EU Regulation on translation arrangements for European patents with unitary effect
The translation arrangements for European patents with unitary effect are the subject of EU Regulation no. 1260/2012 of 17 December 2012 (see footnote 1). Basic position on translations for European patents with unitary effect Article 3(1) of EU Regulation no. 1260/2012 provides that:
- Without prejudice to Articles 4 and 6 of this Regulation, where the specification of a European patent, which benefits from unitary effect has been published in accordance with Article 14(6) of the EPC, no further translations shall be required."
Article 14(6) of the EPC provides:
- Specifications of European patents shall be published in the language of the proceedings and shall include a translation of the claims in the other two official languages of the European Patent Office."
Translations required in the event of a Dispute
Article 4(1)-(3) essentially provides that, in the event of a dispute, the patentee has to provide (at its own cost) a full translation of the unitary patent into an official language of the participating Member State where the alleged infringement took place or the Member State in which the alleged infringer is domiciled.
Effect of non-availability of a translation
However, Article 4(4) provides that "In the event of a dispute concerning a claim for damages, the court hearing the dispute shall assess and take into consideration, in particular where the alleged infringer is a SME, a natural person or a non-profit organisation, a university or a public research organisation, whether the alleged infringer acted without knowing or without reasonable grounds for knowing, that he was infringing the European patent with unitary effect before having been provided with the translation referred to in paragraph 1."
This provision could lead to enormous disputes – including trying to assess whether an infringer is, or is not, an SME.
Transitional measures for translations of European patents with unitary effect (see footnote 2)
Under Article 6 of EU Regulation no. 1260/2012, during a transitional period (of between six and twelve years from the date the Regulation starts to apply) a request for unitary effect made under Article 9 of Regulation no. 1257/2012 has to be accompanied by:
(a) where the language of the proceedings is French or German, a full translation of the specification of the European patent into English; or
(b) where the language of the proceedings is English, a full translation of the specification of the European patent into any other official language of the Union.
The objective is that high quality machine translations of patent applications and specifications into all the official languages of the EU, as developed by the EPO, should become available for use during this transitional period.
Translation compensation scheme
European patent applications may be filed in any language under Article 14(2) of the EPC. However a request for a European patent to have unitary effect must include a full translation into English (or, if already in English into any other official language of the Union – see above). Accordingly, a compensation scheme administered by the EPO is to be established for the reimbursement of all translation costs up to a ceiling for applicants filing patent applications at the EPO in one of the official languages of the Union that is not an official language of the EPO.
This compensation scheme will be funded through the renewal fees for European patents with unitary effect but will be available only for SMEs, natural persons, non-profit organisations, universities and public research organisations having their residence or principal place of business within a Member State.
Language of Court proceedings
The language of any Court proceedings is governed by the Unified Patent Court Agreement.
Court of First Instance
There are a number of alternatives when choosing the language for any proceedings, essentially as follows:
In a local or regional division:
- An official language of the hosting Contracting Member State or, if so designated by that State, one or more of the official languages of the EPO;
- The language in which the patent was granted (if approved by the panel – and if not approved the parties can request the case should be transferred to the central division);
- In the central division, the language in which the patent was granted.
Court of Appeal
The language of the proceedings in the Court of Appeal is the language of the first instance proceedings – although the parties may agree on the use of the language in which the patent was granted.
For both the Court of First Instance and the Court of Appeal, the parties may request interpretation facilities (although the request may not be granted).
See supplementary documents for further information on:
- A short introduction to the Unitary Patent and the Unified Patent Court
- The Unitary Patent
- The role of the EPO and financial provisions
- The Unified Patent Court
- Situations where the permanent long term provisions will not apply (including transitional provisions and opt-out)
- How valuable will the new regime be to your business?
- Developments since signature of the Unified Patent Court Agreement
1. Regulation EU no 1260/2012 of 17 December 2012 "implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements". Click here for the link.
2. These transitional measures for translations should not be confused with the transitional arrangements for the Unified Patent Court.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.