EP validation - automatic countries
I noticed that many patent attorneys do not know about the automatic validation countries, since EP validation is not something they have to deal with during their daily job. So, here I come with a summary. 💻
What almost everyone knows is the 3-month-long validation period after the date of the publication of the grant as described in Art. 65 EPC. But what exactly has to be done in this period?
When it comes to EP validation, the 38 EPC member states can be divided into three groups.
Group 1
9 countries: Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco and Switzerland and the United Kingdom
To do: Nothing. No fee, no translation. (London Agreement Art.1(1))
You can register an address for service, but this administrative step does not have a deadline, the granted EP is valid in these 9 countries automatically.
The only thing you have to take care of in order 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.)
Group 2
13 countries: Albania, Croatia, Denmark, Finland, Hungary, Iceland, Latvia, Lithuania, Macedonia, Netherlands, 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 and Hungary a signed authorisation is required too.
Group 3
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
These are the countries that have not ratified the London agreement.
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 and Romania, a signed authorisation is required too.
💡 I will follow up soon with part 2: Last-minute EP validation and extension of time.
➡️ If you would like me to assist you with your validation process, place your order at passport.pintz.com. Please also send me a short message because I don't have capacity to handle all our incoming validations.
