Patent translations: old and new problems

A particular change affects the owners of European patents that are valid in Hungary and their right to collect compensation for damages when the patents are infringed.

European patent filers can now file the full Hungarian translation of the patent specification when the language of prosecution for the European patent was English. Furthermore, the amendment 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.

The date when the Hungarian translation is filed has an effect on the date from which damages can be claimed during patent infringement cases. It also means that the submission of a full translation of a European patent specification can put patent owners in advantageous positions when they are claiming damages in court.

Protecting the little guys

The rights of the patent owner when facing an infringer are defined in Article 35 of the Hungarian Patent Law, and of the several measures that the patent owner can claim from the court, the pecuniary measures are listed in Subsection (2)(e).

This subsection states that the patent owner can claim compensation for restitution of enrichment—for example, the patent owner can be compensated for the money that the infringer saved in unpaid licence fees when committing patent infringement—from the infringer. However, this component of the pecuniary measures does not depend on whether a full translation of a patent specification has been filed.

Patent filers have further rights to claim compensation of damages, other than those mentioned in the previous paragraph, by relying on the Hungarian Civil Code. Article 35(3) of the Hungarian Patent Law refers to the general rules of the Hungarian Civil Code, which provides patent owners with the right to claim compensation for damages that are caused by patent infringement.

According to the Civil Code, liability for damages is subjective in the sense that it leaves open the possibility that the infringer can be relieved from liability by proving that it acted in a manner that can be generally expected in the given situation.

"IT IS THE PATENT OWNER’S BURDEN TO PROvE THE LEvEL Of DAmAGE CAUSED BY THE INfRINGER AND THE CAUSAL LINk BETWEEN THE DAmAGING CONDUCT AND THE OCCURRENCE Of DAmAGE."

In other words, in Hungary, the obligation to pay compensation for damages depends on whether the damage is the result of the infringer’s actionable conduct. However, it is the infringer’s obligation to prove that it can be protected by this exemption. On the other hand, it is the patent owner’s burden to prove the level of damage caused by the infringer and the causal link between the damaging conduct and the occurrence of damage.

Interestingly, Article 35(3) of the Hungarian Patent Law provides infringers that do business in Hungary with a specifi c example of how they can use this exemption.

It says that if a patent holder fails to submit the Hungarian translation of a European patent as required under Article 84(h) (normal validation by translating the claims only), and the infringer’s private or corporate domicile is located in Hungary, the infringement may not be imputed to the infringer (ie, the alleged infringer has not carried out any actionable conduct) until the patent holder satisfies the requirements that are set out in Article 84(g), which makes filing a full translation necessary in a court dispute.

This is unless the patent holder can verify that the infringer should have understood the original text of the European patent in the absence of a translation.

In this situation, the infringer’s actionable conduct would not directly lead to the damage that was caused by the patent infringement. Th is is because the infringer would not have access to the full Hungarian translation of the patent specification, meaning that it could not learn the contents of the patent and so could not refrain from committing the patent infringement.

No more protection

The recent amendment to the Hungarian Patent Law has made it possible for European patent filers to choose between filing only patent claims in Hungarian, or filing a full Hungarian translation of a patent. European patent filers can also file the Hungarian translation of the specification, as long as the patent’s claims were filed in Hungarian first and have been validated.

This leaves the best courses of action open to European patent filers and courts, and undermines the exemption that infringers could have relied on to avoid paying compensation for damages. For example, if the European patent owner did not file a full translation of the specification, but can prove that an infringer could understand the English version of a patent, it could claim full damages from the validation date.

The wording of the exemption implies that the exemption is aimed at Hungarian small and medium-sized enterprises (SMEs), which may not be multilingual. However, if the European patent owner can prove that competent officials of the infringer do understand English and have language qualifications or business correspondence in English, the exemption cannot be applied.

"Now that patent claims need only be translated into Hungarian, translators are expected to complete translations more quickly, and this can adversely affect their quality."

The reasons for legislating around this exemption are not clear. However, it is possible that Hungarian legislators got the idea from the EU proposal for the Unitary Patent Regulation (UPR). The UPR states: “In the case of a dispute concerning a claim for damages, in particular if the alleged infringer is a SME, the court hearing the dispute shall take into consideration that the alleged infringer may have acted without knowing, or having reasonable grounds to know, that he was infringing the patent before having been provided with the translation...”

A little more than a year has elapsed since Hungary signed up to the London Agreement, which is aimed at reducing the translation costs of European patents. Also, only a few patent infringement proceedings are underway in Hungary and courts are yet to establish how they decide the date from which full damages can be claimed by a European patent owner. Therefore, SMEs are not immediately threatened by this new legislation.

Quality of translations

Being able to file a Hungarian translation of a European patent, instead of the patent in full, when seeking validation in Hungary, requires European patent filers to be vigilant about the quality of translations.

When a European patent is ready to be validated in Hungary, its claims must be translated into Hungarian. If the claims are translated incorrectly, problems can arise.

Article 84(j) of the Hungarian Patent Law deals with the authentic text of validated European patents. It states that if the scope of protection that is defined by the translated claims is narrower than the scope of protection of the original claims of the European patent, then the European patent’s authentic scope of protection in Hungary should be determined on the basis of the translated claims.

Article 84(j) also allows European patent filers to correct a Hungarian translation. A patent filer can submit a separate petition and pay a correction and republication fee, and corrected claims will be effective from the date on which the Hungary IP Office (HIPO) issues an official notice announcing republication.

European patent filers should be aware of Article 84(k). This states that those who have started to use a granted European patent, or have prepared to use it, before the patent’s claims were corrected, and the object of their use was outside of the scope of protection that was defined by the uncorrected text, cannot be accused of infringing the European patent in Hungary.

The quality of patent claim translations has increased in significance. The consequences of any error that affects the scope of protection greatly affect the value of the validated European patent and the possibility of enforcing it in Hungary.

When European patents had to be translated in full to be validated in Hungary, translators had more time to understand the technical teaching of a patent and to choose the correct terms that are used in the claims. Now that patent claims need only be translated into Hungarian, translators are expected to complete translations more quickly, and this can adversely affect their quality.

European patent filers need to make sure that their Hungarian patent claim translations do not accidentally narrow the scope of their European patents in Hungary.