The European Patent Office (EPO) has announced the signing of a validation agreement with the Ministry of Industry and Commerce of Laos. This means that, once the agreement comes into effect, Laos will become the 6^th validation state in respect of European patents. As the EPO only announced the signing of the validation agreement on 13 May 2024, there is not yet a date set for when this validation agreement will come into force.

Considering the existing 39 contracting EPC states, the extension state of Bosnia and Herzegovina, and the (soon to be) 6 validation states, this means that a single European patent application filed after the Loas Validation Agreement comes into force could be entered into force in as many as 46 territories.

What are validation and extension states?

Extension and validation states are territories which are not a full 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 formal voting nor decision making rights with regard to the operation of the EPO.

Extension states are territories which intend to become contracting EPC states in the future (and are awaiting the required changes to national legislation to be implemented), whereas validation states are territories which do not have this prospect (typically due to 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 five currently validation states (excluding Laos, which is not yet an effective validation state) are Cambodia, Georgia, Moldova, Morocco, and Tunisia. Laos will become the second Asian validation state, joining Cambodia.

How do I get patent protection in validation and extension states from a European patent application?

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 requirements 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.