Hungary is a member of the London Agreement since January 1, 2011, and some practice has accumulated with such cases.

The amendment of the Patent Law that took effect on the same date makes it possible that European Patents granted with English description, can be validated in Hungary by the submission of the Hungarian translation of the claims only. The granting and printing fee is calculated on the basis of the combined length of the printed English description, of the drawings and of the Hungarian claims. If the patent was granted with either a French or German description, the owner of right has the option to submit the English or Hungarian translation of the description and to add the Hungarian translation of the claims. The printing fee is also calculated on the basis of the same principles, i.e. on the total length of the disclosure.

What has not been made possible by the law is:

- the submission of the Hungarian specification when the European patent was granted with English description; and

- any later submission of the Hungarian translation of the description.

In this regard the first date when there is a possibility to submit a full Hungarian disclosure is the date when enforcement proceeding or a national proceeding concerning the validity of the patent is started. This is foreseen in the accession regulations of Hungary to the London Agreement.

With an effect of January 1, 2011 Article 35, paragraph (3) of the Patent Law has been amended, according to which the possibility of claiming damages after the non-allowed use of a validated patent has become bound to the date when the Hungarian translation of the specification is submitted. As it can be seen from the above summary, this could happen at the date of the validation in case of EP patents granted in French or German provided the validation utilized a full Hungarian translation, or at the starting date of an infringement proceeding.

The exact basis of the problem lies in the below cited wording of Art. 35(3) of the Patent Act:

“(3) Where a patent is infringed, the patentee may also claim damages under the rules of civil liability. Where the translation of the specification of the European patent has not been supplied by the patentee under Article 84/H, and the infringer is resident, or has a seat, in the territory of the Republic of Hungary, he shall not be held liable for the infringement until the patentee complies with Article 84/G(2), except where the patentee proves that the infringer may have understood the specification of the European patent without the translation thereof.” (emph. added)

In accordance with the above paragraph, and of the rules of the civil law, where liability of the defendant is a pre-condition for the court to decide on the payment of damages, there may be situations where damages under the rules of civil liability may only be claimed for the period following the filing of the Hungarian translation of the specification which can be by several years after the date of validation.

This problem has been recognized by the profession and on a proposal initiated by LES Hungary has been submitted to the Hungarian Intellectual Property Office (HIPO) that:

a. the law must make it possible that the applicant can file a Hungarian translation instead of the English specification within the validation period.

b. As the effective date of claiming damages is related to the filing of the Hungarian translation of the specification, the law must make it possible that a patentee can file the Hungarian translation any time of the validity of the European patent.

This proposal has been accepted and a bill suggestion was submitted to the Parliament of Hungary with a corresponding content.

According to the proposal:

1. The owner of the right will have the option to validate a European patent in Hungary by submitting the full translation independent from the language of the prosecution. In this case the granting and printing fee must be paid after the length of the Hungarian translation.

2. If an European Patent has been validated in Hungary without the submission of the Hungarian translation of the description, there will be a legal way of late and separate submission of the translation of the Hungarian description at any time, however, then a separate printing fee calculated after the length of the description must be paid.

It is believed the bill will pass with 2011.

In summary:

Owners of European Patents will have the cheapest way to enforce their rights to validate their patents in Hungary with the full Hungarian translation, since they have to pay a single printing fee.

Those considering the launching of a patent infringement lawsuit or by simple precaution, may file the Hungarian translation of the description any time to fix the date from which on wards damages can be claimed.

Michael Lantos, managing partner
Danubia Patent & Law Office