Luxembourg: Validation Agreements: Towards A Broader Territorial Coverage For European Patents?

Last Updated: 13 November 2017
Article by Martin Chatel

"Thinking outside the confines of the continental map". In the beginning of 2015, Benoît Battistelli, President of the European Patent Office (EPO), unequivocally set the scene for the coming years. The priorities shall not be limited to finalizing the last details for the launch of the unitary patent in order to strengthen further the European patent system. Much remains to be done with respect to the global patent system, in terms of removing duplication of work, increasing work-sharing and harmonizing rules.

In this context, a new framework is emerging between the EPO and countries that are not members of the European Patent Organization. The EPO has established so-called "validation on request agreements" – short: validation agreements – that encourage any applicant for a European patent to extend the territorial coverage beyond the forty countries currently available under the EPC (38 Member States and two Extension States). These agreements do not imply any accession to the European Patent Convention (Article 166 (1)(a) and (b) EPC), and therefore are not confined to European states.

To date, five countries are concerned. Validation agreements already entered into force in Morocco (01.03.2015) and Moldova (01.11.2015). The coverage goes beyond the Eastern European neighbors and Mediterranean countries, as confirmed by the recent developments with Cambodia and Lao PDR. In May 2017, the EPO and Angola also agreed to initiate discussions. As two agreements with Cambodia and Tunisia will possibly enter into force soon and other agreements of this kind are likely to follow, it may be worth analyzing whether or not these agreements could offer applicants a cost-effective and strategic filing option and leverage their patenting behaviors and propensity to consider some, if not all of the territories as regular filing routes.

Strengthened national patent systems

One of the stated objectives of the validation agreements is to enhance the technical capacities of national patent offices and improve their ability to raise patent awareness among national innovators. Some of the countries that have already formalized the cooperation are facing rapid economic growth, as the real GDP growth rates in Cambodia and Lao PDR may exceed 7% over 2016-2020 (OECD, Economic Outlook for Southeast Asia, China and India 2017). Thus, the development of a robust IP legal framework is a top priority. Until 2015, the ASEAN member states sped up their integration into the global IP system through the signature of international treaties. Cambodia, where the first patent was granted in March 2015, recently completed the circle of countries joining the Patent Cooperation Treaty (PCT).

Most of the patent applications filed in the validation states originate from a first filing abroad. It is assumed that a significant percentage of these filings are also targeting the EPO, either in the context of a direct European patent application or an international application under the PCT. The validation agreements are aimed at reducing duplication of search and examination work and subsequently enable national patent offices to prioritize first filings from national applicants.

Accordingly, the validation system could reduce national office examination workload proportionally to the number of second filings in these offices. Nevertheless, if the examination and grant procedures would fall under the responsibility of the EPO, the European patents designating any of the validation states remain subject to the relevant national laws and regulations. Indeed, the validation agreements only offer an alternative to filing a patent application directly with the national patent offices, for instance via the PCT. The European and national filing routes co-exist, while ensuring that any granted European patent, once validated at the demand of the applicant, has the same legal effect and conditions as corresponding national applications and patents. Consequently, the national patent offices retain exclusive competence for registering the patent granted on its behalf by the EPO as a national patent, collecting also the renewal fees due following validation of the European patent. Similarly, the national courts retain exclusive competence for deciding in validity and infringement procedures. In that sense, the validation system is a work recognition model that fully respects the national sovereignty of the validation countries.

Unlike the extension states (Montenegro, Bosnia and Herzegovina), there is no prospect of accession to the European Patent Organization under the validation agreements.

Simplified patent filing procedures

The validation states can be targeted by any European patent application or international application designating the EPO (Euro-PCT), filed as from the date of entry into force of the respective agreement. To date, this is possible for Morocco (1 March 2015) and Moldova (1 November 2015).

The designation of a validation state must be requested by the applicant, subject to the payment of a validation fee to the EPO at the latest 6 months after the publication of the search report by the EPO. 75% of these fees are transferred by the EPO to the national office of the validation country. The competent national patent office would publish any such request upon notification from the EPO and not before the expiry of eighteen months from the filing date or priority date, if a priority application has been claimed. Upon grant of the European patent, the validation process can be managed by the applicant in each designated country, if he wishes to do so, like in any other EPO member states.

One of the main objectives is to streamline the filing and granting processes. The proceedings on the merits are transferred from the national patent offices to the EPO. Moving towards a centralized system combining a search, examination, opposition and appeal, ensures higher legal certainty and speeds up prosecution. The benefits are twofold: mitigate the risk of dissuasive backlogs of patent applications in the countries and enhance the protection against rogue patenting.

It is worth highlighting that, in the context of the PCT, the validation states have designated the EPO as International Searching Authority (under Chapter I) and Preliminary Examining Authority (under Chapter II). However, the international phase of a PCT application consists of a unified filing procedure. The search reports and written opinions on whether an invention fulfils the patentability criteria are not binding, and the examination and grant remain under the competence of national patent offices.

The validation agreements constitute therefore an important complement to the PCT system in terms of harmonization and global efficiency of the procedure. The benefits associated with the PCT national phase entries in each country may not necessarily compensate the filing and prosecution costs. A unique procedure at the EPO might increase the propensity of foreign applicants to opt for the validation mechanism in order to increase the chance of obtaining patent protection in European and non-European countries simultaneously.

The simplified procedure is likely to result in numbers of paid validation fees in the validation states that are comparable to the number of payments of extension fees in Bosnia and Herzegovina and in Montenegro (between 2000 and 3000 per year).

Reduced translation and procedural costs

Another positive effect of the validation agreements is to significantly reduce the costs for innovating businesses when seeking patent protection in the validation states. Foreign applicants, in particular the undecided or small and medium-sized companies, may generate considerable cost savings due to lower official (cumulative from filing to grant), translation and representation fees.

The costs incurred up to the grant of the European patent (e.g. filing, search, examination, grant, translation of the claims in response the communication under Rule 71(3), the renewal fees beginning of the third year from the date of filing) remain unchanged, with the exception of the validation fees: 240 € in the case of Morocco and 200 € in the case of Moldova.

Indeed, each validation state is subject to a validation fee that must be paid to the EPO, at the discretion of the applicants, no later than six months from the date on which the European Patent Bulletin mentions the publication of the European search report, or, in the context of the PCT, within the time limit for entering into the European phase of any international application (31-month). When reaching the validation of the patent granted by the EPO in the validation country, that is also applicant driven, additional publication or registration fees would also be incurred.

Dennemeyer & Associates' European patent validation's footprint

The validation fees are relatively low compared to the cumulated national filing and prosecution costs, which might contribute to increase the propensity to seek protection in the validation states on the basis of a granted European patent. In this respect, it is worth mentioning that applicants entering the regional phase of a PCT application before the EPO would be able to partly extend the filing deadline by one month and better plan their budgets. To date, three validation countries or potential countries apply the 30-month time limit for the national phase entries (Lao PDR, Tunisia and Cambodia).

Patentees may also reduce the overall translation costs incurred when completing the validation procedures within three months from the date on which the mention of the grant of the European patent is published in the European Patent Bulletin. The provisions set forth in the London Agreement are not applicable. Though, Cambodia will only require a translation of the claims into English and Khmer. Morocco accepts the filing of a French translation of the claims only. The full translation of the patent specification is still required in Moldova (into Romanian) and Tunisia (into Arabic or French or English). Therefore, the translated claims filed with the EPO prior to the grant, as well as the translation required for Romania, if designated, would already fulfil part of the translation requirements.

Another parameter likely to influence filing costs relates to representation. The cooperation under the validation agreements strives to promote the development of a strong patent attorney profession in the concerned countries, if the country wishes so, in order to assist national innovators. The appointment of a representative that comprises in-house European patent attorneys and is locally anchored in the validation states, either directly or through local associates (e.g. to register an address for service and pay renewal fees), may eventually be cheaper than separating the services to be rendered at regional and national levels.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions