Validation vs. Recording an Address for Service Under The London Agreement

After a long gestation period, the London Agreement finally entered into force back on May 1, 2008. Its aim was to reduce the cost and complexity of validating European patents in individual countries following grant by the European Patent Office (EPO).

Many London Agreement countries reduced or completely removed the need for translation of any portion of the specification (bearing in mind that the granted claims are required in the official EPO languages of English, France and German as part of the grant procedure). Probably of greatest interest to most applicants, the need for full specification translations in France, Germany and the UK was removed entirely. A number of other London Agreement countries require only the claims to be translated into the local language, although sometimes this is only if the specification is in English.

In fact, the need for formal validation has also been removed in countries such as France, the UK and Germany. To have a European patent extend to countries like this, you just need to pay the renewal fee each year. You must also maintain an address for service within a European Patent Convention member state.

While not strictly necessary, it is still usual to continue to record an address for service in such countries individually, rather than relying on a central address elsewhere in Europe. There are a few reasons for that:

1. Language/procedure headaches
This is probably the main issue. While, say, the French patent office may be willing to mail notices to European addresses outside France, they’re not compelled to communicate in the language of the destination country. Since all correspondence is typically in the local language of the relevant patent office, it makes sense to allow a firm located in the country, with native speakers and familiarity with local laws and practice, to handle incoming correspondence from their patent office.

2. European Patent Attorneys
Strictly speaking, an applicant’s European patent attorney could record themselves as address for service in such countries. However, many European patent firms don’t offer this service. Language difficulties and procedural risks (as discussed in the preceding paragraph) are the major reasons for this. In addition, a surprising number of European patent attorneys are not as familiar with precisely what’s involved, or even that they are able to offer this service.

And those that offer this as a service will usually charge you for it.

3. Delays and risk associated with mail
When your patent renewal fee isn’t paid due to an unforeseen problem, do you want the notice advising you of the missed payment to be put in the mail destined for another country, or would you prefer it to be sent locally? What if a competitor files for a declaration of invalidity of your patent? Is that the sort of thing you want delayed or lost in the mail? While there are no statistics on the impact lost or delayed mail has on patentees, for the modest cost involved, recording a local address for service seems like good insurance. That way, your local foreign associate can notify you of any issues immediately.

Summary

So while, thanks to the London Agreement, there are several EPO countries that no longer require formal validation of a granted European patent, there are several reasons why you may want a local address for service in each country.

Research your options for validation. US firms and their clients often overpay for validation, due to the fact that their instructions generally pass through several layers of attorneys. inovia offers a cost-effective way to validate a granted European patent in up to 38 countries with a single instruction. Our online portal offers a free 1-click quote tool which allows you to create instant validation estimates for your specific European patent.

If you’re interested in learning more about London vs. Non-London Agreement countries, you can also download our European validation e-kit or send us an email.
 

 

Related insights