Extended reach for European Patents: the 'Validation Agreements' system

Published on February 07, 2017

What are Validation State Agreements?

The European Patent Organisation (EPO) currently counts 38 Member States across Europe which ratified the European Patent Convention (EPC). The mission of the European Patent Office (the operational arm of the Organisation) is to grant a central European Patent which needs to be “validated” in each of the Member States targeted by the IP owner. Ultimately, the national IP rights originating from European patents are equivalent to national patents granted by that Member State.

In addition, the EPO has allowed, since the beginning of the nineties, certain additional states in the European region to become Extension States, with the objective that these Extension States become full Member States as soon as they are ready to join the Organisation. While these states may be targeted by European patent owners, until they become Member States, they cannot participate in the Organisation’s development.

More recently, since 2010, the European Patent Organisation has initiated discussions with jurisdictions outside of its traditional geographical coverage, leading to new types of agreements known as “Validation Agreements” (the terminology of which may seem a little confusing, even to the most seasoned IP professionals). These bilateral Validation Agreements provide that European Patents have similar effect as national patents in the jurisdictions entering into these agreements, the Validation States. However, formalities comparable to traditional European patent validation procedures must be met in the Validation State.

Validation Agreements have already been concluded with:

  • Moldova (entered into force on 16th October 2013);
  • Morocco (entered into force on 1st March 2015); and
  • Tunisia (signed on 3rd July 2014, not yet entered into force).

Just a few days ago, Cambodia became the first Asian country to enter into a Validation Agreement with the EPO (signed on 23 January 2017).

Additional jurisdictions may follow in the future.

How does it work?

All European patent applications filed on or after the date the Validation Agreement enters into force may use the benefit of the Validation Agreement. Validation in these jurisdictions is also available for PCT international applications filed on or after the date the Validation Agreement enters into force.

Within six months of the date on which the European Patent Bulletin mentions the publication of the European search report, the patent application owner may pay a fee confirming their intention to target a Validation State. If the appropriate validation fee has been paid within the prescribed time limit, the patent owner must file a translation with the local Patent Office into one of the prescribed languages, e.g. a Romanian full translation of the claims and description for Moldova and an Arabic or French translation of the claims for Morocco. The corresponding national IP rights originating from European patents will have the same effect as national patents and will be subject to the same national laws (as previously mentioned, same result for EPO Member States and Extension States).

Potential future developments

The relatively new Validation system provides a simple and cost-effective way for applicants to obtain (theoretically) strong patent protection in new territories. In parallel, the system provides a very attractive solution for countries who wish to reach a level of protection as advanced and elaborate as the one proposed by the EPO without having to invest too many resources (on the assumption that they would even be available in the relevant jurisdictions, especially in terms of patent examiners).

On 23rd January 2017, Cambodia became the first Asian country to recognise European patents on its territory. This agreement may potentially be followed by others in the future, allowing the development of the European patent system worldwide within non-EPC and non-European countries, increasing the number of countries where applicants can validate their patents.

In this regard, such agreements pave the way for more harmonized patent protection around the world.

How can Valipat help?

Provided that the validation fee has been paid on time, Valipat already offers to all of its clients to validate their European patents (meeting the filing date requirements) in the Validation States where Validation Agreements have already entered into force (Moldova and Morocco). Therefore, clients can already benefit from Valipat’s attractive prices combined with its robust processes to target those jurisdictions, just as easily as it targets other Member States and Extension States.

The Tunisian and Cambodian laws still need to be adapted to ratify the respective Validation Agreements. However, Cambodia already announced that it will tentatively adopt this law on 1st July 2017, expressing its wish to be part of the system without delay. No further information is available to Valipat regarding Tunisia at this stage. As soon as these countries have ratified, Valipat will offer validation services to easily extend patent protection to these jurisdictions.

In the meantime, Valipat will keep monitoring legal developments regarding any possible new Validation Agreements.