BUSINESS be. But it is still an extra cost that doesn't exist for applications for monolingual U.S. and Japan, for instance. Other even more profound areas that needed to be worked out during Community Patent negotiations were the questions of qualified courts, searches, and examinations. Currently patent disputes are handled by national courts in whichever country a P A T R I C I A L. S H O R T , C & E N L O N D O N dispute arises. A decision affects only that country; patent coverage in other countries, even under the European Patent, is T HAS TAKEN 3 0 YEARS, BUT LATE IN French. Only the relatively short claims unaffected. March, the European Union reached portion of the patent must be translated ina set of compromises that allows the esto all the EU member countries' languages. The Community Patent, however, will tablishment of a single patent valid for There are currently 11 official languages be treated as a single entity in a single marthe entire bloc. Not only will the new ket: An adverse decision by a court would within the EU, and that is set to rise to 19 system ease the process for companies and affect coverage throughout the EU when all the accession countries come in individuals seeking to obtain a patent, it over the next several years. The mind-bogAs Christopher Pett, partner with also promises to make the process signifigling prospect of mandatory translation of patent attorneys Frank B. Dehn & Co. in cantly less costly than it is now an entire patent into all those languages— London, puts it, the prospect of a Comas originally proposed for a Community munity Patent litigated as a single patent The cost of filing for a patent in the EU Patent—was a major obstacle, overcome can be daunting. "If you put everything in is expected to fall to about $27,000, from only by the compromise that just the claims one basket, and you lose a case, you've lost roughly $50,000 today, to obtain pan-EU of a patent would be fully translated. it all," he says. "Ifyour Europe-wide patent coverage. It costs only about $10,000 to is later challenged and lost, you have obtain a patent in the U.S., and EU offiBruce Alexander, a London-based partnowhere to go." cials hope that narrowing the cost differner with patent attorneys BoultWadeTenence will improve competitiveness in their nant, points out that a typical patent apOn the other hand, he adds, "ifyou stick region. plication is 20 pages with about three to the current system, which gives you individual national patents, the W h e n the Community Patent chances are that you will be able to system becomes a fact—probably exploit differences between the EU 2006 at the earliest—it will add a member countries if your patent is third tier to what is currently a twolater challenged and thus be able to tier situation in Europe. At the simkeep some protection. However, the plest level, patents can now be filed cost of this approach is significantin any one country through that ly more expensive." country's national patent office. The process can be duplicated for each The compromise: a dedicated country desired but requires meetCommunity Patent Court to be esing each country's own fees and filtablished in Luxembourg. The court ing in each country's language. will handle all disputes on community patents and will be staffed with Alternatively a company wishing judges and lawyers experienced in broader coverage can turn to the the field ofintellectual property UnEuropean Patent, administered by Alexander Pett ~ til it is functioning, however, varithe European Patent Office (EPO). The European Patent Convention (EPC) ous national courts will be designated as pages of claims. The European Commiswas signed in 1973 and now includes 27 patent courts, the same process that holds sion— the administrative arm of the EU— signatory countries, including non-EU for jurisdiction over EU-wide trademarks, estimates that claims translation should members. for example. be between $90 and $95 per page per language, he says. However, Pett predicts, "with the best Under this system, a patent applicawill in the world, even if the Community tion is filed in English, German, or Patent scheme started now, it would be at French. W h e n the application reaches HOWEYERp Alexander notes, Dutch exleast four to five years before any patents the point of approval, an applicant must perts —who have considerable experience designate the countries in which coverage with business translations—say the EC fig- were examined and granted. And litigation is desired. The entire patent must then ure is unrealistic: after translation, such le- wouldn't be much before 2010." be translated into the languages of those gal documents must be carefully checked Patent seekers have welcomed the countries. to make sure claims' meanings and nuances agreement that patent applications will be are the same, so the actual charge could be filed with EPO, which will handle ComUnder the newly agreed Community more like $160 per page. "Ifyou take $130 munity Patents and European Patents side Patent, one application will cover all EU per page as an average, times three pages by side. Existing rules on what can be member countries. Currently 15 nations, of claims times 19 languages, that's nearly patented will remain as they are. the EU will expand to 25 next year. The $7,500 per patent." That's much less, of basic patent will be filed in one of three EPO, established in 1978 inMunichuncourse, than translation of 20 pages would working languages: English, German, or der EPC, has proven its capabilities over
EUROPEAN PATENTS SET FOR REVAMP
Compromises clear path for lower cost patent valid for entire European Union
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the years, according to Alexander. W h e n EPO was set up, he says, "people were very leery of it. But they have now accepted it as a fairly good system. It has 25 years of experience and good examiners, so is worthwhile."
IN OTHER WORDS Translation weighs heavy in EU patent costs
$u.s. European Patent Convention3 U.S. Japan
FILING & SEARCH EXAMINATION FEES FEES
$1,450
$1,550
GRANT FEES
$775
RENEWAL TRANSLATION AGENFS COSTS FEES FEES
$18,130
$13,600
TOTAL
$18,360 $53,865
750 1,300 2,950 0 6,160 11,160 0 INVOLVEMENT of E P O in the 225 0 9,130 17,775 1,200 920 6,300 new patent system is particularly a Typical application, eight member states. SOURCE: European Commission pleasing to intellectual property specialists at the European Chemical Industry Council (CEFIC). According And when the new system is completthe uncertainty And it gives a full appeals to its statement welcoming the comproed, it will be introduced into the EU as a process. One could appeal to the EU Court mise agreement in March, "The chemical regulation, directly applicable to member of First Instance and then to the European industry greatly appreciated the decision countries, rather than as a directive that Court of Justice in Luxembourg." adopted by the member countries to give must be implemented country by country The EU approval is only the first official EPO a central role in the administration of As an EC statement puts it, "The unity of step in getting the Community Patent sysCommunity Patents and that it alone will the Community Patent could not be guartem off the ground. Discussions have now be responsible for examination of anteed by less binding measures." the applications and the grant of There are still issues regarding Community Patents." the Community Patent that the EC will have to overcome to enCEFIC is now urging the EC tice companies to seek the unito assign patent searches to EPO tary coverage. as well. "We have a concern that for some technical areas, it would For example, "the European not be sufficient just to run a comPatent has become an indispenputer search, for example—you sable tool for Bayer, and we are would still need some skill in using it a lot," points out Dietmar patent knowledge," one CEFIC Pressner, Bayer patent counsel. officiai says. "If the search is also done by Typically Bayer first makes a priority filmoved to an intergovernmental council, EPO, we think that would guarantee a high ing with the German Patent Office, then where details will be worked out. unified standard." files between 70 and 90% of all its patent 'We expect a draft regulation by the end applications with EPO. The direct use of of this year," Alexander says. The official As Adrian Samuels, a colleague of Pett's national offices, Pressner explains, "is limited version should be agreed upon and pubat Frank B. Dehn & Co., observes, "Now, to cases where the market is limited to onlished by mid-2004, he says, with a target a patent is purely a national right. In away, ly a handful of countries. An example would date for ratification ofmid-2005, "although that is a distortion of trade within the EU, be some applications specifically limited to the betting is running between 2005 and and creates uncertainties." The Commu2008; 2006 is probably realistic." nity Patent Court, he adds, "would remove car manufacturing. The major European car
"The European Union is now becoming a vast economic area, so this should be something that will make the entire patents process easier."
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producers are centered in Germany France, Great Britain, and Italy: In these rare cases, it would be economically favorable to choose the national route direcdy The cost advan tage for the European Patent usually starts with four to five countries." According to Bayer, the concept of a Community Patent has been favored for years throughout industry because the cost of a European Patent covering all counties has been significantly higher than, say, a U.S. or Japanese patent. This factor gives European companies a competitive disad vantage in their home market. Still, whether the system laid out in the draft agreement will make the Communi ty Patent attractive enough is open to ques tion, because translation costs and the allor-nothing risk ofpan-European coverage still loom large. "Even if one would find patent transla tors in all technical fields from—as exam ples—French into Latvian or Italian into Swedish, the costs will most certainly be higher than the current ones," Pressner says. 'Additionally, experience in France has shown that only about 2% of translat ed patents being stored at the French Patent Office are demanded by the public. It is therefore sad to see that the proposal of a translation only into English, German, and French seems to have been rejected." AT ONE POINT, according to Alexander, patent reform discussions focused on mod ifying the European Patent so that trans lation would be required only if a patent was taken to litigation. That would have significantly reduced patent costs. How ever, EC authorities seem to have finessed that proposal in favor of the Community Patent. So translation costs will continue to be a deciding factor, Alexander predicts. "The potential need to file translations of the claims into all community languages when the patent is granted may remain too great an economic hurdle for many individuals and small businesses to overcome," he says. Even small and medium-sized compa nies, however, can appreciate the concept of a Community Patent. Roger Moses, head of chemistry with the U.K. drug de velopment firm Key Organics, points out: "The general feeling we have is that the proposed legislation will make obtaining patents somewhat easier. It appears to us to make the process more straightforward and easier to use. The European Union," he points out, "is now becoming a vast eco nomic area, so this should be something that will make the entire patents process easier." • HTTP://WWW.CEN-ONLINE.ORG
