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| To be discussed in Council | 11/12 October
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| Committee's assessment | Legally important
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| Committee's decision | Do not clear; further information requested
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Background
2.1 Currently, the European Patent Office (EPO) is able to
search, examine and grant patents in a single procedure for up
to 37 European States, with the applicant choosing which, and
how many, of the 37 states they wish to have patents for. Once
granted these are treated as a bundle of separate national patents
(commonly referred to as "European patents") which may
require translation into the respective language of each state
designated, as well as separate renewal and litigation procedures.
The EPO is not an EU body, it being established by, and granting
patents under, an intergovernmental agreement, the European Patent
Convention (EPC).
2.2 Unlike the Community Trade Mark and Community
Design systems, there is no EU-wide unitary system for patent
protection, nor is there any system of mutual recognition; a patent
granted for any one State in the EU is only applicable across
the territory of that State. In March 2000 it was agreed under
the Lisbon Agenda that there was a need for a unitary patent which
provides protection across the entire EU, this then being referred
to as a Community patent to distinguish it from existing European
patents. Community patents would also be granted by the EPO, and
would exist alongside European patents as well as national patents
granted by national patent authorities of Member States. A Community
patent would therefore give applicants a third option for obtaining
patent protection within the EU which may be simpler and more
efficient than using European or national patents when patenting
across Europe.
2.3 Discussions on a Regulation for a Community
patent stalled in 2004, most notably due to disagreement on patent
languages and translations. However, following the Commission's
2007 document "Enhancing the Patent System in Europe,"
discussions improved, and in December 2009 political agreement
was reached in the European Council on an EU patent Regulation[6]
(following the entry into force of the Lisbon Treaty there is
no longer a 'European Community' and so the Community patent was
renamed the 'EU patent'). The Regulation text on which Agreement
was reached does not, however, solve the languages and translations
issue, and specifies that this will be provided for in separate
legislation —the current proposed Regulation.
2.4 Translations represent a significant proportion
of the cost of patenting across Europe, and therefore agreeing
a business-friendly language solution is important. Translation
of the patent claims into all EU languages (then 12, now 23) was
rejected by industry in 2003 as too expensive, whilst translation
into only the working languages of the EPO (English, French and
German) was rejected by a significant minority of Member States
in 2009 as discriminatory. For this reason the then Swedish Presidency
removed language and translation requirements from the EU patent
Regulation text in order to achieve Agreement.
2.5 The translation requirements for "European
patents" (currently granted by the EPO) were reduced to a
certain extent with the entry into force of the London Agreement
on 1 May 2008. European patents must be filed in English, French
or German, with around 80% being in English. The London Agreement
is an optional scheme which, at present, has been ratified by
14 EPC states, including ten EU Member States. In short, this
means that no translation of a European patent description is
required in order for the European patent to come into force in
France, Germany, Latvia, Lithuania, Luxembourg, Slovenia, and
the UK, Furthermore, under the Agreement, Denmark, Netherlands
and Sweden simply require the description to be in English rather
than translated into their official language. For all European
patents the claims must still be provided in English French and
German, whilst for validation in the 17 EU Member States which
have not ratified the London Agreement, translation of the description
and claims into an official language of each country is still
required. The London Agreement is open for ratification by all
Member States and as such it is possible that the translation
requirements for European patents may be further reduced.
The document
2.6 Article 1 defines the subject
matter of the Regulation, and Article 2 provides
for definitions of the main terms used.
2.7 Article 3 provides that once
the specification of an EU patent is published in accordance with
Article 14(6) EPC, no further translation is required. Article
14(6) EPC provides that specifications of European patents are
published in the language of the proceedings (one of the three
EPO official languages in which the application for the patent
has been filed — English, French or German) and includes
translations of the claims in the other two official languages
of the EPO. This minimum requirement established in the EPC will
therefore also apply to EU patents, but no further translations
after the grant of the EU patent will be required. Article 3 also
specifies that in accordance with the EPC the EU patent specification
in the language of the proceedings (English, French or German)
will be the authentic text.
2.8 Article 4 requires that in
the case of a legal dispute the patent proprietor provides, at
the request and the choice of the alleged infringer, a full translation
of the EU patent into an official language of the Member State
in which either the alleged infringement took place or in which
the alleged infringer is domiciled. The patent proprietor shall
also provide a full translation of the EU patent into the language
of proceedings of the competent court in the European Union at
the request of that court. The costs of such translations shall
be borne by the patent proprietor.
2.9 Article 5 provides for an evaluation
exercise including a report on the implementation of the Regulation.
Not later than five years from the date of the entry into force
of the Regulation, the Commission shall present to the Council
a report on the operation of the translation arrangements for
the EU patent and, where necessary, make proposals for amending
the Regulation.
2.10 Article 6 provides that this
Regulation shall enter into force on the twentieth day after its
publication in the Official Journal of the European Union,
but shall apply from the date of entry into force of the Regulation
on the EU patent. Since the substantive legal provisions applicable
for the EU patent as a European intellectual property title would
be governed by the EU patent Regulation, but the translation arrangements
applicable for these patents would be regulated by the present
proposal, the two legislative instruments would have to be applied
jointly.
ACCOMPANYING MEASURES TO BE ESTABLISHED
Translations for the provision of patent information
2.11 Necessary arrangements shall be made between
the EU and the EPO to make machine translations of patent applications
and patent specifications available in all official languages
of the EU without additional costs for the applicants. Such translations
should be available on demand, online and free of charge on publication
of the patent application. They would be provided for purposes
of patent information and would not have legal effect.
Reimbursement of costs
2.12 European patent applications may be filed
in any language in accordance with Article 14(2) of the EPC. Where
the language of filing is not an official EPO language, a translation
of the application into one of the official languages of the EPO
must be provided, within a prescribed time period, so that the
application can be processed by the EPO. Under the current Implementing
Regulations of the EPC, applicants filing in a language not in
common with official languages of the EPO are eligible for a partial
reimbursement of the translation costs at various stages of the
procedure before the EPO by way of a fee reduction. This would
also apply to EU patents. However, with respect to applicants
for EU patents based in EU Member States, necessary arrangements
shall be made to provide not only for a partial, but for a full
reimbursement of the translation costs up to fixed ceilings. These
additional reimbursements would be financed from the fees of EU
patents collected by the EPO.
The Government's view
2.13 The Minister of State for Intellectual Property
at the Department for Business, Innovation and Skills (Baroness
Wilcox) submitted an Explanatory Memorandum on 15 July.
2.14 The Minister explains that, following entry
into force of the Treaty of Lisbon, the new legal basis, Article
118 of the Treaty on the Functioning of the European Union (TFEU),
confers specific powers on the EU to create uniform, EU-wide intellectual
property rights and to establish their language arrangements.
Previously this power had been invoked through Article 308 of
the EC Treaty.
2.15 The Minister says that inability to agree
on the languages of the Community/EU patent has been a longstanding
barrier to overall agreement on the patent. Translation of a whole
patent into a single language averages over £850, and translation
only of a patent's claims (which describe its legal scope) averages
over £200. As there are now 23 official EU languages, even
translations limited to a patent's claims, covering all EU official
languages, would be very expensive. This would have been the consequence
of the deal presented in 2003, and rejected in 2004, and which
was roundly opposed by industry.
2.16 The current proposal is for patents to be
published in one of the three working languages of the EPO (English,
French and German) and for a patent's claims to be published in
all three of these languages. Machine translations of the full
patent would be available in all 23 EU languages, and a special
translation system with a focus on technical language is being
constructed for this purpose. This approach aims to balance the
need for public information, with the need for low costs and legal
certainty given by a reduced language system. The Minister says
the UK Government supports this approach, due to the significant
cost savings over current translation requirements for European
patents, though it could support other efficient language regimes.
Many other Member States could also support this.
2.17 However, a number of Member States argue
that the proposed language regime is discriminatory and that it
favours a small number of languages. They also believe that this
will disadvantage the general public in those states whose languages
are not represented, as they will not be able to understand what
is covered by an EU patent.
2.18 With this in mind, the Commission and the
Belgian Presidency have indicated that they may seek agreement
under Enhanced Cooperation (agreement by fewer than 27, but at
least nine, Member States) should unanimous agreement not be achieved
at the Competitiveness Council in October. It is expected that
this would result in a unitary patent, but which would only be
valid in the EU Member States which sign up to Enhanced Cooperation.
2.19 The Minister explains that the UK's position
on Enhanced Cooperation in general is that any proposals will
be examined on a case-by-case basis to ensure that Treaty requirements
are rigorously applied, and that there are no (or minimal) impacts
on non-participating Member States. In the present case, it is
also important for any proposed package to achieve real benefits
for business, consumers and the economy. It should be borne in
mind that the fewer countries that are involved in any agreement,
the more limited any benefits would be.
2.20 In terms of costs, the Minister says that
the Commission's Impact Assessment shows that the proposed language
arrangement (Option 2) would provide savings in translation costs
over current arrangements. However, the potential saving for UK
business will not be clear until the Government has completed
a full Impact Assessment. That said, the overall implications
of an EU patent system will be wider than savings for business
from a reduced translation regime, and may include changes in
UK revenue from patent fees as well as any set up costs for a
European patent court.
2.21 As for timing, at present agreement on a
General Approach is expected to be sought at the 11/12 October
2010 Competitiveness Council. The timetable beyond this is unclear
at present, although it is possible that agreement to proceed
under Enhanced Cooperation may be sought at the December 2010
Competitiveness Council.
Conclusion
2.22 We thank the Minister for her Explanatory
Memorandum.
2.23 As with our predecessors, we see the
merit of the EU Patent, and of easing the translation burdens
associated with it. So we support this proposal, and give our
agreement, under paragraph 3(b) of the Scrutiny Resolution, to
the Minister voting in favour of a general approach on it at the
Competitiveness Council on 11/12 October.
2.24 We look forward to receiving a report
of that meeting, and an update on whether the enhanced cooperation
mechanism will be used if a general approach is not agreed.
2.25 We would also be grateful for sight of
the Government's impact assessment when completed.
2.26 In the meantime the proposal remains
under scrutiny.
6 The previous Committee cleared this proposal from
scrutiny on 19 November 2009 (see headnote). Back
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