A guide to the UPC and the UP - Flipbook - Page 27
Compensation Scheme for Translations
Overview
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According to the current language regime before the EPO, a European patent application can
be filed in one of the official languages of the EPO, i.e. English, French and German, or the
application can be filed in any other language. 35
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Recital 10 Translation Regulation states that in order to facilitate access to European patents
with unitary effect, in particular for SMEs, applicants should be able to file their patent
application in any other language of the EU.
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If, however, an application is filed in a language other than English, French or German, a
translation of the original application into any of the official languages of the EPO must be
provided. According to r.6(1) EPC Implementing Regulations, such a translation has to be
filed within two months of filing the European patent application. It should be noted that,
under art.14(2) EPC, European patent applications can now be filed in any language and that
this right is no longer limited to applicants based in any of the EPC Contracting States. 36
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In order to facilitate access to European patents with unitary effect, the Translation Regulation
provides a compensation scheme according to which certain applicants obtaining patents with
unitary effect, having filed a European patent application in one of the official languages of the
EU which is not an official language of the EPO and having their residence or principal place of
business within a Member State, can receive additional reimbursement of the costs of
translating from the language of the patent application into the language of proceedings of
the EPO. 37 This compensation scheme will be available only for certain groups, namely: SMEs,
natural persons, non-profit organisations, universities and public research organisations
having their residence or principal place of business within a Member State. 38 The costs are
only paid up to a ceiling, 39 as further determined in art.4 Rules relating to Fees for Unitary
Patent Protection.
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The rules that will be applied by the EPO are summarised in Part II Ch.II Unitary Patent Rules.
R.8(1) Unitary Patent Rules provides that compensation for translation costs is generally
possible in the above-defined circumstances. The groups of entities/persons that are entitled
to compensation are defined in more detail in r.8 Unitary Patent Rules.
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The first group entitled to compensation for translation costs are SMEs as defined according
to the European Commission recommendation 2003/361/EC. 40 The recommendation generally
defines the terms micro, small and medium-sized enterprises as enterprises which employ
fewer than 250 persons and which have an annual turnover not exceeding €50m and/or an
annual balance sheet total not exceeding €43m. A further requirement for a company to be
considered an SME is that not more than 25 per cent of the capital is held directly or indirectly
by another company which is itself not an SME. 41
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The second group entitled to compensation for translation costs comprise natural persons
for which, of course, no further definition is required. 42
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art.14(2) EPC.
See Case Law of the Boards of Appeal of the European Patent Office, EPO, 10th edn, July 2022 p.796, available at
https://www.epo.org/law-practice/case-law-appeals/case-law.html.
recital 10 Translation Regulation.
art.5(2) Translation Regulation.
art.5(1) Translation Regulation.
http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2003:124:0036:0041:en:PDF [Accessed 5 April 2023].
See also explanatory note 3 to r.8 Unitary Patent Rules, https://www.epo.org/law-practice/legal-texts/officialjournal/2016/05/a39.html.
r.8(2)(b) Unitary Patent Rules.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 17
