Wednesday, 10 February 2016

Spain: Just English or either include Spanish

American films in Spain
 In an interview in World IP Review Ms. Garcia-Escudero the head of the Spanish patent office (OEPM) looks back on the negotiations for the unitary patent system:
“During the negotiations, one of our proposals was either to include the Spanish language or to have just one official language: English. They didn’t approve either offer, so we stayed out.”
The unitary patent favors the official languages of the EPO: English, German and French. Since the unitary patent is linked to the existing European patent, the unitary patent uses the same official languages. Spain, and also Italy, do not agree with this.

There may be some problems with the offers suggested by Spain. The EU cannot change the official languages of the EPO, since the European Patent Convention (EPC) is not an EU regulation but an international agreement. In fact some members of the EPC are not EU members. Changing the EPC, although possible, is a lengthy undertaking.

Realistically, one could at best desire that if a unitary patent is granted by EPO in a language different from English, then the proprietor should provide an English translation. However, a requirement like this has been adopted in the unitary patent. A request for unitary effect must include a full translation of the specification of the European patent into English if the language of the proceedings is French or German (Article 6(1)(a), Council regulation 1260/2012). Admittedly, this is only required during a transitional period (up to 12 years). To make things fair, you also have to submit a translation if the language of the proceedings was English, but in this case you can pick any official EU language you like.

After negotiations within the EU broke down, the EU used the--rarely used--possibility of 'enhanced cooperation' (Article 20 of the European Union Treaty). 'Enhanced' cooperation allows some member states to be excluded from the cooperation. In this case Spain and Italy who remained opposed to the new unitary patent were excluded. Italy has later rejoined the unitary patent system (while stressing that it remained opposed to the language regime).

Spain and (in part) Italy have complained about this with the  EU Court of Justice. The court agreed that the Spanish language was treated differently, but that this was allowable if it this was needed to get a cost efficient system.

The absence of Spain from the unitary patent will force us to “reflect on the importance of the Spanish language and technology”, according to Garcia-Escudero. The absence of Spain, the fifth EU economy by GDP, is indeed regrettable and will make the unitary patent a bit less attractive. In any case it will force a proprietor of a unitary patent to reflect if it wants to additionally validate the corresponding European patent in Spain (this is allowed).

Italy has since decided that a strong patent that is valid European wide is too important, and has decided to join the unitary patent system after all even though it is not happy with the languages. Hopefully, Spain will do the same someday.

Photo "American films in Spain" by Brian Snelson via Flickr under CC-BY 2.0 license

1 comment:

  1. The whole language regime of the UPC is complicated to say the least.

    It is not just a question of Spanish or English, there is more to it.

    Although a translation has to be provided in English or in any language of the EU, in order to obtain the unitary effect, any action before a local and/or a regional division is to be held in the language of the state in which the local division sits, or in a language prescribed by the states having a regional office, if the local or regional division decides so, cf. Art 49 AgrUPC.

    One party can request to use the language in which the patent was granted, i.e. the language of procedure before the EPO, cf. R 323UPC, but the local/regional division can decide differently. Even if both parties agree to use the language in which the patent was granted, cf. R 321UPC, the local panel can as well say no; then the parties can request that the file goes to the central division. The proposal may also come from the panel/judge-rapporteur in fairness to the parties, cf. R 322UPC.

    Even if both parties agree to use the EPO language of proceedings, then the judge-rapporteur can decide in the interest of the panel to use its “local” language in oral proceedings, cf. R 14.2(c)EPC, i.e. this is the “English limited” clause. It simply means that English cannot be the only language of proceedings before the UPC.

    Simultaneous interpretation before the UPC can be requested, but not for free like before the EPO. The costs for interpreters or translators is part of the costs which can be recouped on the loosing party, cf.
    R 155UPC.

    Furthermore, any pleading lodged in a language other than the language of proceedings shall be returned by the Registrar, cf. R 14.4UPC. Returned means not filed, with all dire consequences in view of the rather sharp time limits provided in the Rules of Procedure before the UPC.

    One should also keep in mind that if the language is changed to the language of procedure of the EPO, translations will have to be submitted.

    Where is the simplification which is regularly heralded?