Unitary Patent Language Requirements

IPPro Life Sciences_issue56In the following article, recently published in IPPro Life Sciences Magazine issue 56, Matthew Sekac from Park IP Translations takes a closer look at the unitary patent’s language requirements and how they may affect life sciences organizations in particular.

The download a pdf version of the full article, click on the following link: IPPro Life Sciences Magazine issue 56: Overcoming the Language Barrier – Unitary Patent’s Language Requirements.

After decades of fitful effort, the European Patent with Unitary Effect (“EPUE” or “Unitary Patent”) finally looks set to become reality.

Legal challenges brought by Italy and Spain have been defeated, and Italy joined earlier this year.  That leaves Spain and Croatia as holdouts, along with Poland, which signed on initially; however, has indicated that it will not ratify the agreement on the Unified Patent Court (UPC). In other words, Poland is effectively withdrawing participation.  While there are still details to be worked out and final ratifications are pending, indications are that the Unitary Patent could “open for business” as early as next year.

The Unitary Patent’s central objective is to make access to the European patent system simpler and less costly in large part by eliminating translation requirements. These requirements currently account for a significant proportion of the up-front costs associated with securing pan-European patent protection. This article looks at the Unitary Patent’s language requirements and how they may impact life science organizations in particular.

No More Patent Translations in Europe?

With an estimated quarter-billion US dollars spent annually on translations for EP Validation, the Unitary Patent should decrease spend significantly over time.  How quickly and to what extent, however, remains unclear.

The Unitary Patent will only be valid in EU member states, so applicants wishing to secure protection in countries that are EPC members and not EU members will still need to validate in those countries individually.  The same will be true for Croatia, Spain and Poland until they come on board, so the need for patent translations in Europe isn’t set to disappear completely.

It will be necessary, during a transitional period, to submit a full translation of Unitary Patent applications either into English (if the application was examined in French or German) or into any other official language of the EU.  For applicants currently validating in only a few countries, this may constitute an additional up-front cost.

The biggest source of uncertainty is how quickly and to what extent applicants will choose to participate in the Unitary Patent.  Many have expressed real concerns about “central revocation,” as well as doubts about how the new Unified Patent Court will function.  The regulations allow patent holders to continue filing “classical” European patents, and opt out of the UPC’s jurisdiction at any point during a seven year transitional period.  As a result, many of the practitioners we have spoken with expect to take a conservative “wait and see” approach.

A Double-Edged Sword for Life Science Companies

In assessing the potential impact of the Unitary Patent, life science companies are front and center.  Per the EPO, only 2% of granted European patents are validated in all 27 EU member states, and only 8% in 13 states or more.  Life science organizations likely account for the lion’s share of these.  Patent protection is a core business interest for R&D-driven life science companies as they tend to pursue the broadest scope of patent coverage.  An analysis prepared by the patent firm Reddie & Grose estimated that life science patents are validated in twice as many countries, on average, than granted European patents from other industries.

Life science applications tend to contain the highest volume of text for translation.  Taken together with broad filing strategies, the Unitary Patent would appear to present a tremendous opportunity to reduce costs.

The two edges to this sword both cut most sharply in the case of life science—and especially pharmaceutical—companies. This is based on the possibility of central revocation by the new Unified Patent Court. Under the current system, patents are litigated separately in national courts, so one jurisdiction’s finding of invalidity is not necessarily “game over” for the rest of Europe.  Under the UPC, a single court can invalidate a patent across all of the Europe in one fell swoop.  As it is commonly put, the Unitary Patent puts all of a patentee’s eggs in one basket.

The result for companies for whom the fundamental importance of patent protection necessitates broad jurisdictional coverage presents a challenge and opportunity.  These companies stand to realize the greatest benefit from reduced translation costs under the Unitary Patent, while availing themselves of that benefit potentially endangers that fundamentally important protection across Europe.

The prevailing attitude is to be cautionary.  In fact, several Park IP Translations clients already eschew European patents to avoid the possibility of central opposition, instead filing PCT national phase or direct national applications in each country separately.  After the transitional period, this will be the only option for organizations wishing to avoid the UPC’s jurisdiction.

A Deep Dive of the Unitary Patent’s Language Requirements

Issue of language was a major obstacle to the Unitary Patent and a central argument in Spain’s failed challenge before the EU’s Court of Justice.  Spain argued that “the contested regulation…establishes… a language arrangement which is prejudicial to individuals whose language is not one of the official languages of the EPO,” because they may be subject to sanction and damages for infringing patents that are not available in their country’s official language.

The EPO’s website implicitly acknowledges this concern: “the current requirement for translations… will be a thing of the past.  But inventors will still be able to obtain patent texts in their own languages,” using the EPO’s machine translation tool, “Patent Translate.”  The importance of this technology is expressed in the text of the Unitary Patent regulations (emphasis added):

In order to promote the availability of patent information and the dissemination of technological knowledge, machine translations … into all official languages of the Union should be available as soon as possible. Machine translations are a key feature of European Union policy. Such machine translations should serve for information purposes only and should not have any legal effect.

There is an apparent tension between those last two sentences.  High-quality machine translations are key to ensuring that economic actors have a reasonable means of accessing and understanding texts that confer rights on the community.  Machine translations should not have any legal effect—presumably because they cannot be relied upon to completely and accurately convey the complex and nuanced language of patents.  Sure enough, machine translations generated by the EPO’s “Patent Translate” engine contain this disclaimer:

“This translation is machine-generated. It cannot be guaranteed that it is intelligible, accurate, complete, reliable or fit for specific purposes. Critical decisions, such as commercially relevant or financial decisions, should not be based on machine-translation output.”

Economic operators, whose language is not one of the EPO’s official languages, will continue to have access to patent information and technical knowledge—but it will not necessarily be “intelligible, accurate, complete, reliable or fit for… [c]ritical decisions.”  Cast in that light, Spain’s objections look rather sympathetic.

These concerns look much more problematic in theory than they actually are in practice.  As the Court observed, “patents are generally administered by patent attorneys, who are familiar with other languages of the European Union.” Most organizations and individuals interacting with the patent system have functional knowledge of English, French or German.  Moreover, only a small proportion of European patent applications are currently translated into any language outside of the official three.  To be fair, machine translation isn’t quite being sold as a panacea. The goal is to enable everyone to get an idea for which patents might be relevant to their activities and merit further investigation.

The prevailing view is that Spain’s concerns do not outweigh the legitimate interests served by the Unitary Patent, though they have not gone entirely ignored.  “In order to protect economic operators who do not have a means of understanding…one of the official languages of the EPO,” the Council included provisions to ensure that “such operators, where they are suspected of infringement” will be able to obtain “a full translation” of the patent, and:

“In the event of a dispute concerning a claim for damages, the court… should take into consideration the fact that, before having been provided with a translation in his own language, the alleged infringer may have acted in good faith and may have not known or had reasonable grounds to know that he was infringing the patent. “

This suggests the possibility that the EPO’s machine translations might prove to be material after all.  If a lack of means for understanding patent texts in English, French or German is a viable defense against infringement claims, and it cannot be shown that an alleged infringer had such means, then the only basis for knowledge of a patent’s contents would be the EPO’s machine translation.  If that machine translation contains errors material to the allegedly infringing activities, then damages might be off the table.  The criteria for determining “good faith” or the exact consequences of such determination are unclear.

This scenario will surely be rare and it might merit consideration when patent protection is of critical importance.  As a translation provider, we obviously have a special interest in this aspect of the Unitary Patent. These finer points may offer some broader insight into the consequences of a major new initiative, and the uncertainty those consequences create for all of us.

Matt Sekac Park IPMatthew Sekac

For further information on the unitary patent and language requirements, contact Matthew Sekac, Senior Director of Strategy at Park IP Translations, a Welocalize company. Matthew.sekac@parkip.com

To download a full pdf version of the article, click here Overcoming the Language Barrier – Unitary Patent’s Language Requirements.

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