Validation of the European patent

Validation of the European patent refers to the formalities that the proprietor completes after grant so that the patent takes effect in each designated State. The European patent breaks down into a bundle of national patents governed, for the most part, by the law of each State, under Articles 2 and 64 of the European Patent Convention (EPC). Article 65 EPC allows each State to require a translation of the patent into its official language, within a period that may not expire less than three months after publication of the mention of grant.

National formalities

Requirements vary from one State to another. Since the London Agreement, States sharing an official language with the EPO, such as France, Germany and the United Kingdom, have waived any translation requirement, so that the patent takes effect there without any particular step. Other States require a translation of the claims only, or of the entire patent, sometimes together with the appointment of a local representative and payment of a publication fee. The sanction for failure to file a translation is severe: the patent is deemed never to have had any effect in the State concerned, under Article 65(3) EPC.

Maintenance and validation States

After grant, renewal fees are no longer paid to the EPO but to each national office, for the years following that in which the mention of grant is published. The proprietor can thus gradually reduce geographical coverage by ceasing to pay in certain countries. In addition, the EPO has concluded validation agreements with States that are not party to the Convention, including Morocco, Moldova, Tunisia and Cambodia, where the patent may take effect upon payment of a validation fee during the grant procedure.

Interplay with the unitary patent

Within one month of publication of the mention of grant, the proprietor may request registration of unitary effect for the participating Member States. The unitary patent then replaces national validations in those States, while classic validation remains necessary in the other designated States, such as Spain, Switzerland or the United Kingdom. The choice between these routes has consequences for costs, for the competent court and for the risk of central invalidation before the Unified Patent Court, a risk to which national validations in participating States are also exposed in the absence of an opt-out.

Key points

Grant of the European patent opens a short period, usually three months, to complete national formalities, and a missed translation deprives the proprietor of all protection in the State concerned. The list of countries should be settled before grant, weighing unitary effect against national validations, after which the specific requirements of each State should be checked and the monitoring of national renewal fees put in place.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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