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Unitary Patent (UP) translation requirements
When requesting unitary effect for a granted European patent, the request for unitary effect must also contain a translation of the European patent. In particular:
Importantly, unlike the translations of the claims required when responding to a Rule 71(3) EPC communication, a full translation of the specification of the European patent is required. This includes the description, the claims and any drawings (i.e. any text contained in the drawings).
Also of note, according to the recitals provided with the relevant EU Regulation (Council Regulation (EU) No 1260/2012), the translation provided with the request for unitary effect should not be carried out by automated means, as these translations are intended to contribute to the training of the EPO translation engines.
A translation of an entire patent specification can often be costly, and as such it is helpful to consider the full spectrum of validations required when selecting the language of the European Union to be used with the request for unitary effect.
Translation Statistics and Commentary
Since the advent of the Unified Patent Court (UPC) and the ability to request unitary effect to obtain a Unitary Patent (UP), the EPO have helpfully recorded which languages have been used when submitting translations of European patents as part of the request for unitary effect. A link to this can be found here.
Therefore, it is possible to get a picture of what European Languages proprietors are placing the most commercial value on, or which provide the most utility.
Spanish
As can be seen from the statistics obtained by the EPO so far, almost a third of the translations provided when requesting unitary effect were in Spanish. This is particularly noteworthy as Spain is not a signatory to the UPC. However, this is permissible since the translation filed when requesting unitary effect is only required to be a language of the European Union and does not have to be that of a signatory of the UPC itself.
Further, a UP will not have any effect in Spain, and proprietors wishing to obtain patent protection in Spain based on their granted European patent must undertake the usual/traditional national validation procedures. As part of the national validation procedure in Spain, a full translation of the European patent into Spanish must be filed.
By translating the European patent into Spanish, the translation can be used to satisfy the translation requirements for both obtaining a UP (as Spanish is an EU language), and a Spanish national patent based on the granted European patent [i.e., an EP(ES)]. Spanish is also one of the most cost-effective translations to obtain.
Hence, for proprietors with an interest in obtaining a UP (to provide an element of pan-European protection), alongside nationally validated patents in other major EU territories (such as Spain), a translation into Spanish may be a particularly cost-effective solution.
English, French, and German
English has been a close second for number of translations, with almost a quarter of the translations provided when requesting unitary effect being in English. However, this may be somewhat misleading in terms of proprietor choice, as any European patent prosecuted in the EPO official languages of French or German must be translated into English, as noted above.
German and French also feature in the top five languages (currently 3rd and 5th respectively). However, this is possibly due to the fact that the EPO’s statistics on the geographical origin of proprietors, feature Germany and France as the top two individual EPO member states requesting unitary effect. As such, it may be easier, or of more use to proprietors, to obtain a full translation of the patent into German or French if the proprietor is based there.
Another notable mention – Polish
Polish is currently the 6th most used language for translations as part of a request for unitary effect.
Similarly to the situation with Spain above, Poland is not a signatory to the UPC. However, it is, of course, an EU country, such that a translation into Polish will satisfy the translation requirement for requesting unitary effect.
To obtain a national patent in Poland based on a granted European application [i.e. an EP(PL)] a translation of the application into Polish must be filed at the Polish national office. As such, for proprietors with an interest in obtaining a UP, alongside a nationally validated patent in Poland, then a translation into Polish may be a cost-effective solution.
What language should you choose?
Given the considerations discussed above, there can be strategic, and cost related, advantages to choosing carefully which translation language to use when filing a request for unitary effect.
As well as the extensive knowledge of Boult’s UPC Representatives, Boult’s dedicated European Patent Validations Group have decades of experience in processing national validations based on granted European patents. They have strong ties and working relationships with local firms and translation houses across Europe. Therefore, Boult is expertly placed to be able to advise you on which language you should use for your translations when requesting unitary effect and obtain such translations from tried and trusted providers.
For any more information please contact your usual Boult representative, or for general enquiries, please contact Boult@Boult.com