THE BEST AND FASTEST TESTED WAY TO VALIDATE YOUR EUROPEAN PATENT

14 August 2023

How to Validate a European Patent

Introduction of the European Patent

This post covers various aspects of the validation and designation system of the European Patent in designating countries. The validation of the European Patent can be done in countries who are signatories to the European Patent Convention and the counties who have signed extension/validation agreements with the European Patent Office (EPO). The proprietor can validate its patent in East European states which are not a member of the EPC but are termed as extension countries.

The extension and validation systems are largely the same as the designation system for contracting states. However, the extension and validation systems are based not on direct application of the European Patent Convention (EPC) but solely on the relevant national law modelled on the EPC. Hence, they are subject to the national extension/validation rules of the country concerned.^[1] A proprietor who wishes to apply for a patent in the signatory countries, can either file a patent application with the respective national offices of each member state or make a consolidated application with the EPO and thereafter validate the patent in each of these states. A European Patent will have the same effect as that of an application filed with the National patent office.

List of countries of the European Patent

Under Article 2(2) of the EPC, the granted European Patent shall have the same effect and will be subject to same conditions, as that of a national patent, in each contracting state unless otherwise stated.[2] The contracting states can be categorized into the below categories:

Member States of European Patent Convention

The countries which are currently are the signatories of the EPC are :

Albania, Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, North Macedonia, Malta, Netherlands, Norway, Poland, Portugal, Romania, Serbia, Sweden, Slovenia, Slovakia, San Marino and Turkey. ^[3]

Extension & Validation States

Additionally, the EPO has also signed extension and validation agreements, by virtue of which the following countries have been included in the patent validation process:

Extension states: Bosnia and Herzegovina, Montenegro

Validation states: Morocco, Republic of Moldova, Tunisia, Cambodia

Pre-grant Process

Under the simplified process of obtaining a European Patent, the applicant files a single application with the EPO, having the same effect as a national application in each contracting member state wherein the patent application is validated. The applicant must select the contracting states in which they wish to validate their application any time after the application has been filed but prior to grant of the patent.

Designation in Contracting States

As per Article 79 of the European Patent convention (EPC), once a patent application has been filed with the EPO, all contracting states shall be deemed to have been designated, subject to payment of a designation fee. The Applicant has an option to withdraw the contracting states from its application as it deems fit but the same must be done before the grant of the European Patent by the EPO.^[4]

Unitary Patent & Unified Patent Court

Unitary Patent

Unitary Patent (UP) is a short of European Patent with unitary effect. It’s a single patent right which will be granted to the proprietor covering renewal, transfer, revocation and lapse for all contracting states. Unitary Patent will make it possible to protect a granted patent in up to 25 EU member states through a single application with the EPO. The system has come into force in June 2023, starting with 17 states. EU Regulation no. 1257/2012 and 1206/2012 established the UP.

With the introduction of the Unitary Patent the patent proprietor, would have an option to either validate its patent nationally or to select the Unitary Patent route. However, for EPC member states who are not included under the Unitary Patent, it would still be required to validate the patents nationally and to comply with the translation requirements of each state. Furthermore, it will be possible for the proprietor to proceed with a mix of both the options i.e., Unitary Patent and validation of the patent for instance in the UK, Switzerland and Norway.

The pre-grant stage of European patent with the EPO is not affected with the introduction of Unitary Patent.

Unified Patent Court (UPC)

The Unified patent court has been established under the Unified Patent Court Agreement (UPCA) which has been signed by the Member States of the Euroean Union except initially Spain, Croatia and Poland.

The examination and grant is carried out by the EPO and the enforcement will be by the Unified Patent Court (UPC).

Opt-out

The opting-out system simply means that the patent owner can remove their patent from the jurisdiction of the UPC, to keep the patent under the jurisdiction of national courts.

As the UPC opened on 1 June 2023, all existing European Patents fall under its jurisdiction, implying that the third parties can initiate action against existing patents even if they are past the opposition period. In order to avoid this, proprietor’s have been given a window of 3 months (sunrise period) to opt out of the patents from the jurisdiction. There will be no impact on the UK part of the European patent.

Filing of Patent Translations with National Offices

As per Article 65 of the EPC, the contracting states can have a requirement for submission of translations of the granted patent by the proprietor to the central industrial property office in the prescribed language. Each contracting state has its own requirements with regard to submission of translations. What applies to one contracting state might not be applicable for another. For instance, Hungary and the Netherlands require proprietor to submit a translation of the claims but countries like Italy, Poland, Spain, Czech Republic, Bulgaria, Romania, Turkey have a requirement for submitting translation of the patent specification in the respective languages of the member states. Depending upon which country the proprietor wishes to validate its patent, requirements should be understood in order to avoid any non-payment or late payment of fees.

In an event of amendment of claims by the proprietor, certain member states could additionally have a requirement for filing translations of the amended claims as well. For instance, this requirement is there in case the patent proprietor has validated their patent in Hungary.

The London Agreement which came into force on 1 May 2008, plays a very important role in simplifying the patent validation process. It is in relation with the translation regime. The applicability of this regime is dependent to the member states who have ratified or acceded to the agreement.[5] This Agreement is applicable in relation to the European Patent applications filed with the EPO and grants published in the European Patent Bulletin after the agreement came into force. The enforcement of the London agreement has simplified the validation process. The patent applications filed with the EPO prior to the enforceability of the agreement shall not be within its scope.

Timeline for Filing Translations 

The proprietor must submit these translations before the end of three months after the date of publication of the grant in the European Patent Bulletin, unless the State concerned prescribes a longer period.^[6] The proprietor or their respective patent attorneys need to comply with requirements of how these translations should be filed with the national patent offices. Normally, these translation requirements are country specific and the patent proprietor or their attorney’s must be vigilant about it, in order to avoid any error.

After submission of translations, these can be viewed by the public through means such as Inspection in the reading room, copies available, entry in the patent register etc. It is also possible to submit corrections in translations by paying an additional fee depending upon the rules in individual contracting states.

As the unitary patent system has become operational in June 2023, initially there is still a requirement for filing translation, however, this requirement will be reviewed again after 6 years depending upon the availability of high-quality machine translations.

Fees and Costs

• Validation Fees

The cost of validating a patent largely depends on the number of contracting states in which the proprietor wishes to validate its patent. The fees in each contracting state would differ.

• Translation Fees

The translation fees are case specific and dependant on various factors. Translation requirements vary from one member state to the other, while some request for translation of just the claims, there are member states who have a requirement to submit translations of the patent specifications. Further, the cost would be higher if the proprietor wishes to validate the patent in more than one member states with translation requirements.

• Additional costs

Subject to states in which the proprietor wishes to validate its patent application, the proprietor would have to account for fees pertaining to filing of the translations with the national patent office’s either electronically or by post etc., for publication of specifications in the national language(s), attorney charges etc.

Payment Terms

The validation fees in respect to the European Patent applications should be paid within a period of six months from the date on which the European Patent Bulletin publishes the European search report;^[7^] Payment of validation fee is not standard throughout; it is dependent upon the requirements set by each contracting state. Certain contracting states also grant extension of time by payment of an additional fee.

The validation process in Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco and Switzerland and the United Kingdom is relatively faster than the rest of the contracting states, owing to the simplified requirements.

Appointment of a Representative

Certain contracting states do not have any requirement for submitting a power of attorney in favour of the representative for the purpose of validation. In the case of German and Hungarian patents, there is no specific requirement for filing the power of attorney. In case of Hungary, if the applicant’s permanent residence is not in the territory of the EEA, they shall appoint a professional representative who is authorised to appear before the Hungarian Intellectual Property Office. However, it is advisable to file a proof of address in case of any correspondence from the respective national patent offices to receive correspondences from the office. On the contrary, Switzerland and Liechtenstein require a proof of address in either of the countries. Since the validation processes can be complicated and the requirements of each member state vary, it’s advisable to appoint a representative.

Forms

For entering the European phase, contracting states could have a country specific requirement for filing translations. These translations must be filed in the manner specified by the national patent offices of the member states in which the proprietor wishes to validate the granted patent.

Effects of Brexit on the European Patent

The signatories of the European Patent Convention include the United Kingdom. However, the exiting of the United Kingdom from the European Union has had no impact on the European Patent applications or registrations as the patent registration process under EPO extends to nations other than the member states of the European Union.

Renewal Fees

Renewal or annuity fee is payable each year on the date of filing of patent application. These are paid directly to the concerned national patent offices where validation was done. Some of the national patent offices send reminders at the applicant’s local address or at its local legal representatives. The proprietor should ensure that the renewal fees are paid in time in order to ensure that the patent protection is maintained. The payment of annuity shall become due from third year and thereafter each subsequent year from the date of filing of application^[8^].

Footnotes:

^[1]https://www.epo.org/law-practice/legal-texts/extension-validation-system.html#:~:text=The%20extension%20and%20validation%20systems,payment%20of%20the%20designation%20fee.

[2] https://www.epo.org/applying/european/validation.html

^[3] https://www.epo.org/about-us/foundation/member-states.html

^[4] https://www.epo.org/law-practice/legal-texts/html/epc/2020/e/ar79.html

[5] https://www.epo.org/law-practice/legal-texts/london-agreement.html

^[6] Article 65 EPC-  https://www.epo.org/law-practice/legal-texts/html/epc/2020/e/ar65.html

^[7] https://www.epo.org/law-practice/legal-texts/official-journal/2015/02/a19.html

^[8^] Article 86 of PC – https://www.epo.org//law-practice/legal-texts/html/epc/2020/e/ar86.html