European Patent Validation – What, When and How?

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Europe has always been one of our clients’ most popular and important filing destinations. By filing into the European Patent Office (EPO), the applicant can eventually obtain patent protection in up to 40 countries and extension states. An additional benefit of filing in the EPO is that you can delay your decision on which European countries you ultimately want patent protection in until after grant of the patent. Therefore, the applicant often has several years to research their potential markets in Europe.

The process of registering your granted European patent into the individual countries where it will ultimately be enforceable is called validation. Since your patent has been granted by the EPO at this stage, your patent will not undergo any further substantive examination in the patent offices of the individual countries. Validation is an entirely administrative step.

Below is a timeline of the validation process.

epv timeline

Grant of your European patent begins with the issuance of the Notice of Intent to Grant, or the 71(3) Communication. You have 4 months after issuance of the Notice to translate the claims into French and German (assuming your application was originally filed in English) and pay the print and grant fees to the EPO. Shortly thereafter, the EPO will issue the Decision to Grant and publish the grant of your patent in the European Patent Register. You then have 3 months from the publication date to validate your patent.

The specific validation steps vary from country to country. The London Agreement has significantly reduced the requirements (and expense) of validation for its member states. For certain London Agreement countries, validation is automatic, requiring no further translations or forms. Other London Agreement countries may require translation of just the claims. Validation for non-London Agreement countries can be much more involved. For these countries, validation can entail translation of the entire patent into their official language. As you can imagine, seeking broader patent protection in Europe can mean substantially higher validation costs.

You’ll find additional information on country-specific validation requirements in our European validation e-kit.

Our foreign filing platform, inovia.com, provides a simple solution for European validation. Simply register for a free account for the ability to validate your European patent in up to 38 countries with just one instruction.
 

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

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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.