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European patent

The European Patent Office (EPO) has been established in 1977 but till this day there is no single patent valid in all Europe. Differently from European trade marks or Community designs, which after registered at the European Intellectual Property Office covers all European countries, European patent needs to be validated in different member states. So how works?

Shortly, first you need to receive the European patent granted by the European Patent Office. It might take 3-4 years from the day you have applied until the patent is granted. During this first stage, you do not need to pay any annual or registration fees to different countries that have ratified European Patent Convention. Only the fees to the European Patent Office are payable during the patent prosecution at EPO. These fees are composed of filling, search and examination, countries designation fees, annual fees. Applicant does not need to pay annual fees to different members states until the patent granting day.

The next stage, is post-grant stage. Granted European patents must be validated and maintained individually in each country where they take effect. This can be a complex and potentially very costly process: validation requirements differ between countries and can lead to high direct and indirect costs, including translation costs, validation fees (i.e. fees due in some member states for publication of the translations) and associated representation costs, such as the attorney fees charged for the administration of the patent (i.e. payment of national renewal fees). 

At this stage the national fees and national rules of each contracting state become important. After the European patent is granted, the patent holder has limited time to validate the patent in the member states. Now the patent holder needs to choose in which territories he wants the patent to be valid, follow the national procedures on the European patent validity and pay the relevant national fees. Most likely, the patent holder will need to use the services of a national patent attorney as well.

Author Charles Clegg

Different member states have different requirements for validating European patent. Some countries have established very easy validation procedures. For example, UK, France and Germany requires simply to pay national annual fees. Other countries have a requirement to provide a translation of claims to the national language and pay a small validation fee (for example Lithuania). There are countries that require full translation of the patent text into the national language. An example is Spain. If a patent holder wishes to have a patent valid in Spain, he needs to translate all the patent text into Spanish, submit it to the Spanish patent office and pay the fees. It is easy to guess, what countries are more attractive to validate the European patent. Very likely, a patent holder would like to have a patent valid in Spain and would choose this country to validate the patent, commercialize the product and enter the market. But quite often, after already facing high fees during patent prosecution, the patent holder sets aside the territory of Spain because of the strict requirements. Clearly, validation in UK, Germany and France are much more easier and cheaper.

Spain has a strong preference for Spanish language, which is understandable, but sometimes can also be a stubborn action. For the same reason Spain has not joined the unified patent court initiative. Spanish language was not confirmed as one of the filing language for the unified patent.

But what is that Unified patent? Trying to simplify even more the patentability in Europe, the initiative to establish a single patent valid in all contacting member states have been expressed some time ago. Unitary Patents will make it possible to get patent protection in up to 26 EU Member States by submitting a single request to the EPO. They will build on European patents granted by the EPO under the rules of the European Patent Convention (EPC), so nothing will change in the pre-grant phase and the same high standards of quality search and examination will apply. After a European patent is granted, the patent proprietor will be able to request unitary effect, thereby getting a Unitary Patent which provides uniform patent protection in up to 26 EU Member States.

Unfortunately, the goal that the unitary patent will come into force from the beginning of 2017 was not reached. To enter into force the unified patent must be ratified by the United Kingdom. Sadly, the United Kingdom has decided to leave the European Union and so its participation in the unified patent also became unclear.

There are negativists, who say that the unified patent will never come to effect. But as so much work and effort have already been done, probably it is just a question of time when, indeed, a single-granted patent will cover a territory of European Union countries.