On 1 October 2022 Montenegro (ME) will become the 39th EPC member state.
This means that European patent applications having a filing date of 1 October 2022 or later will automatically designate Montenegro in addition to the previous 38 EPC member states (or contracting states).
States in which patent protection can be secured via a European patent application fall into three distinct groups and, for ease of reference, we provide a brief up-to-date summary of EPC member states, extension states and validation states:
All member states at the filing date are automatically deemed designated in the patent request and a single designation fee is deemed to cover the all EPC member states.
When a European patent is granted, validation is required in each designated member state, typically within 3 months of grant, for the European patent to be effective in that state.
For European patents which grant on or after the anticipated law changes come into force (predicted to be in early 2023), it will be possible to request unitary effect to obtain a "unitary patent", which will cover multiple countries (but not all EPC member states).
Between 1993 and 2009, the EPO signed extension agreements with various European states, enabling patent protection to be secured in those states via European patent applications, despite those states not being EPC member states. The extension agreement signed by Montenegro came into force on 1 March 2010 and will terminate on 30 September 2022.
Following Montenegro's accession to the EPC, Bosnia and Herzegovina (BA) will be the only remaining extension state. The other former extension states have already become EPC member states and Bosnia and Herzegovina may become a member state in due course.
The concept of a validation state is similar to that of an extension state. However, unlike the extension agreements, validation agreements are not limited to European countries.
Since 2010, the EPO has signed validation agreements with 5 non-member states enabling patent protection to be secured in those states via European patent applications, despite those states not having acceded to the EPC.
Validation agreements are currently effective in 4 states:
- Morocco (MA) – applications having a filing date of 1 March 2015 or later
- Moldova (MD) – applications having a filing date of 1 November 2015 or later
- Tunisia (TN) – applications having a filing date of 1 December 2017 or later
- Cambodia (KH) – applications having a filing date of 1 March 2018 or later
The validation agreement signed with Georgia (GE) in 2019 is not yet in force.
How can protection in extension states and validation states be obtained?
For a PCT entering the European Regional Phase, the time to decide whether or not to seek protection in extension and/or validation states is when the deadline for European Regional Phase entry is approaching. Validation requirements apply after grant in extension and validation states in order for the patent to be effective.
For patent applications having a filing date of from 1 March 2010 to 30 September 2022, protection can be secured in Montenegro via a European patent application by designating Montenegro as an extension state.
For European patent applications having a filing date of 1 October 2022 or later, Montenegro will be automatically designated as an EPC member state.
Extension states and validation states are distinct from member states and must be designated separately.
The information in this article is correct as at 29 September 2022.
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.