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Danubia Law Office LLC

Hungary is a member of the London Agreement and from January 1, 2011, European Patents can be validated in Hungary by filing just the Hungarian translation of the claims, if the patent specification is available in English.

With effect from January 1, 2012, the Patent Law has introduced an option for patentees to file the full Hungarian translation of the specification when the language of prosecution for the European Patent was English. When the language of prosecution was either French or German, the option of filing the full Hungarian translation has been available since January 1, 2011.

Furthermore, the recent amendment to the patent law allows the voluntary subsequent filing of the Hungarian translation of the specification in a separate step for cases where the validation was made using the English description with the Hungarian claims. Te reason behind these changes is that in a patent infringement lawsuit, the plaintiff can demand compensation under the rules of civil liability only aſter the period when the full Hungarian translation was made available for a Hungarian defendant, or was electronically published by the Hungarian Intellectual Property Office (HIPO) (except where the patentee proves that the infringer should have understood the specification of the European patent without the translation).

Because of cost considerations, most of the validated European patents use the original English specification with the Hungarian translation of the claims.

Article 84/J of the patent law deals with the authentic text of validated European patents. According to paragraph (1) of this article, if the scope of protection defined by the submitted Hungarian claims is narrower than that of the original claims of the granted patent, then the authentic scope of protection should be determined on the basis of the translated claims.

Article 84/K, paragraphs (1) to (5) of the patent law allow patentees to correct the Hungarian translation by submitting a separate petition and paying the fee for the correction and for the repeated publication. Tere is no time limit for carrying out the correction. Te corrected claims will be effective from the date on which the HIPO issues the official notice on the filing of the corrected translation and its subsequent publication.

Te most important regulation is included in paragraph (6) of Article 84/K. Tis states that those who have started use, or have made serious preparations for use, prior to the correction of the claims, and the object of their use was outside the scope of protection defined by the translated text being actually in effect, will not infringe if the use occurs prior to the publication of the corrected claims. Also, use that was outside of the scope before correction can continue undisturbed even aſter corrections are



made. Tis regulation is very similar to the prior user’s rights well known to patent practitioners.

What follows from the above? Te quality of the translation of the claims of a validated patent has an increased significance. Te consequences of any error that affects the scope of protection greatly impinge upon the value of the validated patent and the possibility of the patentee enforcing the patent rights.

When it was necessary to translate the full specification and the claims, translators had more chance to understand the technical teaching of a patent and to choose the correct terms used in the claims. But with the need to translate only the claims, and in the mad competition for decreasing translation costs, translators have no time to study the specifications in detail in order to prepare a correct translation that has the correct scope.

We have recently experienced a tendency that clients and agencies specialising in validation tasks try to reduce translation costs to levels which are unacceptable for well-trained patent attorneys and practitioners. Tis never-ending price competition will have eventually an effect on the quality, and stakeholders should be warned that much more can be lost by having a narrower scope of protection than the amount saved by obtaining cheap translations.

Our office currently has quite a few patent infringement proceedings, all based on validated European patents, and in more than the half of the cases, the plaintiffs are not in a position to enforce their patent rights because of the narrow scope of protection caused by the incorrect translation.

Michael Lantos is deputy managing partner at Danubia Law Office LLC. He can be contacted at:

World Intellectual Property Review January/February 2012

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