Refresher: EP validation

Validation is an administrative but – in most countries – a mandatory step after the grant of a European patent. Art. 65(1) EPC prescribes 3 months as the minimum validation period – calculated from the date of the publication of the grant – but allows national offices to provide a longer time. More about the time limits below.

After London Agreement was born, the process of validation became simpler. When it comes to EP validation, the 38 EPC member states can be divided into three groups, depending on their official languages and whether they ratified London Agreement or not.

Group 1 - London Agreement Art.1(1)

9 countries: Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco and Switzerland and the United Kingdom 

To do: Nothing has to be done. No fee, no translation. The granted EP is valid in these 9 countries automatically. The only thing necessary to keep the patent alive in these countries is the payment of the annuity fee to the national patent offices. (But this is true for all EPC member states.)

In a Paper D2, this might come up in a situation where the applicant has missed the 3-month validation period. You cannot simply say that the European patent is not valid anywhere, because it might be in these countries. (Depending on the due date for annuity fee and whether the annuity fee can be still paid with a surcharge – in most countries you can pay the annuity fees within 6 months of the due date provided that a surcharge is also paid.)

Group 2 - London Agreement Art. 1(2) and (3)

13 countries: Albania, Croatia, Denmark, Finland, Hungary, Iceland, Latvia, Lithuania, Netherlands, North Macedonia, Norway, Slovenia and Sweden

To do: Filing the translation of the claims in their official language (London Agreement Art. 1(3)) and payment of a publication fee. These steps in some countries need to be done by a local patent attorney. In some countries, like Croatia, Hungary and Slovenia a signed authorisation is required too.

Group 3 - Countries that have not (yet) ratified the London agreement

16 countries: Austria (unless the patent was granted in German), Bulgaria, Cyprus, Czech Republic, Estonia, Greece, Italy, Malta (unless the patent was granted in English), Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Spain and Turkey

To do: Filing the full translation of the specification, drawings and claims in their official language and payment of a publication fee. These steps in most of the countries must be done by a local patent attorney. In some countries, like the Czech Republic, Italy, Poland, Romania and San Marino a signed authorisation is required too.

Time limit

There are only two countries allowing a longer period than the 3-month period of Art. 65 EPC: Iceland (4 months) and San Marino (6 months).

All other countries have 3 months. (You can always double check this time limit in National law relating to the EPC: IV. “Translation requirements after grant pursuant to Article 65 EPC”, point 4. National Law will also be available online in WISEflow from the EPO’s website.)

But this does not mean that you have to file the translation everywhere within the 3-month period. Spain and Turkey allow applicants to request extension of time, but only if the request is filed within the original period, so you have to pay attention. Some countries allow applicants to file the validation after the validation period ended, provided that an additional official fee is paid as well. Some countries allow further processing, which basically means the same.

However, there are 15 countries where you cannot file the translation after the 3-month period ended. For these countries, if there is no time to prepare a professional translation, you can file a lower quality translation and then file the professional translation as a correction later, by payment of an official fee. (Always double check the certain country in National law relating to the EPC: IV. “Translation requirements after grant pursuant to Article 65 EPC”, under point 8.)

In some of these 15 countries re-establishment or restoration can be another option to file the translation after the 3-month period ended. However, as you know, that is not automatic but needs proof of all due care, etc.

Annuity fee issues

Something that can cause issues when it comes to last minute validation is the annuity fee, in case it is due within 2 months of the grant.

According to Art. 141(2) EPC, "Any renewal fees falling due within two months of the publication in the European Patent Bulletin of the mention of the grant of the European patent shall be deemed to have been validly paid if they are paid within that period." Thus, there are only 2 months to pay a renewal fee without surcharge. This can already be over when you are dealing with a last-minute validation. As a result, in some countries you will only be able to pay the annuity fee with a surcharge. 

(This, again, depends on the member state. Some countries do allow the payment of the annuity fee without a surcharge until the end of the validation period.)

Example: 
grant published: 17 March 2021
anniversary of filing date: 20 March
annuity fee can be paid in any EPC states without surcharge: 17 May 2021 (17 March + 2 months)
end of validation period: 17 June 2021 (17 March + 3 months)