Marks&Clerk Luxembourg

Validation Service for Granted European Patents

Are you increasingly under pressure to: • streamline your patent procedures? • reduce patenting costs? AND maintain service and translation quality?

The London Agreement of 2008 simplified translation requirements and reduced the costs of validating patents in Europe. Marks & Clerk Luxembourg specialises in high-quality, cost-effective and simple national validations for granted European patents which means that we can help you reduce the costs even further. Read on to find out how.

For further information on validations strategies please contact: Hilton Lord Managing Partner [email protected] Tel: +352 400 270

Luca Polverari Operations Manager [email protected] Tel: +352 400 270

Michael Evans Business Development [email protected] Tel: +44 (0)20 7420 0095

Cost-effective service Our size and the high volume of work that we handle have enabled us to negotiate the best rates throughout Europe. Our translation rates are based on the number of source words, rather than target words as is more commonly used. This means we are able to provide a precise quote for translation costs. Official fees are specifically identified and quantified. There is no supplement in the service charge for any official fee. There is a single, fixed, service charge, regardless of length of specification or services rendered. This is unique, and enables us to divide our tariff into just the three components: a fixed service charge; known official fees; and a translation rate based on an independently verifiable number of source words. Quotes are provided quickly and accurately, on request.

High-quality translations Our team of translators provides a broad cross-section of technical expertise, with each translator specialising in a technical field and only translating into his or her mother tongue. Each patent received for processing is carefully analysed for technical content and as to whether it is a divisional of a previously handled parent patent, so as to determine which translator is best suited for that patent. Our translators are carefully selected and monitored, with feedback through our dedicated team of proof readers. We establish glossaries both for our larger clients and for specific technical areas, such as pharmaceuticals and electronics. Our translators have access to the most up to date dictionary software, as a further part of our commitment to excellence.

Seamless service Marks & Clerk handles the whole validation process from start to finish. A simple instruction any time after the notice of intention to grant, identifying the patent and the country list is sufficient to start the process – no email attachments or papers are required. Clients have one single point of contact. We lift the burden of liaising with over 35 different European attorney firms. We use only established and reputable attorney firms, thereby ensuring consistently high quality and reliability. Our dedicated team uses custom-made software to manage the process in the most efficient manner possible and to keep track of the progress of each patent. Everything is electronic. All correspondence is by email, except where official documentation is involved. This enables us to provide you with a final report (barring official receipts) within days of the validation deadline.

European patent validation timeline

EPC member states - translation requirements

Step 1 Claims translations at EPO Step 2 Preparation for validation at National Patent offices

Decision to grant

(EPO Form 2004)

(EPO Form 2006A)

3 to 5 years

4 months

Approx 2 to 4 weeks

Date of Grant (Mention of grant in EP Patent Bulletin)

Approx 4 weeks

3 months

Within 4 months from the date of the notice:

Within 3 months from publication:

1. File claim translations (FR/ DE/ EN) at EPO and

1. File translations at national offices (if translations required) and

2. Pay grant & print fees

2. Payment of fees Exceptions: Ireland allows 6 months Iceland allows 4 months San Marino allows 6 months

Validation deadlines

File EP application and prosecution

Notice of intention to grant Rule 71(3) EPC



No translation CH Switzerland DE Germany FR France GB United Kingdom IE Ireland LI Liechtenstein LU Luxembourg MC Monaco MT Malta



Claims only AL Albania BA Bosnia and Herzegovina DK Denmark FI Finland HR Croatia HU Hungary IS Iceland LT Lithuania LV Latvia MK Former Yugoslav Republic of Macedonia NL Netherlands SE Sweden SI Slovenia



Cost savings available For BA if filed with RS or HR



Full translation AT Austria BE Belgium BG Bulgaria CY Cyprus CZ Czech Republic ES Spain EE Estonia GR Greece IT Italy ME Montenegro (requires validation in RS) NO Norway PL Poland PT Portugal RO Romania RS Serbia SK Slovakia SM San Marino TR Turkey



Cost savings available If AT and BE filed together If GR and CY filed together If IT and SM filed together

Please note: • Validation is only possible in states that were validly designated by the applicant. • These translation requirements apply only for patents drafted in English.

European patent translation requirements Iceland

Finland Norway Sweden Estonia Latvia

Denmark

Ireland

Lithuania

UK Netherlands Belgium

Luxembourg France

Portugal Spain

Poland

Germany Czech Republic

Slovakia Liechtenstein Switzerland Austria Hungary Slovenia Romania Italy Croatia San Marino Monaco Bosnia & Serbia Herzegovina Bulgaria Montenegro Macedonia Turkey Albania Greece

Malta

Cyprus

The London Agreement can certainly save money, but the amount saved is highly dependent on the countries selected for validation. This map provides a guide for European national translation requirements for patents granted in English* and highlights potential cost savings. No Translation

Claims only

Full translation

Cost savings available if: Bosnia and Herzegovina filed with Serbia or Croatia

Cost savings available if: Austria and Belgium filed together Greece and Cyprus filed together Italy and San Marino filed together * Please note that the translation requirements

take the London Agreement and national requirements into account.

Marks&Clerk (Luxembourg) LLP Patent and Trade Mark Attorneys B.P. 1775, L-1017 Luxembourg Tel: +352 40 02 70 Fax: +352 40 04 96 [email protected]

© Marks&Clerk (Luxembourg) LLP 2010

www.marks-clerk.com