Ten Important Facts about European Patent Validation
Applicants seeking patent protection in Europe can apply for a regional European Patent. European Patents (EP) are granted by the European Patent Office (EPO) and can extend patent protection in one or more of the 38 member states.
The EP patent application process consists of two phases: the grant phase and the validation phase. The grant phase begins once the application is filed. During this phase, the application goes through examination and grant procedures at the EPO. The source text will always be in one of the three official languages of the EPO: English, German or French. Once the application text has been approved for
Once the application text has been approved for the grant, the patent claims must be translated into the two other official languages in order to complete the grant formalities. Once the grant formalities have been completed, and the granted application is published by the EPO, the validation process begins and each applicant must fulfil the filing requirements in each target country within 90 days of the official grant date.
A key part of the overall EP process is to ensure the application is accurately represented in the language of the target member state. Translation plays an important role from the initial application and grant stages of the process, right through to validation and completion.
The exact procedures and translation requirements for validation differ in each EP state. Depending upon whether the target country is a member of the London Agreement, either the claims only or the entire patent specification must be translated. In some countries such as the United Kingdom, France, and Germany there is no translation requirement at all.
To help you further understand European patents, here are ten facts that relate to the EP grant and validation process and the importance of translation:
Fact #1: Examination fees and translators are required to complete the grant phase, which can take anywhere from three to five years. Once the European patent is granted, the validation phase takes place. In order for a European patent to be valid, applicants must fulfill the validation requirements in each target country by the European validation deadline.
Fact #2: The EP Validation deadline occurs three months after the application is granted by the EPO.
Fact #3: The European Patent Convention (EPC and also known as the Convention on the Grant of European Patents) means that national patents cannot be rejected and will be considered to have been in force from the European grant date, so long as all requirements and deadlines are met.
Fact #4: According to the EPO, there are 38 contracting member countries and since 2010, there are three extension (non-member) countries; Morocco, Republic of Moldova and Tunisia. This is where the EPO has concluded a validation agreement.
Fact #5: The London Agreement, adopted by ten of the EP member states, provides for reduced translation requirements when validating a granted European patent. The London Agreement states generally require that only the claims of a granted EP patent be translated into that country’s official language.
Fact #6: There are seven countries that have dispensed with translation requirements under Article 1(1) of the London Agreement as they all share an official language with the EPO; France, Germany, Liechtenstein, Luxembourg, Monaco, Switzerland, Ireland and the United Kingdom.
Fact #7: There has been an ongoing effort to implement an alternative to the classical system of European patents by establishing a community patent, known as the European Unitary Patent or the European patent with unitary effect. This system would establish single unitary patent with enforceable effect in all EU countries to ratify the agreement, together with a specialized Unified Patent Court holding complete and exclusive jurisdiction over litigation of unitary European patents.
A European Unitary Patent has been proposed and debated for over three decades. Agreement on the provisions of a European Unitary Patent was finally reached and went into force in January of 2013; applicants, however, cannot apply for a Unitary Patent until the Agreement on the Unified Patent Court has been ratified by at least 13 states (including France, Germany and the United Kingdom). Most observers we’ve spoken to expect this to happen in the relatively near future; however, exactly when the Unitary Patent will actually become available remains unclear.
Fact #8: If and when the European Unitary Patent is fully brought into effect, the validation process will no longer be strictly necessary. Nevertheless, there remain questions with respect to adoption—that is, how quickly applicants will actually begin to utilize the new system once it is fully in effect.
As currently outlined, the initial provisions for the Unitary Patent allow applicants to follow Classical European Validation procedures and then “opt in” to the Unitary Patent system at any time, though not the other way around. A number of organizations we’ve spoken with have expressed concerns about the uncertainty surrounding the unified patent court and the possibility of “central revocation”—essentially, having all their eggs in one basket. Thus, while the Unitary Patent ostensibly stands to render the current system obsolete, the lingering doubts of influential organizations may draw the process out considerably.
Fact #9: A large part of the cost of validation is translations. Regulations vary between countries as to the importance of the accuracy of translations. In some cases recourse is available to the original granted text during litigation; in others the translated text may control.
Fact #10: Park IP Translation offers a unique, one-stop service for applicants to validate a patent across Europe. Park IP can streamline the EP validation process, working with clients to validate granted European patents in all EPO member states.
Working with legal and IP translation specialists like Park IP must be a critical part of your overall global IP strategy. We can increase the quality and accuracy of IP translations in Europe and ultimately, reduce the long-term cost of translation and protect against costly litigation.
As a leader in the global patent translation industry, Park IP Translations provides a range of filing solutions including EP validation, PCT National Phase entry, and Direct National Filings in every country. We manage the filing process along with the translation of patent applications. Part of this process is to liaise closely with each local patent office and our clients. Close study and staying up to date on global patent trends and changes in application procedure are crucial to ensure all applications are represented correctly for each European Country.
Emma Cox is a marketing specialist and researcher at Park IP Translations, a Welocalize Company.
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