Although many of our clients know granted European applications must be validated, a good number of them don’t have a strong understanding of the grant and validation process.
For many applicants, especially those in the US, their post-prosecution involvement begins and ends with simply instructing their European agent to “finish the job and validate in countries X, Y and Z.”
Here, I’ll try to provide a simple overview of the European grant and validation process.
Part 1: Getting to Grant
The end of the prosecution stage is marked by issuance of the Notice of Intention to Grant (also known as a Communication under 71(3) EPC). Congratulations, the hard part’s over! The granted claims must now be translated into French and German (assuming the original application was filed in English). The translated claims are submitted to the EPO with the printing and grant fees within 4 months of the issuance of the Notice of Intention to Grant. For most US-based applicants, their European agent coordinates these steps.
Next, the EPO issues a Decision to Grant (also known as a Communication under 97(1) EPC) which is published in the European Patent Bulletin. Following publication of the Decision to Grant, the applicant has 3 months to validate the granted application in those countries where protection is desired.
Part 2: Time to Validate
Validation involves corresponding with the patent offices in each of the selected countries. Depending on which countries are chosen, the applicant may need to do any combination of the following:
Pay a fee
Submit forms or a letter indicating that validation is required
Lodge a translation of the claims or of the entire specification
Record a local address for service
However, in many countries such as the UK, Germany and France, a formal “validation” step is no longer required. The European patent will be in force in such countries as long as annuities are paid at the country level.
Following validation, the patent is now in force within the selected jurisdictions. To maintain the patent, the applicant must pay annuities, also known as renewal fees, each year.
See this page for more detail regarding the European validation process.
FYI: inovia typically helps clients save time and money at Part 2 of the grant and validation process, but we can also step in at Part 1 if desired. From our website, you can get an estimate for your European validation.