Laos has become the sixth country to sign a special “validation agreement” with the European Patent Office (EPO). The other five are Morocco, Tunisia, Moldova, Cambodia and Georgia.

What is validation?

The most commonly understood meaning  of “validation,” in the context of a European patent, is the act of extending a patent to take national effect in a designated EPC state (and/or extension state* if such fees were paid) within a time period of 3 months after the grant date.

It is now also possible to “validate” a Unitary patent within one month of grant which results in a single patent right (and single renewal fee) covering most EU countries. Notable exclusions from the Unitary patent are Spain and Poland (both EU states, but not signed up to the Unified Patent Court), United Kingdom and Norway (i.e. non-EU states)

What is a validation agreement?

The effect of a validation agreement with the EPO is that the signee recognises the examination and grant process of the EPO and will automatically register a European patent in their country (without any further examination), so long as the validation fees are paid.

How do you use the validation agreement?

In order for a granted European patent to be eligible for validation in a Validation State, the application must have been filed on or after the date the agreement in that state came into force, and the Validation State must be designated by paying a fee. Currently the validation fees range between 180 and 200 Euros.

In other words, you have to know on the day of paying examination and designation fees for your European patent application which extra validation agreement countries you want to pursue. Whereas, for a regular EPC designated state you pay a single flat fee to cover all states and can choose after the patent is granted, which could be years later, in which states to obtain national protection. 

If the fee payment deadline is missed, depending upon the circumstances, late payment of the validation fee(s) within a short grace period (typically two months) may be possible, with 50% surcharge.

Example

To validate in Cambodia, for example, one would have had to pay the designation fee for Cambodia as a validation state at the same time as paying the other designation fees, and the EP or PCT filing date would have to be after 1 March 2018, which is when the validation agreement with Cambodia entered into force.

Then, when the European patent is granted, the patentee applies at the Cambodian patent office within 3 months of the grant date (same as for a regular EP validation). Claim translations are required into Khmer language.

Why would Laos want to be a validation state?

There are several advantages to being a validation state. For example, its patent office can free up resources for examining its own national applications and promoting the patent system to local businesses. It also highlights the country as an “easy win” for foreign businesses that are already going to file a patent application at the EPO. This is generally seen as making the market more attractive to outside investors.

Offering validation agreements is good for the EPO because it extends the reach of a European patent and cements its position as the gold standard for patent examination.

Practical takeaways

It is unlikely that most EP applicants will arbitrarily elect to pay additional validation state fees at the examination/designation stage on the off chance that they may want future protection in a validation state, unless one or more of them is a current or potential market for the business. 

However, it is worth being aware of the possibilities and, as more countries sign validation agreements, the profile of the European patent system will grow further.

In any event, it is noteworthy that a date for the Laos agreement to enter into force has not yet been set. That date will probably be about a year away

Please speak to your patent advisor if you need information about the options available for validating European patents.

*Only the extension agreement with Bosnia and Herzegovina (BA) is still in force. The rest of the former extension states are now full EPC states.