Section 80: Authentic text of European patents and patent applications

Sections (80.01-80.07) last updated April 2009.

Section 80(1)

Subject to subsection (2) below, the text of a European patent or application for such a patent in the language of the proceedings, that is to say, the language in which proceedings relating to the patent or the application are to be conducted before the European Patent Office, shall be the authentic text for the purposes of any domestic proceedings, that is to say, any proceedings relating to the patent or application before the comptroller or the court.

80.01

r.114 is also relevant.

The authentic text of a European patent or application therefor in proceedings before the comptroller or the court is the text in the language used in the EPO proceedings, except as provided for below see 80.02-07. (Where proceedings are instituted before the comptroller in relation to a European patent (UK) the specification of which was published in French or German, the party who institutes those proceedings is normally required to furnish a verified translation into English of the specification unless such a translation has already been filed under s.77(6). This also applies to the making a request of an opinion under section 74A. A party given leave to amend the specification during such proceedings must furnish a verified translation of the amendment into the language in which the specification was published).

80.01.1

a.70(1) is also relevant.

Since the authentic text of a European patent published in French or German is that in the language used in the EPO proceedings, the authentic text for the claims is the text of the claims in the language of the EPO proceedings. The translated claims of a European patent published in French or German which are filed under Article 14(6) are for information only.

Section 80(2)

Where the language of the proceedings is French or German, a translation into English of the specification of the patent under section 77 above or of the claims of the application under section 78 above shall be treated as the authentic text for the purpose of any domestic proceedings, other than proceedings for the revocation of the patent, if the patent or application as translated into English confers protection which is narrower than that conferred by it in French or German.

80.02

This sub-section became effective only when s.77(6) and s.78(7) were brought into force, see 77.13-14 and 78.11-12 respectively. Where the language of the EPO proceedings is French or German, an English translation of the specification under s.77(6) or of the claims under s.78(7) is treated as the authentic text if it confers protection narrower than that conferred by the French or German text. This provision does not apply to proceedings for the revocation of the patent.

Section 80(3)

If any such translation results in a European patent or application conferring the narrower protection, the proprietor of or applicant for the patent may file a corrected translation with the Office and, if he pays the prescribed fee within the prescribed period, the Office shall publish it, but - (a) any payment for any use of the invention which (apart from section 55 above) would have infringed the patent as correctly translated, but not as originally translated, or in the case of an application would have infringed it as aforesaid if the patent had been granted, shall not be recoverable under that section, (b) the proprietor or applicant shall not be entitled to bring proceedings in respect of an act which infringed the patent as correctly translated, but not as originally translated, or in the case of an application would have infringed it as aforesaid if the patent had been granted, unless before that use or the doing of the act the corrected translation has been published by the Office or the proprietor or applicant has sent the corrected translation by post or delivered it to the government department who made use or authorised the use of the invention or, as the case may be, to the person alleged to have done that act.

80.03

If a translation as referred to in 80.02 results in narrower protection being conferred by the European patent or application, the proprietor or applicant may file a corrected translation. In such a case it is the specific provisions of s.80(3) and r.57 that apply rather than the general provisions of s.117 Rhône-Poulenc Santé’s European Patent (UK) [1996] RPC 125. However, rights of the proprietor or applicant with regard to acts or use (including Crown use which, but for s.55, would constitute infringement) which would infringe in relation to the corrected translation but not in relation to the original translation apply only to such acts or use done after the date on which the corrected translation is published by the Office or sent to the potential infringer or government department in question by the proprietor or applicant.

80.04

r.57(2) & (6) are also relevant.

The corrected translation should be a corrected version, in duplicate, of the (4) whole of the specification or of the claims as the case may be. It should comply with the requirements as to presentation set out in of Schedule 2 of the Patents Rules 2007 (see 78.14). Where the translation includes drawings, they should correspond exactly in content and presentation to those published by the EPO except that any textual matter should be replaced by an English translation and each sheet of drawings should be numbered consecutively in arabic numerals, as a separate series from that used for the other sheets of the translation, if not so numbered when published by the EPO. Verification is necessary in the same way as referred to in 78.14.

80.05

r.57(4) & (6) are also relevant.

Patents Form 54 in duplicate should accompany the corrected translation. (6) The appropriate fee should be paid within fourteen days of the filing of the corrected translation. This period may be extended at the comptroller’s discretion under rule 108(1).

80.06

s.118(1) is also relevant.

If the requirements are met, the fact that the corrected translation has been filed is recorded in the register and announced in the Journal. Copies of the translation are made available for public inspection or sale. Requests for inspection of such translations should be accompanied by the prescribed fee, if any.

Section 80(4)

Where a correction of a translation is published under subsection (3) above and before it is so published a person – begins in good faith to do an act which would not constitute an infringement of the patent as originally translated, or of the rights conferred by publication of the application as originally translated, but would do so under the amended translation, or makes in good faith effective and serious preparations to do such an act, he shall have the right to continue to do the act or, as the case may be, to do the act, notwithstanding the publication of the corrected translation and notwithstanding the grant of the patent.

80.07

The exemption of third parties from infringement proceedings provided by s.28A(4) to (7) applies to acts or preparations for acts, which would infringe in relation to the corrected translation but not in relation to the original translation, done or made before the corrected translation is published by the Office. This includes acts of Crown use which, but for s.55, would constitute infringement.

Section 80(5)

Subsections (5) and (6) of section 28A above have effect for the purposes of subsection (4) above as they have effect for the purposes of that section and as if – the references to subsection (4) of that section were references to subsection (4) above; the reference to the registered proprietor of the patent included a reference to the applicant.

Section 80(6)

Subject to subsection (5) above, the right conferred by subsection (4) above does not extend to granting a licence to another person to do the act in question.

Section 80(7)

Subsections 4) to (6) above apply in relation to the use of a patented invention for the services of the Crown as they apply in relation to an infringement of the patent or of the rights conferred by the publication of the application. “Patented invention” has the same meaning as in section 55 above.