Grant & validation of a European patent

How are European patents filed and validated?

Although it is possible to file a single European patent application covering any country signed up to the European Patent Convention (EPC), there is no such thing as a granted, unified European patent which is enforceable centrally in all EPC countries. A European patent application is filed at the European Patent Office (EPO), and via this route, it is possible to obtain a granted patent which must be “validated” individually in desired European countries, resulting in a bundle of national patents in those countries validated.

The EPC countries are Albania, Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, North Macedonia, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the UK.

There is also a mechanism for the patent to be extended to other European countries, which are Bosnia-Herzegovina, Montenegro, and Moldova, and even to cover some non-European countries (Morocco, Tunisia and Cambodia).

When the EPO accepts a patent application for grant, it issues a Notification of Intention to Grant with a version of the text it has accepted for grant. This starts a sequence of events which must be carried out to bring the patent into force in the countries a patentee intends it to be valid in:

  • The text of the granted patent needs to be approved by the patent applicant (though amendment can be requested if it is not acceptable for any reason), the allowed claims need to be translated into French and German (assuming they are in English) and submitted to the EPO, and fees for grant and printing paid. This must be done within 4 months of the Notification of Intention to Grant.
  • The EPO then issues the Decision to Grant, which names the date on which the grant of the patent will be published in the European Patent Bulletin. This publication date is the official grant date.
  • The patent must then be validated within 3 months of the grant date in each of the countries the patentee wishes to maintain protection in.

Which countries are chosen will generally depend upon whether they are relevant to your business, and, of course, cost. The requirements for the validation process depend on the individual country, and consequently the costs also vary.

The most important difference in the requirements for the countries is in the translation of the patent, which can be quite expensive. The greater the number of words in the patent document, the greater the translation costs will be. Previously, the full patent had to be translated into an official language of each country in which the patentee wanted protection. If no such translation was filed, the patent was not valid in that country.

To help reduce the costs of patent validations, some countries signed up to the ‘London Agreement’ and made certain concessions regarding the translation requirements.

For European patents which are in English, the EPC countries effectively fall into three categories:

i) Countries signed up to the London Agreement and having English, German or French as an official language do not require a translation of any part of the patent to validate the patent in that country.

This applies to Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland and the UK.

ii) Countries signed up to the London Agreement and having an official language other than English, French or German only require a translation of the granted claims into English.

This applies to Albania, Croatia, Denmark, Finland, Hungary, Iceland, Latvia, Lithuania, North Macedonia, Netherlands, Norway, Slovenia and Sweden.

iii) Countries which did not sign up to the London Agreement still require the full patent specification to be translated into an official language of that country. These are consequently the most expensive countries to validate a European patent in.

This applies to Austria, Bulgaria, Cyprus, Czech Republic, Estonia, Greece, Italy, Malta, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Spain and Turkey.

Some countries share an official language, so for example, a Greek translation could also be filed in Cyprus.

Additionally, some countries require a power of attorney, though most do not.

The validated patents are then treated like normal national patents in each country, and annual renewal fees need to be paid each year to each national patent office the patent is validated in, instead of to the EPO. If the annual fees are not paid, the patents will lapse.

Unitary Patent

There is a new European patent system which is still in development, called the “Unitary Patent” system. It is primarily intended to be an EU patent, and so the UK is not likely to be part of it.

The validation system will change for the countries which are signed up to the Unitary Patent when it eventually comes into effect.

For these countries, when a European patent is granted, a single fee can be paid to validate all of the countries as a single Unitary Patent, and every year the Unitary Patent can be renewed with a single renewal fee. For patents which are in English, one translation would be required into another official EU language.

However, the Unitary Patent system is only optional for patent applicants, who may instead elect to validate their European patents in the normal way, at least for a period of time after the Unitary Patent system comes into effect.

For countries which are not part of the Unitary Patent system, the standard European patent validation system will remain.

If you have any questions about validation of a European patent, or about patent protection in general, please get in touch with one of our patent attorneys.

Wilson Gunn