Grant & validation of a European patent
How are European patents filed and validated?
The validation agreement signed on 31 October 2019 between the European Patent Office (EPO) and Georgian Patent Office has officially come into force as of 15 January 2024. This means that Georgia has become the 5th validation state in respect of European patents.
In addition to the 39 contracting EPC states and the extension state of Bosnia and Herzegovina, this means that any European patent with a filing date on or after 15 January 2024 can be entered into force in as many as 45 territories.
Extension and validation states are territories which are not a contracting party to the European Patent Convention but have agreed with the EPO that European patents can be entered into force in their territory. This is done by amending the relevant national law such that European patents are given equivalent status to national patents, subject to the payment of the relevant fees and other formal requirements being met.
As the validation and extension states are not contracting states, they cannot participate in the administrative council of the EPO, and thus have no say in the running of the EPO.
Extension states are territories which intend to become contracting EPC states in the future, whereas validation states are territories which do not have this prospect (typically for geographical reasons).
Currently, there is only one extension state, which is Bosnia and Herzegovina. There have been several historical extension states which have since acceded to become a contracting state, including Albania, Croatia, Macedonia, Serbia and, most recently, Montenegro.
The other four validation states (in addition to Georgia) are Cambodia, Moldova, Morocco, and Tunisia.
For a European patent to be entered into force in any validation or extension states, the first action is to pay the relevant validation or extension fees whilst the application is pending. The deadline for paying these fees is 6 months from the publication of the relevant application (i.e. the same deadline as for the payment of the examination and designation fees).
A separate fee must be paid for each desired validation or extension state. If the fee is not paid by the relevant deadline, then protection cannot be obtained in the extension/validation state (a two-month grace period is allowed for late payment of these fees, with a 50% surcharge).
Once the European patent is granted, the conventional validation procedure is then carried out in each of the validation/extension states, as with contracting states. The exact requirements for validation vary from territory to territory, as these requirement are set by national law, not the EPC itself.
If you have any questions about validation states or any other intellectual property enquiry please get in touch to speak to one of our attorneys.