National validation and unitary effect

Once the European patent is granted, it is not finished ... This patent must be implemented in the countries of its choice.

National validation

Indeed, if you do nothing, the European patent will have no use.

Although theA2 (2) EPC indicates that the European patent has the same effects as a national patent, it remains necessary to carry out some formalities to ensure these effects.

In order to validate a European patent in a country, you must have:

• validly designated by that country during the examination phase, and
• meets national requirements.

Prior designation of countries

Formal designation act

During the procedure for issuing a European patent, it is necessary to designate all the countries for which protection is sought.

This designation occurs at the time of filing, in the request for grant of the patent.

Today all the member countries of the Convention are deemed to be designated in the Request for Grant (A79 (1) EPC). Before 13 December 2007, it was necessary to designate the different countries individually (A79 (1) CBE73).

Payment of designation fees

Once designated, each country must be paid a designation fee.

The designation fee must be paid within 6 months from the date on which the European Patent Bulletin mentioned the publication of the European search report (R39 (1) EPC or A79 (2) CBE73).

Please note, however, that for an application filed on or after April 1, 2009, the amount of the designation fee is fixed and does not depend on the number of countries (A2 (1) RRT).

Before that date, the amount depended on the number of countries (A2 RRT 1973bearing in mind that the designation fees are deemed to have been paid for all States if an amount of equal to seven times the unit tax had been paid).

National requirements

Possible translation of the European patent

Any State may request, if the patent is not in one of its official languages, that a translation into one of its official languages be provided (A65 (1) EPC).

The translation must be provided within a 3 months from the publication of the mention of the grant, but a longer period may of course be granted (A65 (1) EPC).

Publication fees may be requested (A65 (2) EPC).

London Protocol

The London Protocol is an international treaty (made under theA65 (1) EPC) limiting, for the acceding States, the level of translation required when validating a European patent in their state.

This protocol entered into force on May 1, 2008 (and applicable for undelivered applications).

Maximum requirements for validation

Any country with an official language in common with one of the EPO languages waives the translation requirement (A1 (1) of the protocol).

Any country born having not an official language in common with one of the EPO languages must choose at least one official language of the EPO and must waive the demand translation requirement (excluding claims) if it is provided in this language (A1 (2) of the protocol). Nevertheless, it is possible to require the translation of the claims (A1 (3) of the protocol).

More flexible rules can, of course, be put in place (A1 (4) of the protocol).

Possible requirements in the event of disputes

In any event, states may, in the case of disputes relating to a European patent, require, at the expense of the holder, a complete translation of the patent into an official language of the country (A2 of the Protocol):

• at the request of the alleged infringer;
• at the request of a competent court or quasi-judicial authority.

Only France, Switzerland and Liechtenstein have provisions to this effect.

Synthesis

I tried to give you a summary table of the national requirements from table IV.

This table was last updated on August 30, 2013.

Simple, no?

Authentic text before national courts

About the actions in nullitythe authentic text is the text as filed (A70 (2) EPC) or, failing that, the text in the language of the proceedings (A70 (1) EPC).

In the other cases (particularly in the case of infringement proceedings)Member States may provide that, if the translations submitted confer less extensive protection than that conferred by the patent as delivered in the language of the proceedings, such translations may be the authentic text (A70 (3) EPC).

Today, all member states have implemented this possibility in their national law, except Germany and Belgium.

In any case, the holder must be allowed to produce a revised translation (A70 (4) (a) EPC). This translation may (under national law) have no effect for the future for people who have begun in good faith to exploit (or have made serious and effective preparations for the exploitation of) the true invention (A70 (4) (b) EPC).

National autonomy

The different national "parts" of the European patent are completely autonomous: thus, the cancellation of a title in one of the member countries has NO effect on the other national "parts" of that patent.

If a third party wishes to obtain the invalidity of a European patent, it will then have to initiate legal proceedings in all countries for which he wishes to be free to exploit the invention.

Validation outside member countries

Morocco

It is possible to "validate" the European patent at Morocco, while he is not a member of the EPC.

This validation is possible for European and PCT applications filed as of 1 March 2015 (" Validation of European patents in Morocco (MA) from 1 March 2015 », OJ 2015, A20point 4.1);

The request for validation will be made via the payment of a validation fee of 240 € paid to the EPO (" Validation of European patents in Morocco (MA) from 1 March 2015 », OJ 2015, A20, point 4.2):

• for a direct EP request,
  • in a delay of 6 months as of the publication of the RREE,
• for a Euro-PCT application,
  • within the deadline for entering the European phase.

At the end of this period, an additional period of 2 months will be open to pay the validation fee with a surcharge of 50% ( ' Validation of European patents in Morocco (MA) from 1 March 2015 », OJ 2015, A20point 4.3).

Moldova

The same is true for Moldova (" Validation of European Patents in the Republic of Moldova (MD) from 1^st November 2015 " OJ 2015, A85).

The request for validation will be made via the payment of a validation fee of 200 € paid to the EPO (" Validation of European Patents in the Republic of Moldova (MD) from 1^st November 2015 " OJ 2015, A85, point 4.2):

• for a direct EP request,
  • in a delay of 6 months as of the publication of the RREE,
• for a Euro-PCT application,
  • within the deadline for entering the European phase.

At the end of this period, an additional period of 2 months will be open to pay the validation fee with a surcharge of 50% ( ' Validation of European Patents in the Republic of Moldova (MD) from 1^st November 2015 " OJ 2015, A85point 4.3).

Cambodia

The same goes for Cambodia (" Validation of European patents in Cambodia (KH) from 1^st March 2018«, OJ 2018, A16).

The request for validation will be made via the payment of a validation fee of 180 € paid to the EPO (" Validation of European patents in Cambodia (KH) from 1^st March 2018«, OJ 2018, A16, point 4.2):

• for a direct EP request,
  • in a delay of 6 months as of the publication of the RREE,
• for a Euro-PCT application,
  • within the deadline for entering the European phase.

At the end of this period, an additional period of 2 months will be open to pay the validation fee with a surcharge of 50% ( ' Validation of European patents in Cambodia (KH) from 1^st March 2018«, OJ 2018, A16point 4.3).

Tunisia

The same is true for Tunisia (" Validation of European patents in Tunisia (TN) from 1 December 2017«, OY 2017, A85).

The request for validation will be made via the payment of a validation fee of 200 € paid to the EPO (" Validation of European patents in Tunisia (TN) from 1 December 2017«, OY 2017, A85, point 4.2):

• for a direct EP request,
  • in a delay of 6 months as of the publication of the RREE,
• for a Euro-PCT application,
  • within the deadline for entering the European phase.

At the end of this period, an additional period of 2 months will be open to pay the validation fee with a surcharge of 50% ( ' Validation of European patents in Tunisia (TN) from 1 December 2017«, OY 2017, A85point 4.3).

Unit effect

The origin of the unitary patent

In view of the complexity of patent cancellation and the validation costs for applicants, member states have sought to simplify the system for more than 60 years. However, diplomatic negotiations did not fail to fail in the mountains of national requirements of different member states (choice of official languages, competent authorities and location, etc.).

Fortunately, some member countries (all except Italy and Spain) have reached an agreement to define what is now called the "unitary patent": a real single patent for all the territories of the member countries.

The principles

Today it is complex to define exactly the outlines, because everything is not written in marble, but the main principles are known.

By and large, the grant procedure remains the same as that of the European patent. However, instead of validating the latter in a given country, it will be possible to choose the "unitary effect" (a kind of "metavalidation").

Translation requirements

At first, it will only be necessary to translate the claims into the other two official languages of the Office.

No further translation will be necessary.

Tax amount

Today, nothing is decided so I prefer not to tell you anything.

Focus on annual fees after delivery

Principle

Normally, from the publication of the mention of the issue, the national offices are competent to collect the annual fees (A141 (1) EPC together A86 (2) EPC).

Late payment

Any State must allow late payment of annual fees for a minimum period of 6 months after the expiry (A5bis CUP).

A surcharge may be requested (A5bis CUP).

A minimum of 2 months for the first installment

If an annual fee is due in the 2 months after the publication of the mention of the grant, it is possible to pay it, without surcharge, within this period of 2 months (A141 (2) EPC).