Master
Reference
Language policy evaluation for the European Union patent system : looking for a new strategy
VOLPE, Alessia
Abstract
Major economic changes, technology and information revolutions have raised the need for structural reforms of patent systems worldwide. Such reforms are all the more urgent in Europe where the fragmentation of the technology market has been damaging competitiveness. The lack of consensus on the issue of language policy has been recognised as one of the main obstacles on the route to a unified patent system. Opting for some EU languages over others entails an asymmetric distribution of costs of patenting between European companies, this, in turn, distorts competition in the Single Market. Considering the importance of patent literature in a knowledge-based economy, we decided to explore the issue of translation of patent information. We believe that translation has a democratising impact on dissemination of patent information on condition that it departs from the current translation regime to embody a more dynamic nature inspired by the activity of strategic multilingual monitoring.
VOLPE, Alessia. Language policy evaluation for the European Union patent system : looking for a new strategy. Master : Univ. Genève, 2011
Available at:
http://archive-ouverte.unige.ch/unige:18830
Disclaimer: layout of this document may differ from the published version.
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LANGUAGE POLICY EVALUATION
FOR THE EUROPEAN UNION PATENT SYSTEM:
LOOKING FOR A NEW STRATEGY
Mémoire réalisé en vue de l'obtention de la
Maîtrise (Ma) universitaire en traduction
Mention traduction spécialisée
par
VOLPE, Alessia
Directeur du mémoire GRIN, François
Jury
GAZZOLA, Michele
Niveau de diffusion dans l'archive Public
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ACKNOWLEDGMENTS
I would like to thank my supervisor, François Grin, for introducing me so eloquently and enthusiastically to the subjects of language policy and language economics. For continual encouragement, valuable suggestions, and gentle criticism at every stage, grazie above all to Michele Gazzola. Thanks also to Mathieu Guidère whose profound knowledge of the subject matter has been essential and inspirational, thanks for his eager interest and astute comments that gave me the confidence to face up to the “blank page”. Edward Maxwell Crisp provided intelligent manuscript editing. Finally, I owe a huge debt of gratitude to Claudia, Maria and Paola, excellent translators, learning companions and precious friends.
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ABSTRACT
Major economic changes, technology and information revolutions have raised the need for structural reforms of patent systems worldwide. Such reforms are all the more urgent in Europe where the fragmentation of the technology market has been damaging competitiveness. The lack of consensus on the issue of language policy has been recognised as one of the main obstacles on the route to a unified patent system. Opting for some EU languages over others entails an asymmetric distribution of costs of patenting between European companies, this, in turn, distorts competition in the Single Market. Considering the importance of patent literature in a knowledge-based economy, we decided to explore the issue of translation of patent information. We believe that translation has a democratising impact on dissemination of patent information on condition that it departs from the current translation regime to embody a more dynamic nature inspired by the activity of strategic multilingual monitoring (SMM). In practice, measures such as 1) selective translation of patent applications (strategic translation), 2) the development of multilingual research tools and databases for technology watch, and 3) the construction of a European network of patent offices, capable of catering information to all Europeans equally effectively, could all improve the current translation regime. By fostering the activity of technology watch and supporting strategic translation, the institutions can achieve a translation regime that is both efficient and equitable and frame a language policy that would contribute to the inclusive growth of the Single Market. SMM applied to translation is likely to correct some of the weaknesses of the current trilingual regime that reinforced the belief that multilingualism is an obstacle to growth and development.
3 Contents
1. Introduction ... 5
1.1. Introducing the problem ... 5
1.2. Aims and raison d’être ... 7
1.3. Structure ... 8
2. Part I The European patent system ... 9
2.1. Patent essentials ... 9
2.1.1. Definition of patent: a quid pro quo ... 9
2.1.2. The functions of patent documents ... 9
2.1.3. The structure ... 10
2.1.4. The title page ... 10
2.1.5. The description ... 10
2.1.6. The claims ... 11
2.2. The granting procedure ... 11
2.2.1. National Procedure ... 12
2.2.2. European patent office procedure (Regional procedure) ... 13
2.2.3. PCT procedure (International procedure) ... 14
2.3. Global evolutions of patent systems ... 17
2.3.1. Harmonisation of patent systems and propensity to patent ... 18
2.3.2. European harmonisation of national patent systems ... 22
2.3.3. The London Agreement ... 25
2.4. The European Patent Office and its translation policy ... 31
2.5. The European Union patent system ... 36
2.5.1. The European commission proposal ... 39
2.5.2. Evaluation of the European Commission proposal ... 45
Policy scenarios and analysis ... 46
2.5.3. Measuring the problem: methodology of public policy evaluation ... 51
The concept of Efficiency and Fairness... 51
Assessing efficiency ... 53
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Assessing fairness ... 54
3. PART II PATENT INFORMATION AND STRATEGIC MULTILINGUAL MONITORING .... 60
3.1. Patent information in patent documents ... 60
3.1.1. Patent documents as a source of technical knowledge ... 61
3.1.2. The legal function of patent documents ... 62
3.1.3. The language of patent documents ... 63
3.1.4. Patent information for business considerations ... 64
3.2. The concept of strategic multilingual monitoring ... 66
3.3. The paradigm of strategic multilingual monitoring applied to translation ... 66
3.3.1. Information overload ... 66
3.4. Defining strategic multilingual monitoring ... 68
3.5. How does strategic multilingual monitoring work? ... 69
3.6. The concept of technology watch ... 73
3.6.1. Defining technology watch ... 73
3.7. The process of technology watch ... 77
3.7.1. The survey of the environment ... 77
3.7.2. The exploitation of the information ... 80
3.8. Patent watch ... 82
3.8.1. The Limits of Patent Statistics ... 85
3.9. Strategic multilingual monitoring in translation ... 87
3.9.1. Strategic translation of patent information ... 91
4. Conclusions ... 101
5 1. Introduction
1.1. Introducing the problem
In the last century, developments in patent systems worldwide have followed the spiral of economic changes. The expansion of cross-border economic relationships triggered the international harmonisation of intellectual property rights and the swift surge in propensity to patent. Among OECD countries, business R&D expenditure grew by about 50 percent between 1990s and early 2000s, while at the same time GDP increased by about 25 percent; between 1995 and 2006 the number of patent applications filed with the European Patent Office increased by 150 percent, which is the equivalent of a yearly growth rate of more than 9 percent, compared with less than 2.5 percent GDP growth in Europe (Guellec and van Pottelsberghe de la Potterie 2007). So what happened?
This increase is due to technological change, economic transformations and shifts in patent policy that have been taking place for the past hundred years. The emergence of the Internet, and more generally the information revolution, has boosted the extent and speed of dissemination of knowledge, as a result maintaining secrecy has become increasingly difficult. Economic dynamics such as deregulation and globalisation have entailed more intense competition on the global market, inflating the demand for patents. At the same time, patent use has diversified and broadened; licensing and cross-licensing are becoming more widespread, notably in the field of electronics and biotechnologies. Another factor determining the success of patents is the “pro-patent” policy stance followed in OECD countries over the last 25 years. Intellectual property rights have been internationally harmonised, patent systems have been strengthened through the establishment of higher standards of protection and enforcement, finally the principle of patentable subject matter has been extended to cover new concepts.
As a result of these economic and policy changes, patents have become what Guellec and van Pottelsberghe de la Potterie (2007) call “the currency of the knowledge economy”, and de Beaufort (2009) defines as “the new frontier of developed economies”.
The European patent system has not been left out of such trends. Despite the numerous efforts to further integrate national patent systems into a European
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system, the degree of fragmentation of the European technology market remains high, damaging European competitiveness and thwarting attempts to strengthen the Single Market. The need for a reform has become increasingly urgent; a renewed endeavour to create a unified patent system in Europe was encouraged by the EU Strategy for Growth “Europe 2020” which highlights that an EU patent is, at this stage, not just desirable, but decisive. The EU is aiming for “smart, sustainable and inclusive growth”. Smart and sustainable growth is based on innovation and creativity for which the single EU patent is paramount. It is important for businesses and innovators to have access to a cost-effective and attractive single patent, as was underlined by Mario Monti in a report to the President of the European Commission (Monti 2010). “Inclusive growth” of Europe 2020, namely, the growth of the Single Market, cannot be ensured without a single EU patent system. For this reason, on 2 July 2010, the Commission submitted to the Council a Proposal for a European Council Regulation on the translation arrangements for the European Union patent. This proposal aimed to provide “cost-effective, simplified and legally secure”
translation arrangements for the EU patent.
Translation policies have always been recognised as playing a major role in the negotiations for a unified EU patent system (previously referred to as Community patent) and a major obstacle in the path to general consensus. The Commission’s proposal of 2010 was no exception. The Commission envisaged a translation policy based on the existing European Patent Office (EPO) policy. More specifically, EU patents (valid throughout the EU area), as all European patents (valid throughout European Patent Cooperation area), would be granted in one of the EPO’s official languages (English, French or German) and accompanied by a translation of claims into the other two official languages; no further translation would be required. However, the choice of a troika translation regime was perceived as unfair (despite some elements of compromise); in fact, whereas a trilingual regime is likely to entail drastic reductions of costs in aggregate, any savings would be unequally shared between Member States, distorting competition in the Single Market. This situation is in flagrant contradiction with
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the priority of inclusive growth set in the strategy Europe 2020 and reiterated by Mario Monti in “A new strategy for the Single Market” (2010).
1.2. Aims and raison d’être
This dissertation outlines the main dynamics that have characterised the evolution of patent systems at the international level over the last century: the harmonisation of intellectual property rights, the surge in propensity to patent and the growing economic role of patents. Patent systems are undergoing significant transformations in order to address the new challenges raised by the knowledge economy. When patents and other types of intellectual property rights (notably copyright and trademarks) were created the production and dissemination of knowledge were small-scale activities compared with tangible, manufacturing activities. They are now the very basis of growth and competitiveness; they are performed on a large scale, at a global level and they follow industrial logic (Guellec and van Pottelsberghe de la Potterie 2007). The advances in information technology have been instrumental in that change; this, in turn, has spread to the economy at large. If intellectual property rights are to play a full effective role in the knowledge economy, important reforms, some more urgent then others, need to be brought in across the global economy.
Europe is one of those urgent cases, as the European patent system is at a crossroads of major changes. The present dissertation (Part I) will chronicle the evolution of the European patent system towards harmonisation and observe the latest steps on the path to future unification. More specifically, it will focus on the Commission’s proposal for translation arrangements for the future EU patent system of 2010. We will discuss the choice of a language regime and how this usually has significant economic consequences, and how in the case of the European Commission’s proposal such a choice is likely to have skewed distributive effects that can exacerbate the differences between Member States.
A translation policy that contributes to simplification, cost-effectiveness and therefore competitiveness of the European patent system must also guarantee equality between Member States. The contrary would be incompatible with the principle of inclusive growth and integration of the Single Market. A translation
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policy that can ensure equality of access to the patent system for all European citizens must take into account the arguments that until now have been formulated against multilingualism: complexity, high costs, legal insecurity, superfluousness.
Given 1) the complexity of this analysis, 2) the variety of factors that designing linguistic policies may involve, and 3) the number of activities for which patents are used, we decided to focus on one aspect of the patent system and therefore on one application of the translation policy: patent information. A detailed analysis of the characteristics of patent information underpins the idea that the current EPO translation regime is likely to have a negative impact on multilingualism in patent information. We believe that a valuable alternative scenario for the translation of patent documents rests upon the concept of strategic multilingual monitoring. This is intended not only as a tool for investigating the technology environment but also as a brand new translation paradigm. In this way we set out to highlight how strategic multilingual monitoring can interact with the current translation regime and improve on some of those features that have reinforced the belief that multilingualism is complex, costly, and most unjustly, superfluous.
1.3. Structure
This dissertation is divided into two main parts. Part I “The European patent system” introduces the reader to the basic legal and institutional machinery of patenting. This covers the basics needed to tackle further analysis. The latter focuses firstly on key issues in global evolutions of patent systems, and secondly on the development and functioning of the European patent system. Finally Part I presents an evaluation of the Commission’s translation arrangements for the EU patent; this evaluation based on the criteria of efficiency and fairness which are imported from the methodology for assessment of policy analysis and welfare economics.
In Part II “Patent information and strategic multilingual monitoring” we will accurately describe of the concept of strategic multilingual monitoring (SMM).
This involves presenting the main characteristics and use of patent information;
analysing the process of SMM and its application to technology watch and patent
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watch, and, finally, exploring the concept of strategic translation and its applicability to patent information.
2. Part I The European patent system 2.1. Patent essentials
In order to acquire a complete understanding of the relevance of language for the European patent policy, it may be useful to become familiar with the basic legal and institutional aspects of patents. This section of Part I will provide the reader with the fundamentals of patent functions, structure, and granting procedures.
2.1.1. Definition of patent: a quid pro quo
The word patent originates from the Latin expression “litterae patentes” or
“letters laid open” which refers both to the official document granting the exclusive right of exploitation for an invention and to the act of publication of the invention (EPO 2011). The World Intellectual Property Organisation defines a patent as: “an agreement between an inventor and a country. The agreement permits the owner to exclude others from making, using or selling the claimed invention” (WIPO 2007). At the act of filing a patent, the inventor agrees to disclose all information necessary for a person skilled in the art to carry out the invention (this action is metaphorically known as “patent bargain”). In patent doctrine, disclosure is often considered as “being the counterpart society request from the patentee in exchange for the exclusive right of exploitation” (Guellec and van Pottelsberghe de la Potterie 2007).
2.1.2. The functions of patent documents
Patents are legal titles which fulfil two main functions. First, they provide a description of the technical principles of the invention which represent one of the most detailed and reliable sources of information on technology development (information function) and secondly, they contains a set of claims which define the scope of protection rights of the invention: the claims are formulated on the basis of the technical principles described (EPO 2011). Article 28 of the Trade- Related Aspects of Intellectual Property Rights Agreement (TRIPs) provides that:
I. A patent shall confer on its owner the following exclusive rights:
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a. where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of:
making, using, offering for sale, selling, or importing for these purposes that product;
b. where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
II. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts.
2.1.3. The structure
Patent documents have a rigid structure: a title page, a description, claims and drawings. These elements are compulsory in all patents, although the drawings may be omitted if the subject matter of the invention does not require them.
Despite the uniformity of the outline, patents may be vary substantially in size, according to the area of technology to which the invention belongs (EPO 2011).
2.1.4. The title page
The title page provides an initial overview of the subject matter of the invention.
It consists of the title of the invention, the bibliographic data, an abstract of the technical information, and if applicable, a basic drawing illustrating the invention.
The title page is especially useful for the assessment of the document’s relevance in patent information research. The core information on the page is labelled with internationally standardised identification numbers, enabling the reader to retrieve the data even when the document is written in a foreign language (this is particularly useful in case of unknown alphabets) (EPO 2011).
2.1.5. The description
The description specifies all the features of the subject matter. According to patent law, the invention must be described in sufficient detail for it to be performed or made by a person skilled in the art. Due to legal regulation, the description follows a uniform pattern which contains: (a) an assessment of the
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state of the art, (b) a criticism of this state of art, (c) a definition of the problem to be solved through the invention, (d) an explanation of the solution and (5) examples of implementation (EPO 2011).
2.1.6. The claims
The claims are the “legal core” of the patent documents. They define the scope of protection of the invention which is sought by the inventor. Each claim is made up of (a) a “designation part” describing the state of art not protected by the patent and (b) a “characterising portion” stating the technical solution which will be protected by the patent (EPO 2011).
A patent application must contain one or more claims to be considered for examination and eventually granted (Article 78 European Patent Convention, EPC). On average, most patents are made up of several claims, their number may vary considerably from one application to another. Despite strict regulations imposing higher fees on excessive numbers of claims (e.g. Japan Patent Office, JPO), and the growing restrictions in the granting procedure (e.g. European Patent Office EPO) there is a widespread tendency towards inflation in number and size of claims in order to obtain as extensive a scope of protection as possible (Guellec and van Pottelsberghe de la Potterie 2007).
2.2. The granting procedure
Industrial property (IP) rights, such as patents, trademarks and industrial designs are territorial rights that are protected through a registration or grant procedure.
Because of their territoriality, IP rights can only apply to the jurisdiction for which they have been granted (Guellec and van Pottelsberghe de la Potterie 2007). As far as the patentable subject matter is concerned, the Article 27 of TRIPs establishes that:
“Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application”.
Natural phenomena, scientific theories, aesthetic creations, mental methods and pure business methods are among the major exclusions (with the exception of the US patent system which, to date, is the only one in the world to patent business
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methods) . “Most recent debates involve not the contents of patent law but the categorisation of borderline cases, and hence, explicitly or implicitly, the definition of technology” (Guellec and van Pottelsberghe de la Potterie 2007).
According to the market targeted by the applicant, the funds that are available to the applicant, and their proportion to the expected profits, there are different administrative patent procedures that can be followed to obtain a patent:
national, regional or international procedures. The inventor files an application with a patent office which is in charge of examining the invention to ensure that some legal criteria are fulfilled. At the end of the examination procedure, the patent office decides whether the patent can be granted or not.
2.2.1. National Procedure
Inventors (an individual, company, public body, university, non-profit-making organisation) willing to patent their inventions have to file an application with a national patent office. The first application to be filed worldwide is known as
“priority application” and is associated to a “priority date” (Guellec and van Pottelsberghe de la Potterie 2007). Subsequently, the patent office begins to examine the application in order to ensure that the invention falls into the subject matter, is novel in respect to the state of art, inventive (“non-obvious to a person skilled in the art”) and capable of industrial application. If the invention satisfies these criteria, the application is published within 18 months from the priority date. Between two and eight years may elapse from publication date to patent procurement that is the grant of the actual patent document, depending on the rules and idiosyncrasies of each national patent office.
As far as translation is concerned, rules vary from one national office to another.
Usually, if the patent application is written in a language other than the working language of the office (foreign priority), a translation must be provided at the moment of filing. Some offices, such as the Japanese Patent Office, accept applications in English, on condition that a translation, in this case Japanese, is provided within three months of filing.
Since the Paris Convention for the Protection of the Intellectual Property of 1883 (173 contracting states in 2011), IP rights worldwide have been largely
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harmonised; applicants filing with any national patent office in any signatory state of the Paris Convention are granted a twelve month period of protection from the priority date to file applications in other countries. Under this provision, when applicants desire protection in several countries, they are not required to present all the applications at the same time but have one year at their disposal to decide in which country they wish protection and to organise with due care the necessary steps to secure such protection.
According to Article 4 (D, (3)) of the Paris Convention for the Protection of Industrial Property of 1883, any person desiring to declare priority of a previous filing may be required by designated countries of the Union to produce a translation of the application into their official language.
2.2.2. European patent office procedure (Regional procedure)
If applicants wished to extend protection from infringement to several European countries, instead of filing separate applications with each national office, they may file an application with the European Patent Office (EPO). EPO is a regional body, founded by the European Patent Convention (EPC) signed in Munich in 1973 (37 contracting states in 2011). Totally independent from the European Union institutions, EPO stretches over Europe including countries like Switzerland or Turkey. EPO is in charge of searching and examining patent applications on behalf of its Member States. This permits the applicant pursuing protection in several EPC states to file only one application with the EPO (Euro-direct application) instead of going through several application procedures with each national patent office. Despite the improved coordination among national patent systems, EPC has not achieved a thorough standardisation at a European level even though this would have cut costs and simplified procedures radically. Today, EPO grants
“European patents” which are valid in the states designated by inventors upon condition that they pay the fees required by the national office and provide translation into the national languages of each designated European state (EPO 2010); some EPC states European patents do not have translation requirements, that is they do not require a translation of the patent document (or claims) for validation; those states are parties to the London Agreement which was conceived to reduce the burden of translation costs (the functioning of the
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London Agreement will be treated more extensively in a separate section). Filing applications directly at the EPO is not the only way to gain protection in some of the EPC contracting states. The alternative would be filing at the EPO after the national priority (also called Euro-direct application). A third option would be to file using the PCT procedure (Guellec and van Pottelsberghe de la Potterie 2007).
2.2.3. PCT procedure (International procedure)
The Patent Cooperation Treaty has been in force since 1970s (142 contracting members in 2011) and is monitored by the World Intellectual Property Organisation (WIPO). PCT is not a patent application but rather a centralised searching procedure through which any applicant is granted a potential protection of 30 months from priority date (18 months more than under the provision of the Paris Convention) to file for patent protection abroad. Applicants have up to 30 months to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees. The centralised search procedure can considerably reduce, but not necessarily eliminate, the search and examination of national patent offices
Applications filed through the PCT Route are searched and examined by one of the International Search Authorities (ISA) (e.g. European Patent Office; United States Patent and Trademark Office; Japan Patent Office) recognised by WIPO and designated by the applicant. When the inventor elects EPO as its ISA, the procedure takes the name of “Euro-PCT” application (Guellec and van Pottelsberghe de la Potterie 2007). PCT applications may be filed with any national patent office in any of the PCT signatory states or with the International Bureau of the World Intellectual Property Organisation (WIPO). According to Article 22 (1) of the Patent Cooperation Treaty, the applicant choosing to file nationally:
“shall furnish a copy of the international application [...] and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Office not later than at the expiration of 30months from the priority date.”
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PCT applications filed with the International Bureau of WIPO as the receiving Office may, in theory, be written in any language. However, the request has to be filed in one of the ten publication languages under the PCT: Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish. If the language in which the international application is filed (e.g., the language used for description and claims) is not accepted by the International Searching Authority which carries out the international search, the applicant is obliged to furnish the International Bureau as receiving Office, within one month from the date of receipt of the international application, with a translation into a language which is both accepted by the International Searching Authority to carry out international search and a language of publication (that is, in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish) (see PCT Rules 12.3, 12.4).
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Figure 1 Patent procurement procedures
17 2.3. Global evolutions of patent systems
In the last century, developments in patent systems worldwide have followed the spiral of economic changes. Whereas throughout the XIX century patent law consolidated into robust national systems, in the XX century the expansion of cross-border economic relationships triggered the international harmonisation of patent systems (Guellec and van Pottelsberghe de la Potterie 2007). The global, upward harmonisation of patent systems is not the only driving trend in recent patent matters. A second major development concerns a surge in “propensity to patent” (Guellec and van Pottelsberghe de la Potterie 2007) which is the result of the combined effect of economic changes and international harmonisation.
There are several factors which contribute to the growing attractiveness of patents in knowledge-based economies. First of all, the information and communication revolution makes secrets increasingly difficult to keep, encouraging companies to patent their intellectual property instead of relying on secrecy. Secondly, in many countries important sectors of the economy have been deregulated resulting in more intense competition. In addition, due to globalisation, national markets are opened to foreign entrants, hence becoming more competitive. Companies exposed to competition are also exposed to imitation and need patent protection, notably cross-border protection (Guellec and van Pottelsberghe de la Potterie 2007). Third, fierce competition on global markets has pushed companies to specialise, and change the way they organise innovation. Nowadays, highly specialised companies choose to contract out technology and know-how which makes secrecy more difficult to achieve;
however, secrecy is still largely applied for inventions of rapid obsolesce and in sectors with very short innovation-cycles (e.g. microelectronics) (Basberg 1987).
Under these circumstances, patent protection becomes necessary to protect companies’ innovation strategies. Finally, the use of patents has broadened and diversified. Nowadays “patents are a quality signal of the technical advance to capital markets or to venture capitalists; they serve as collateral for bank loans; or they are even securitised. In a nutshell, the economic transformations of the last decades have all increased the demand for patents” (Guellec and van Pottelsberghe de la Potterie 2007).
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In the light of the current trends, our purpose is to observe how global economic changes have influenced the evolution of patent systems. Traditionally nation- based and most exclusively approached as mere legal instruments, patent systems have been shifting towards internationalisation and an economic dimension. We believe that these changes are likely to affect also the design of language policies for the new patent systems. We tend to think that a law- oriented system based on territoriality favours a linguistically diverse environment as opposed to a globally harmonised system. Globalisation has a twofold effect on linguistic and, broadly speaking, cultural diversity; on one hand, the intensification of exchanges between parties in the world, and the decline in costs of international travelling and telecommunications have increased the visibility of diversity and, as a result, strengthen the subjective feeling that diversity has intensified; on the other hand, globalisation has had a unifying impact on society and has objectively eroded the number of languages spoken in the world. This explains the curious paradox of linguistic diversity as a reality that is threatening (the experience of alterity may generate tensions in society) and threatened (variety is slowly diminishing) at the same time (Grin 2010). More specifically, in the case of patent law the shift from national law systems to international law systems may introduce into national territories legal texts such as patents written in foreign languages which are enforceable without requiring a translation (as it is the case on the territories of the countries that ratified the London Agreement and, in the future, in the area of unitary patent protection of the European patent system). This apparent multilingualism hides the empowerment of a few international languages at the expense of diversity. Two open questions remain:
to what degree global evolutions in patent law affect linguistic diversity and in which way they contribute to “language commodification”. These cannot be treated adequately in this context as they are beyond our purpose; yet we believe they will provide food for thought for future research.
2.3.1. Harmonisation of patent systems and propensity to patent
With the exception of the International Exhibition of Inventions in Vienna in 1873, where US companies raised concerns regarding the protection of their intellectual property in Austria (the latter had to strengthen its patent law as a result) and the
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Paris Convention of 1883, the major steps towards harmonisation in patent matters all date back to the last second half of the XX century. The US initiated this trend in 1970s strengthening the role of patents, making them key instruments of the US innovation policy. On one hand, the US established a specialised court: the Court of Appeal of Federal Circuit (CAFC), on the other, they extended patentability of subject matter to business methods (to date, the US system is the only one in the world to patent business methods). This “pro- patent” policy was encouraged by two different factors: 1) the fierce competition with Japan which was thought to imitate US technology; and, 2) the wave of technological innovation, especially in the sector of information technology and biotechnology, which both contributed to the increase of “the economic value of technology” (Guellec and van Pottelsberghe de la Potterie 2007). The US stance on patent matters put strong pressure on other industrialised powers and emerging economies to harmonise their IP rights. As a consequence, Japan reformed its patent system during the 1990s, by establishing a specialised and centralised court and discouraging the use of other and more simple tools of protection such as utility models. Japan, in turn, exerted pressure on China who had always suffered from a weak enforcement system against infringement, mainly due to the scarcity of judges specialised in the branch of patent law (Guellec and van Pottelsberghe de la Potterie 2007).
During the last century, three main international agreements were concluded with the objective of harmonising patent rights worldwide. The first attempt was the Paris Convention of 1883 which established the principle of national treatment and consequently abolished discrimination against foreigners such as working requirements on the national territory and higher fees to file an application (these discriminations were common of national patent systems in the XIX century). The Paris Convention also formulated the principle of priority application according to which any application filed in any country enjoys a potential protection worldwide of 12 months. Despite the importance of the principles formulated and ratified during the Paris Convention, the agreement has not evolved substantially since it was first enforced (Nolff 2001). Today, two, more recent agreements have overshadowed the scope of the Paris Convention:
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the Agreement on Trade-Related Aspects of Intellectual Property (TRIPs) and the Patent Cooperation Treaty (PCT).
The TRIPs is the most comprehensive multilateral agreement ever signed on intellectual property worldwide. It was signed in 1994 and entered into force on 1st January 1995. The Agreement was an integral part of the Agreement Establishing the World Trade Organisation (WTO Agreement) and incorporated all Agreements negotiated during the Uruguay Round and the previous Rounds of General Agreement on Tariffs and Trade (GATT) negotiations. TRIPs does not provide a means for procurement of patents, in other words, it does not represent some kind of international application. TRIPs’ aim is to set minimum standards of requirements for patent granting. TRIPs can be understood as the sequel to the pressure the US put on WTO Members to strengthen patent systems globally and ensure strict enforcement of the rules against infringement. TRIPs requires that patents: 1) “must be available for any field of technology provided that the invention is new, involves an inventive step (non-obviousness) and is capable of industrial application”, 2) give its proprietor certain enumerated rights, 3) “must be granted with reasonable period of time so as to avoid unwarranted curtailment of the period of protection”; finally TRIPs requires that the granting procedures must not be unnecessarily costly or complicated or entail unwarranted delays (Nolff 2001). TRIPs constitutes a framework for patent law which was supposed to set minimum standards on patentability, duration, patent rights and enforcement. However, given the fact that those standards were high (corresponding to the level of industrialised countries), harmonisation was promoted and patent systems, especially in developing countries were drastically reformed (India underwent a dramatic reform in 2005) (Nolff 2001). Along with harmonisation, TRIPs has had the effect of increasing the number of applications worldwide. The high standards of TRIPs requirements (availability of patents conferring certain patent rights and means to enforce such patent rights) have inflated the value of patents, and hence, the usage of patent protection with a corresponding increase in patent filing (Nolff 2001).
The impact of TRIPs on the shift of patent systems towards a globally harmonised and economic-oriented system is significant (it was in fact the first time that
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patent law became an integral part of the multilateral trading system of GATT and the newly founded WTO). TRIPs makes “the factual and conceptual linking between trade and patent law” (Nolff 2001). This Agreement is interpreted according to its trade-related purpose rather than on the basis of a pure intellectual property law approach. As a consequence “patent law has moved to the centre stage of international economic relations” (Nolff 2001); the key role of patents is especially clear in new research-intensive fields such as biotechnologies and information technology. Intangible assets are “the new frontier of developed economies” according to de Beaufort (2009), who underlines the increasing importance of the abstract component of economic growth.
The Patent Cooperation Treaty (PCT) is an agreement of different nature, its purpose is to foster cooperation in the filing, searching, publishing and examining of patent applications. Signed in 1970, PCT became operational in 1978 and was administrated by the International Bureau of the World Intellectual Property Organisation (WIPO). PCT is an international patent filing procedure under which an International Search Authority carries out a mandatory international search and an optional international preliminary examination of applications. Search and examination are two different stages of the patent procurement procedure.
Search is mainly “technical”, it consists in searching the prior art with regard to the claims stated in the application. The examination, on the other hand, is primarily “legal” as it is according to its outcome that the office decides whether patent protection can be granted for an invention Nolff, 2001).
PCT procedure is therefore made up by two phases: 1) an international search processed by WIPO and International Search Authorities (ISA) (e.g. EPO, USPTO, JPO) and 2) a national examination before each designated national office. The purpose of PCT procedure is to reduce duplication of application search. Before PCT, filing in several countries had to be performed to each national office according to their rules. Each office performed its own search and examination ignoring the previous work performed by their counterparts abroad, to some extent this is still the case. Considering the significant increase in patent filing entailed by globalisation and the high standards of patent availability imposed by agreements such as TRIPs, many patent offices worldwide were faced with a
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considerable backlog (Nolff 2001). At the 15th Trilateral Conference held in Kyoto in 1987, EPO, USPTO and JPO acknowledged that “globalisation of industry and trade creates the need for a worldwide system for the grant of patents”
(Document CA/122/97 in Nolff 2001). Some see the evolution of PCT in a binding international patent procurement procedure as a possible solution to the backlog;
EPO is often considered as a unique and successful example to follow.
2.3.2. European harmonisation of national patent systems
Harmonisation of patent systems has also developed at a regional level. Today, there are several regional patent systems granting regional patents, namely, the African Intellectual Property Organisation (OAPI), the African Regional Intellectual Property Organisation (ARIPO), the Eurasian Patent Organisation (EAPO), the European Patent Office (EPO), the Patent Office for the Cooperation Council for the Arab States of the Gulf (GCCPO) and Nordic Patent Institute (NPI). The trend has spread also to Europe, indeed, the very idea of a regional patent system had been one of the tenets of the European Union construction.
European cooperation in patent matters dates back to the late 1940s. In 1947 an agreement between Benelux countries and France established the International Patent Institute (Institut International des brevets, IIB). Its purpose was to search patent applications on behalf of its Member States. When, in 1978, the IIB joined the EPO, the Institute lost its judicial independence as it was incorporated into the EPO Directorate General (Dybdahl 2005). Before the IIB was integrated into the EPO, Italy, Monaco, Switzerland, Turkey and the UK had already entered into the IIB Agreement.
In 1949, the Council of Europe advocated the creation of a European Patent Office, the French Senator Longchambon submitted a project aiming to found the European Patent Office. The proposition sparked off the debate, yet Europe was not eager to carry out such an engaging project. Two conventions followed in 1953 and 1954: the “European Convention relating to the Formalities required for Patent Applications" and the “European Convention on the International Classification of Patents for Invention” respectively. The latter was largely integrated into WIPO provisions on patents. Integration is a slow process and no
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step forward was made until 1963, when the Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Invention (The Strasbourg Convention) was concluded and later ratified in 1980. The Strasbourg Convention indirectly contributed to European patent system harmonisation, since it provided the basis for some of the substantial provisions of the European Patent Convention (Art. 52 to 74). Furthermore, the Convention encouraged contracting states to reform their national legislations in order to keep their patent systems updated and attractive.
The need for a unitary system became urgent in 1958, when the EEC was founded and the issue of territoriality of patents in the context of the Single Market arose.
The lack of a single patent system for the European Union is still recognised today as thwarting of the basic intent of the Single Market (Monti 2010). The European Patent Convention was signed in 1973 and entered into force in 1978. At the time when the EPC was signed, the number of applications filed was growing steadily mainly because of the economic boom of the 1960s. National offices in Europe could not deal with the quantities of filed applications. Duplication of search and examination was common practice, when an application was filed in several member states, each office used to repeat the search and examination of the application even if the work had been performed by another national office in Europe. The EPC was thus conceived with the purpose of rationalising national patent offices’ work and ensure further coordination. Reducing duplication was not the only ambition. The EPC was also aimed at harmonising national laws in patent matters in order to strengthen legal security and simplify the granting process (Art.1 EPC) (Dybdahl 2005). The EPC was negotiated in parallel with the PCT to ensure consistency between to two treaties. In comparison with other supranational attempts to harmonise patent rights and practices, the European patent system is virtually unique. Neither the PCT nor the TRIPs provide a supranational unified granting procedure in the fashion of the EPC. The European Patent Convention represents a substantial part of the European patent law, with direct influence on national legislation as regards grounds for nullity (Art.138 EPC), scope of protection (Art.69 EPC) and duration (Art.63 EPC) (Dybdahl 2005).
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An alternative route towards a single European patent system was planned by EEC countries during the 1960s and led to the Community Patent Convention (CPC) of 1975. Signed in Luxembourg but never ratified, the CPC focused on the legal effects of European patents in EEC countries after grant. As opposed to the EPC which provides a unitary application and examination procedure resulting in a
“bundle of patents” which need to be validated nationally, the CPC was conceived with the aim to extend European centralisation to the post-grant stage by creating a single Community patent valid throughout the EEC area without previous validation of national offices (Dybdahl 2005). Despite several unsuccessful attempts to reach a general agreement between Member States (in 1989, 1997 following a green paper and most recently in 2003, because of translation issues) the Community patent (today referred to as EU patent according to the Treaty of Lisbon law 2007) is still high on the European Union agenda. There needs to be in order to have a unitary patent system in the European Union a unitary enforcement system and effective translation rules (Guellec and van Pottelsberghe de la Potterie 2007). For this purpose, a first round of talks on the European Patent Litigation Agreement (EPLA) began in 1999, yet after a first draft the debate stagnated only to regain intensity in the last two years; the most crucial point of discussion remains how to connect the European Patent Court, with jurisdiction to deal with infringement and revocation actions concerning European patents, to the European Union’s legal order. The need for a separate European Patent Court is urgent to remedy the shortcomings of the current national litigation system for European patents such as multiple patent litigations which involve high costs, legal uncertainty, cross-border litigations and forum shopping (EPO 2009).
As far as the linguistic issue is concerned, the London Agreement for the simplification of translation requirements (adopted in 2000) became operational in 2008, following the deposit of the instruments of ratification and accession by thirteen EPC contracting states; however not in the totality of Member States.
Overall, European harmonisation is widely regarded as a success and an example to follow for other regional economic areas, NAFTA included (Thomson 1993). The EPC strengthened most European countries’ patent systems, by encouraging
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harmonisation between national offices; it extended duration of protection to 20 years, from a previous 17 years and made European patents less costly and complicated by centralising procedures; however, integration is not complete, the EU patent project is still ongoing despite hindrance on two fronts: the lack of a litigation system for European patents and the difficulty of reaching an agreement on translation policy (Guellec and van Pottelsberghe de la Potterie 2007).
The most recent attempt to reach consensus on the translation regime of the EU patent dates back to June 2010, when the European Commission issued a proposal on translation arrangements based on the EPO trilingual translation policy. After several months of negotiations, the Council of Ministers failed to achieve unanimity, virtually rejecting the proposal. However, pursuant to the rules of the Lisbon Treaty (2009) there is one way to bypass the veto of some of the Council’s Member States, notably through the implementation of a special procedure called Enhanced Cooperation. In case of failure to reach consensus at the Council, those EU Member States wishing to continue to work together on matters covered by the Treaties may do so, within the legal framework of the European Union. Hence, at the end of 2010, some Member States asked the Council to allow Enhanced Cooperation on the EU patent, the latter agreed on the 10th of March 2011. In the meanwhile the group of States which originally asked for Enhanced Cooperation (9 Member States) grew steadily (24 Member States) leaving only Italy and Spain out of the project. However, Enhanced Cooperation remains open for non-participating Member States and businesses of non- participating Member States which wish to join. After fifty years of debate, there seems to be a sound basis for the creation of a EU patent system; now whether or not the translation regime proposed by the Commission is the optimal solution will be extensively discussed in a separate section of this work.
2.3.3. The London Agreement
The Agreement on the application of Article 65 of the EPC, commonly called the London Agreement, has been conceived in the attempt to provide a simplified, cost effective and post-grant translation regime (regarding the translation requirements for national validation). Such translation arrangements were discussed at length during the 1990s to be finally condensed into the London
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Agreement negotiated at the intergovernmental Conference held in Paris on 24 and 25 June 1999 (see OJ EPO 1999, 545) and concluded at the Intergovernmental Conference held in the London on 17 October 2000 (see OJ EPO 2001, 549).
The London Agreement modifies the application of Article 65 EPC which states that national patent offices may demand a translation of the European patent as a requisite for validation. In other words, the states which accede the Agreement accept to waive partially or totally their right to receive a translated version of the European patent before validation. Under Article 1 (1), (2) and (3), of the London Agreement:
Any state party having an official language in common with one of the official languages of the EPO shall dispense with the translation requirements provided for in Article 65 (1) EPC.
Any state party having no official language in common with one of the official languages of the EPO shall dispense with the translation requirements provided for in Article 65 (1) EPC, if the European patent has been granted in the official language of the EPO prescribed by that state, or translated into that language and supplied under the conditions provided for in Article 65 (1) EPC. These states may however require that a translation of the claims into one of their official languages be supplied.
Signatory states welcomed the London Agreement as the panacea for the fragmentation of the European patent system. Reducing the volume of translation would have simplified procedures, cut costs and made the European patent much more competitive. Other states, namely those which refused taking part in the Agreement, see its application as discriminatory against European actors not sharing a common language with the EPO. The London Agreement may regulate linguistic arrangements, but its effects are extralinguistic and spread to multiple areas of society. Language is such an intrinsic factor to the functioning of society that linguistic policies are very rarely designed using purely linguistic reasoning and never towards purely linguistic ends (Cooper 1986). At the same time, linguistic policies usually originate from extralinguistic factors (political, economic,
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cultural), knowledge of these factors is crucial for understanding, analysing and evaluating linguistic polices.
Economic and scientific factors triggered the debate on translation arrangements and led to the London Agreement. Patents positively influence innovation by striking a balance between access by the public to information on technology and property rights appropriation by the inventors that give them an edge on the market. This explains the central role of patents in knowledge-based economies where innovation is the basis for growth and competitiveness (Guellec and van Pottelsberghe de la Potterie 2007). According to the utilitarian view, it is the role of social institutions to maximise social welfare by fostering a socially efficient level of innovation. As knowledge falls into the category of “public good” and investing in innovation is usually a risk, markets only generate an sub-optimal rate of inventions. Hence, it is in the interest of society that governments correct some of the markets’ failures by stimulating higher levels of innovation, that is by increasing the use of new technology. In order to boost innovation, governments can invest on several fronts: improving public research systems, funding private research and implementing intellectual property polices (Guellec and van Pottelsberghe de la Potterie 2007). The London Agreement is, thus, the response to a need to adapt the European patent system to a globalised, knowledge-based economy. The rationale behind the Agreement on the application of Article 65 EPC was to simplify the post-grant translation procedure, by cutting translation costs and reallocating the budget in favour of the R&D sector. Post-grant translation costs are seen as greatly damaging the European patent system’s competitiveness with respect to the US and Japanese systems. Eliminating the requirement for post-grant translation was also in line with the need for further integration in the Single Market.
Unfortunately, some of the initial goals were never achieved, some others brought about perverse effects still affecting the Single Market. One crucial point that deserves to be mentioned is the reallocation of budgets to the R&D sector.
On average, the majority of European companies tend to spend less on R&D than US companies, (yet there are some notable exceptions, namely Germany and Sweden) which means that cutting patenting costs does not necessarily involve
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higher investment on R&D (Vianès and Cholé 2001). More than 90% of European companies are SMEs which rarely have a R&D department or benefit from IP policy experts working in-house. Prompting innovation may require a reform of European companies’ investment strategies more than simple cuts in translation costs. Another critical aspect is the idea of translation as a non-tariff obstacle to fair competition. Due mainly to post-grant translation requirements, European patents (enforced in six EPC countries) are at least four times more expensive than in any other country in the world, in both absolute and relative terms, the wider the geographical scope of protection, the higher the fees (van Pottelsberghe and Danguy 2009). That said, translation costs are just one category of the costs that make patenting in Europe so expensive, the other being post- grant costs such as validation and renewal at the national offices. Furthermore, it should be underlined that it is pre-grant costs such as application, search, examination, designation and grant costs which are more likely to put inventors off patenting because they are borne before applicants know whether their inventions are going to produce any profit. At the European level, translation of claims into two of the EPO working languages at the pre-grant stage increase these costs. Both categories of costs represent a significant burden for SMEs or independent inventors (Vianès and Cholé 2001).
In an extensive report on the London Agreement commissioned by the French Government in 2001, George Vianès highlights the harmonisation of national validation taxes as one possible step towards a more effective European patent system. Indeed validation taxes may range from 10 euros in Italy to 398 euros in Austria (Vianès and Cholé 2001). National validation and publication taxes may also be abolished by centralising translation filing. Applicants could hand in all of the required translation at the EPO which would be in charge of sending the translated documents to the designated national offices (Vianès and Cholé 2001).
According to the Confédération générale du patronat des petites et moyennes enterprises, a French SME owners’ union, any agreement on translation arrangements should be accompanied by special measures designed to simplify patenting procedures and support protection of SMEs’ intellectual capital. By abolishing translation requirements, the London Agreement was intended to
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contribute to the “wielding together” of the Single Market and its development as an homogeneous technology market. However, due to the lack of consensus over the modification of Article 65 EPC, only 16 out of the 38 EPC contracting states have ratified the Agreement. The countries which did not join still require translations for national validation. Instead of prompting integration, the Agreement has resulted into a sharp cleavage between Member States;
moreover, it has largely strengthened the role of English, French and German in the project of a unified European Union patent system (Vianès and Cholé 2001).
By modifying the application of Article 65 of the EPC, the London Agreement creates the eventuality that patents take force on the signatory states’ national territory despite the fact that they are written in a foreign language. A European patent granted by the EPO and published in e.g. German is valid throughout the territory of e.g. Croatia without the need for a translation of any sort (indeed, not even the translation of claims is in all cases a requirement of national patent offices of the London Agreement contracting states). Such an eventuality engenders a profusion of legal considerations. Two main legal aspects, which are markedly interconnected with language and translation must be considered, namely the principle of understandability of the law and the role of translations as legal texts. In France, during the intense debate that preceded the accession to the Agreement, the Représentants au Conseil Supérieur de la Propriété industrielle, the Supreme Council for the Intellectual Property accepted the new provisions for slashing translation requirements and welcomed the negotiations on the future Community patent system. At the time, the Supreme Council suggested the usefulness of a regime based on optional translations, filed with the national patent office upon decision of applicants who are responsible for the decision of filing one or more translations if they judge it necessary or desirable.
On the other hand, the Bar Association of Paris adopted a completely different stance. They opposed the London Agreement as it was in contradiction with the principle of understandability to the law (Vianès & Cholé, 2001).
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The French National Institute of Industrial Property (INPI) put forward an interesting proposal on translation arrangements which may have represented an efficient way to streamline the European patent system. The INPI proposed to carry out a “documentary translation” of applications, a form of targeted translation where only the core elements of the original texts are translated as a less costly and less time consuming option. To successfully put into practice the idea of documentary translations, it is crucial to identify at which stages of the granting procedure translation is the most useful and fully exploitable. Patent application texts, for instance, only exist in the language of procedure, yet by setting a priority date, they establish a temporary property right and have a legal effect. According to the Association des spécialistes en propriété intellectuelle (ASPI), the French Association of Experts in Intellectual Property, agents involved in technology development cannot afford to overlook the publication of new patent applications, regardless of the language in which they are written. Hence, it could be argued that, monolingual agents (e.g. small companies who cannot afford multilingual staff) performing patent application monitoring are at best placed at a disadvantage and at worst risk legal opposition for infringing intellectual property rights which they did not understand. Reforming the translation regime has to take into account not only when translation should take place (When factor) but also what should be translated (What factor). In some cases, translating the whole patent document may not be necessary, in some others, the translation of the single patent document is not sufficient. The ASPI stresses that the majority of case law and jurisprudence referred to in case of litigation is usually not translated into the languages of the judges, the lawyers and the parties.
By questioning the usefulness of translation, the London Agreement has also had the merit of bringing to the spotlight the link between translation and the informational function of patents. Patents are one of the main sources of information on technology and without doubt the most reliable source publicly available. That said, the value of patent information is very much a matter of timing. The information has to be detected at the earliest stage, which corresponds to the publication of the application, 18 months after filing. In Europe
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between 5 and 8 years may elapse from priority date before the patent is actually granted; at this stage, the information contained in patent documents is out-of- date and for this reason worthless for patent information monitoring for business considerations. The whole patent information system is therefore based on publication of applications written in the language of procedure (e.g. German, French or English for European patents) (Vianès and Cholé 2001). Currently only the translation of the abstract (usually an automatic translation) is available at publication; The INPI proposed to integrate the translation of the abstract with a translation of claims, in order to have a more precise knowledge of the scope of protection of the invention and as a result, a clearer idea of the limits of patentability and freedom of exploitation. Such a strategy would allow not only an effective use of national languages for patent literature monitoring but also foster the development of technical terminology in all European languages.
2.4. The European Patent Office and its translation policy
The European Patent Office (EPO) is one of the two organs of the European Patent Organisation, the other being the Administrative Council which is a supervisory body composed of the representatives of the EPO member States. The EPO is a patent granting authority established by the EPC, and its purpose is searching and examining European patents on behalf of the EPC contracting states (EPO 2010b).
The procedure to obtain a European patent may be divided in three different stages: the first stage covers the activities of examination on filing, the formalities examination, preparation of the European search report, preliminary opinion patentability, publication of application and finally, the publication of the search report. The interaction between the applicant and the European Patent Office begins at the moment of filing the application. Applications must be filed in one of the official languages or, if filed in any other language, translated into one of the official languages of the EPO (German, French and English) as provided for in Article 14(2) EPC. Normally, the translation must be filed within two months of patent filing, failure to do this leads to the withdrawal of the application (R. 6(1) Implementing Regulations, EPC). A similar rule applies to the documents accompanying the application:
