Did you know that a European patent application can be used to secure protection reaching beyond the EPC member states? Perhaps surprisingly, a European patent application can be used to obtain protection in other territories – including some geographically remote from Europe. This article summarises relevant information about extension states, validation states and requesting protection in Hong Kong as well as touching on the Patent Prosecution Highway (PPH).

Member states

There are currently 38 European Patent Convention (EPC) contracting states or member states.[1]

All member states at the filing date are automatically deemed designated in the patent request[2],[3] and a single designation fee is deemed to cover the all EPC member states.[4]

When a European patent is granted, it essentially becomes a bundle of national patents. Each national patent derived from the European application gives its proprietor the same rights as would be conferred by a national patent filed directly at that patent office.[5] Validation is required in each designated member state, typically within 3 months of grant, for the European patent to be effective in that state.

What are extension states?

Between 1993 and 2009, the EPO signed extension agreements with 10 European states that are not (or were not at the time) EPC member states. These extension agreements enable (or enabled) patent protection to be secured in those states via European patent applications, despite those states not having acceded to the EPC.[6]

There are currently 2 extension states:

  • Bosnia and Herzegovina (BA)
  • Montenegro (ME)[7]

The 8 former extension states have become EPC member states (most recently Serbia (RS) in 2010). The current 2 extension states may become member states in due course.

What are validation states?

“Validation state” is a relatively new term which, like the previous terminology “extension state”, relates to obtaining protection in non-EPC member states. Unlike the extension agreements, validation agreements are not limited to European countries.[8]

The concept of a validation state is similar to that of an extension state but is distinct from the process of national validation of a European patent in a member state as explained above.

Since 2010, the EPO has signed validation agreements with 4 non-member states enabling patent protection to be secured in those states, despite those states not having acceded to the EPC.[9] Whether or not a validation state is available is determined by whether or not a validation agreement is in force at the filing date of the application.[10]

Validation agreements are currently effective in 4 states:

  • Morocco (MA) – applications having a filing date of 1 March 2015 or later[11]
  • Moldova (MD) – applications having a filing date of 1 November 2015 or later[12]
  • Tunisia (TN) – applications having a filing date of 1 December 2017 or later[13]
  • Cambodia (KH) – applications having a filing date of 1 March 2018 or later[14]

How can protection in extension states and validation states be obtained?

In a nutshell, additional fees need to be paid for extension and validation states. For a PCT entering the European Regional Phase, the time to decide whether or not to seek protection in extension and/or validation states is when the deadline for European Regional Phase entry is approaching. Validation requirements apply after grant in extension and validation states, like they do for member states, in order for the patent to be effective.

What about patent registration in Hong Kong?

Patent protection in Hong Kong can be achieved via a European patent application which designates the UK,[15] a Chinese patent application or a UK patent application.[16]

Registration in Hong Kong is a 2 stage process:

Stage 1 involves filing a request to record the designated patent application (i.e. the Chinese, EP(UK), UK or Chinese published patent application) within 6 months of publication of the application by the relevant patent office.[17]

Stage 2 requires a request for registration and grant in Hong Kong of the EP(UK), UK or Chinese granted patent. The deadline is the later of (i) 6 months from publication of the request to record in Hong Kong and (ii) 6 months from grant in the relevant jurisdiction.[18]

What about the Patent Prosecution Highway (PPH)?

It’s also worth noting that the EPO has a number of agreements in place with other patent offices, including IP Australia. In general terms, accelerated examination can be requested in a second jurisdiction based on claims which have been found patentable in a first jurisdiction. In Australia, examination under the PPH can only be requested if the first examination report has not yet been dispatched.[19]

Summary

A European patent application can be used to obtain protection in several other territories in addition to the 38 EPC member states. This includes extending patent protection into extension states and validation states as well as registration in Hong Kong. A European application (or patent) can also be used as a tool for PPH in various jurisdictions. Early decisions are advisable to avoid missed opportunities.

The information in this article is correct as at 1 March 2018.