European patent validation

European patent validation is a specific step in the European patent procedure, taking place after grant. Validation can be selected in addition to or instead of Unitary Patent.

What is validation?

Validation is an administrative but – in most Contracting States – a mandatory step after the grant of a European patent to have a valid national patent. Validation is the process of registering your granted European patent at the national patent offices of the Contracting States where you would like to own an enforceable right. When validating, can choose any of countries that are part of the European Patent Organisation at the time of the filing date of your application.

There are 39 Contracting States in 2023, see the list of countries on EPO’s website here. Montenegro is the newest country joining the EPC as of 1 October 2022. The Brexit has not changed the situation of the United Kingdom, since the European Patent Organisation is a separate legal entity from the European Union.

The contracting states currently are: Albania, Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Montenegro, Netherlands, North Macedonia, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United Kingdom. 

Since your patent has already been granted by the EPO, the national patent offices will not examine your invention again. Most member states require you to appoint a local representative, file a translation of certain parts of the patent document and pay an official fee for the publication of your patent. However, the steps, requirements and costs vary from country to country.

The steps of validation (requirements)

After a so-called London Agreement was born, the process of validation became simpler.

There are some countries where the European patent is automatically valid without having to file a translation or any documents. There are some states where only the claims have to be translated. In the remaining countries however, the full patent document must be translated in order to validate the patent. 

1. Countries where the granted European patent is automatically valid:

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

   These Contracting States have an official language that is common with one of the official languages of the EPO (English, German or French).

   In order to have an enforceable right in these member states, annuity fees must be paid directly to the national patent offices every year. (No further documentation or translation is necessary. However, it is advised to appoint a representative as a point of contact.)

2. Countries, where the claims have to be translated:

   Albania, Croatia, Denmark, Finland, Hungary, Iceland, Latvia, Lithuania, Macedonia, Netherlands, Norway, Slovenia and Sweden

   In these countries an official fee will have to be paid as well, and in some of the countries a Power of Attorney form also must be filed. Furthermore, annuity fees must be paid directly to the national patent offices of these countries every year.

3. Countries, where the full patent document must be translated:

   Austria (unless the patent was granted in German), Bulgaria, Cyprus, Czech Republic, Estonia, Greece, Italy, Malta (but only if the patent document is not in English), Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Spain and Turkey

   Since preparing a precise translation is expensive, the validation costs for these countries are the highest. An official fee will have to be paid as well, and in some of the countries a Power of Attorney form also must be filed. Furthermore, annuity fees must be paid directly to the national patent offices of these countries every year.

Deadline

When the EPO intends to grant a patent for your invention, you are required to take a few actions that we discussed in our article "Grant/refusal". After you completed the necessary steps (payment of fees, filing of the translation of the claims, etc.), they will publish the grant of your patent in the European Patent Register, resulting in a "B1" patent document.

The date of the publication of the granted patent is clearly shown both in the European Patent Register and on the first page of the B1 document. The validation is possible within 3 months from the publication of the B1 document.

There are some countries where the period for validation is longer, such as Iceland (deadline: 4 months from the date of the grant) and San Marino (deadline: 6 months from the date of the grant). Furthermore, there are some member states where the extension of the 3-month-long time period is possible for an additional fee, for example Croatia, Czech Republic, Hungary, Portugal, Romania, Slovakia, Spain and Turkey.

The costs of validation

Validation can be quite expensive, although the costs vary a lot depending on the number of the countries you would like to validate your patent in and the length of the granted patent you are validating. 

There are 3 types of fees:

• Service fees (the fees of the professionals handling the validation)

• Official fees (payable to the national patent offices – in certain countries, such as Austria, Hungary and Poland, the official fee is based on the number of pages)

• Translation fees (translation fees can be very high if a full translation must be prepared by a patent attorney – like in Spain or Italy)

In the member states where the granted European patent is automatically valid, the validation is obviously free. If you appoint a representative as an address for service, you will be charged a (hopefully) small amount of service fee (should not be more than EUR 100-300).

For the exact validation costs of your granted patent, feel free to check Passport (you can obtain an estimate in a few seconds after a registration).

How to validate cost efficiently

Choose the countries wisely, you do not necessarily need to validate in many countries. Consult with your investors and think about your long term business plan. Your patent attorney will also be able to advise you. 

Keep in mind that the translation fees are the most significant part of the costs, so the countries that waived the translation requirements are the cheapest to validate* in. 

*This is not really validation, since no validation steps are required in Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco and Switzerland and the United Kingdom. 

Common money traps

As you could see from the previous point, the validation in certain states is completely automatic, hence free. The only step you are advised to take is to ask a representative to register as an address for service. This way, the national patent offices can contact you via your registered representative if you fail to pay an annuity fee, or if somebody files a revocation request against your patent. 

Many patent firms will charge you service fees of EUR 400-700 only for registering as an address for service. Since we are talking about important countries (France, Germany, United Kingdom), the patent proprietors will pay these fees, since they do not know what the exact requirements are. They think that the patent will only be valid in these countries if they pay these rather high fees.

Another thing to know is that Liechtenstein does not have its own patent office, but it shares one with Switzerland.* A patent valid in Switzerland is also valid in Liechtenstein without further payments or administration. Thus, a European patent can also only be valid in both Liechtenstein and Switzerland. If you have to pay patent attorney service fees for both Switzerland and Liechtenstein, that is not OK.

Using an online tool

To save time and money, we recommend using an online validation service, such as Passport.

We developed Passport with Pintz & Partners IP firm with an in-house developer team.

You can register on Passport for free. After entering your patent number, it will automatically calculate all the fees for the chosen countries. The fee structure is transparent, you will see the official, service and translation fees separately.

I am one of the patent attorneys responsible for the validations ordered through Passport, that is why I can vouch for it. We handled more than 1400 validations since we launched this site in 2018.

The costs of the validation will be significantly lower when using an online service, and most importantly, you will save a lot of time by having a single point of contact.

Reviews of Passport

* Treaty between the Swiss Confederation and the Principality of Liechtenstein on Patent Protection (Patent Treaty) of 22 December 1978
See the text here.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023