This paper describes part of the European Patent Office procedures for obtaining a patent in any of the European member countries that an applicant designates. The paper has a special focus on the effect of Article 65 of the European Patent Convention on the patent granting procedures. Article 65 has a provision that allows for the publication of a European patent in a national language of a member state. Implications of this provision and how they impact the granting of patents in member countries are presented. Further implications to an information professional, librarian or patent applicant, which impact the status of a patent as well as the search and retrieval of patent information are also given and illustrated clearly.
Stephen Adams
Managing Director, Magister Ltd., United Kingdom
[email protected]
Abstract
This paper describes part of the European Patent Office procedures for obtaining a patent in any of the European member countries that an applicant designates. The paper has a special focus on the effect of Article 65 of the European Patent Convention on the patent granting procedures. Article 65 has a provision that allows for the publication of a European patent in a national language of a member state. Implications of this provision and how they impact the granting of patents in member countries are presented. Further implications to an information professional, librarian or patent applicant, which impact the status of a patent as well as the search and retrieval of patent information are also given and illustrated clearly.
Keywords:
European Patent Convention (EPC) Article 65, Patent translations, European Patents, INPADOC, World Patent Index (WPI), Patent Databases, Information Retrieval, Patent families
Introduction
When it was created in the mid-1970’s, the European Patent Office was a significant development in the procedures for obtaining a patent in certain European countries. There was concern that a “super-office” could drive some of the national patent offices out of business. It was argued that the member states of the new Organisation were surrendering a certain amount of national sovereignty by allowing a centralised granting procedure for patents. Up to that point, the process of granting a patent had been the prerogative of each national state.
In return for this arrangement, the controlling legislation of the European Patent Organisation allows each member state to require that a granted European patent be translated into that state’s official language. The provision for requiring publication in the national language, which helps with the dissemination of the technical and legal information in the patent documents, was seen by some as a quid pro quo for the partial surrender of patent-granting functions. The European Patent Office has three official languages (English, French and German) and a granted European Patent can be issued in any one of these languages. This means that approximately 40% of all granted European Patents do not contain an English specification, although all granted patents have a set of claims in English.
The relevant section of the European Patent Convention is Article 65, and is given in its entirety in Table 1 below.
To a patent librarian or information specialist, this legislative Article has two important implications. Firstly, it means that when the notice of grant appears in the “European Patent Bulletin”, and subsequently in bibliographic databases such as Derwent’s World Patent Index or INPADOC, it is not the last word on whether that patent actually entered into force. If a given state has made national rules under Article 65, that state is entitled to declare a granted European Patent void in its territory unless the required translation is filed. The second important implication is that the English translations supplied by the patent proprietor under Article 65 will be available from national patent offices on request, eliminating the cost to customers of having to commission a translation of their own.
Procedures and Operations in the United Kingdom
Article 65 is not a compulsory requirement upon the member states. They do not have to implement national rules requiring translation if they do not wish to do so. In practice, nearly all of the member states have done so. In the case of the United Kingdom, the Patents Act 1977 at section 77(6)(a) requires that a granted European Patent in French or German be translated into English before it fully enters into force in the United Kingdom. Similar legislation is in force in the Republic of Ireland, under Irish national legislation, again requiring translation into English.
Most patent information specialists will be familiar with the idea that a European Patent application goes through a two-stage publication process. The first stage is the publication of the unexamined application, which happens approximately 18 months after the priority date. These documents carry a letter “A” suffix to the publication number. The entire text, including the claims, may appear in English, French or German. Many of the multi-national companies submit patent applications in English, but about 30% of the applications are published in German and 10% are in French.
After substantive examination, the text is published a second time as the granted patent. Granted patents carry a letter “B” suffix. The main body of the specification will be in the same language as the “A” document, although a full set of claims must be provided in all three languages. The front page of the “B” document contains a date of grant, which appears at INID field 45.
Under the United Kingdom legislation, the applicant has to go one step further to ensure that the patent enters into force in Britain, if their specification has appeared in French or German. The applicant must now provide an English-language translation of the entire text of the patent document. This is done at the applicant’s own expense and within the prescribed deadline. If the applicant fails to do this, the patent can be declared void ab initio, in other words treated as if it has never been granted in the United Kingdom. Since this process is a national step, rather than a European Patent Office one, the notification of compliance appears in the British “Patents and Designs Journal” rather than the “European Patent Bulletin”. At the present time, this step is poorly recorded in the bibliographic databases. Librarians and information professionals will find that they have to do a little more research in order to obtain this information.
Procedures Illustrated with a Specific Example
The sequence of events involved in a patent application, examination and granting procedures may be better described by using a specific example. The German company Hoechst A.G. filed a patent application at the European Patent Office on January 18, 1996, claiming German priority of January 30, 1995. The unexamined application was published on July 31, 1996, as document EP 0 723 949 A1. The front page of this is illustrated in Figure 1.
The publication was picked up by Derwent, and a new record created for the World Patent Index database, under accession number 1996-343479. The WPI and INPADOC records up to this point are shown in the first row of Table 2.
A close look at Figure 1 shows that the complete text of the specification is in German. This language was used during all the subsequent stages of substantive examination. After examination was completed, the document was republished as a granted patent, shown in Figure 2. This front page of the granted patent shows field (45), which has recorded the date of grant as April 26, 2000. Once again, the main text is in German, although at this stage the title is translated into all three official languages. Furthermore, as Figure 3 shows, the granted patent includes three sets of claims, with one in English.
As new family members are published, these get added to the WPI record. The new publications are shown in the second row of Table 2, up to the point when the European case reached grant. Once again, the INPADOC legal status record contains some additional intermediate stages, as well as the notice of grant in the form of the EP-B document. The INPADOC record has noted the reassignment from Hoechst to Aventis, which happened as a result of the merged company during the course of examination of the patent application.
In the United Kingdom, one further stage will be necessary to ensure that the patent is in force. A translation of the German text into English must be filed, usually within a period of three months from the date of grant of the patent. This can be extended under certain circumstances, on request. Once the translation has been filed, a notice appears in the British “Patents & Designs Journal” recording this fact. Figure 4 shows the page from the Journal with the relevant section. The sequence of dates is worth noting. The Journal issue is dated September 13, 2000. Within the section “Translations filed”, the journal notes that the English translation of EP0723949, now in the name of Aventis Research & Technologies, was duly lodged on August 17, 2000, approximately 1 month before – this is a fairly typical time lag. The date of filing is slightly longer than three months after the grant date of April 26, so clearly the applicant has applied for, and been granted, a short extension in the time allowed for filing.
As Table 2 shows, neither the World Patent Index nor the INPADOC records include mention of the filing of the English translation, although they do record similar events for Spain (the ES-T3 document in WPI and INPADOC), Italy and France (in INPADOC only).
Conclusions
For the English-speaking information specialist, inventor or researcher, knowing that this legislation is in force may help with document supply. In the specific example given, a request for either EP 723949 A or EP 723949 B will be met with a document written mostly in German. However, by stipulating that you require the post-grant translation of EP 723949 B lodged at the British (or Irish) Patent Office, you can obtain the entire specification in English at nominal cost – certainly much less than commissioning a new work. This patent family happens to contain a granted US equivalent, but this is not always the case.
As regards the legal standing of the granted patent, the definitive statement always rests with the national patent office. However, by obtaining information to see whether an Article 65 translation has been filed, you are brought one step closer to confirming whether the rights are in force than if you relied upon the simple notice of an EP-B grant.
Table 1: Article 65 of the European Patent Convention
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(1)Any Contracting State may prescribe that if the text, in which the European Patent Office intends to grant a European patent or maintain a European patent as amended for that State, is not drawn up in one of its official languages, the applicant for or proprietor of the patent shall supply to its central industrial property office a translation of this text in one of its official languages at his option or, where that State has prescribed the use of one specific official language, in that language. The period for supplying the translation shall end three months after the date on which the mention of the grant of the European patent or of the maintenance of the European patent as amended is published in the European Patent Bulletin, unless the State concerned prescribes a longer period. (2) Any Contracting State which has adopted provisions pursuant to paragraph 1 may prescribe that the applicant for or proprietor of the patent must pay all or part of the costs of publication of such translation within a period laid down by that State. (3) Any Contracting State may prescribe that in the event of failure to observe the provisions adopted in accordance with paragraphs 1 and 2, the European patent shall be deemed to be void ab initio in that State. |
Table 2: Development of WPI and INPADOC Records over Time.
DERWENT WORLD PATENT INDEX RECORD |
INPADOC RECORD |
| First stage, up to early publication | |
| Accession number : 1996-343479 Patent Family : EP-723949 A119960731 DW1996-35 C07C-045/36 Ger 9p DSR: AT BE CH DE ES FR GB IT LI NL SE |
Publication number : EP 723949 [EP-723949] Application number : EP 96100680/96 19960118 |
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DE19502805 A1 19960801 DW1996-36 |
19970402 EP/17P [+] Request for examination filed 970131 19980429 EP/17Q [+] First examination report 980313 19991013 EP/RAP1 Applicant reassignment (correction) Aventis Research & Technologies GmbH & Co. KG 20000426 EP/AK-B1 [+] Designated contracting states mentioned in a patent specification: AT BE CH DE ES FR GB IT LI NL SE 20000426 EP/B1 [+] Patent specification |
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|
|
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ES2145944 T3 20000716 DW2000-39 |
20000703 EP/ITF [+] IT: Translation for a EP patent filed IT: Ing. C. Gregorj S.p.A. 20000716 EP/REG; ES/FG2A ES: Definitive protection ES: 2145944T3 <ES> 20000804 EP/ET [+] FR: Translation filed |