Posted on 28/4/2015

When is an African patent a European Patent?

Morocco can now be designated as part of a European Patent application.

An agreement has been reached between the European Patent Office (EPO) and the Moroccan government that European patents are able to be extended to Morocco.

European patents extended to Morocco

As of 1 March 2015, anyone filing a European patent application will be able to request a designation for Morocco against the payment of a fee (€240, with a surcharge of 50% if paid late). European applications and patents validated for Morocco will have the same legal effects there as Moroccan national patents and will be subject to Moroccan patent law.

Breaking new ground

This is the first time that a European patent can lead to patent protection in a non-European state and also the first time that a country that is not signed up to the European Patent Organisation has chosen to recognise patents granted by the European Patent Office (EPO).

Patent protection from a single European patent application could previously be obtained in 38 countries, plus Bosnia-Herzegovina and Montenegro, which have the status of “extension states”.

It was previously only possible to obtain patent protection in Morocco by filing a direct national patent application, or via a PCT (or international) application. However, this agreement makes Morocco the 41st—and first non-European—country in which it is possible to obtain protection with a single European patent application, which now joins Bosnia-Herzegovina and Montenegro as an extension state. This is also the first time that a country that is not signed up to the European Patent Organisation has chosen to recognise patents granted by the EPO.

Once a European patent is granted, in order to complete the validation of the patent in Morocco, a translation of the granted claims into Arabic or French must be filed at the Moroccan Patent Office (OMPIC). However, as a French translation of the claims is required anyway as part of the EPO grant procedure, this step would therefore not incur any further translation costs.

This option to designate Morocco will only be available for European patent applications filed on or after 1 March 2015. For those European patent applications derived from PCT applications, the PCT application must also have been filed on or after 1 March 2015.

More upcoming changes

There are also similar agreements in place with Tunisia and Moldova, though these are not yet in force; and it is understood that preliminary discussions are also underway in Georgia and OAPI (the union of French speaking African countries).

We will keep an interested eye on how this agreement is works in reality, how many patent applicants designate Morocco in their European applications, and which countries will decide to follow Morocco’s ground-breaking lead.

Wilson Gunn