Documents considered by the Committee on 15 September 2010 - European Scrutiny Committee Contents

2   Intellectual Property



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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

Legal baseArticle 118 TFEU; unanimity; consultation
Document originated30 June 2010
Deposited in Parliament6 July 2010
DepartmentBusiness, Innovation and Skills
Basis of considerationEM of 15 July
Previous Committee ReportNone; but see (31064) 13706/09: HC5-i (2009-10), chapter 6 (19 November 2009)
To be discussed in Council11/12 October
Committee's assessmentLegally important
Committee's decisionDo not clear; further information requested


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.


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.


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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