1. Possible protection in 44 states with further states to follow
The following drawing presented by the European patent office (EPO) is showing in red the geographic coverage of a European patent if nationalized in all 38 member states of the European patent convention (EPC) after grant.
Furthermore patent protection based on a granted European patent can also be obtained for 2 extension states (Bosnia –Herzogovina, Montenegro) and marked in grey and for 4 validation states (Cambodia, Marocco, Republic of Moldova, Tunisia), marked in blue.
At present the EPO is in discussions with further states and regional offices such as Angola, Georgia, Laos, Jordan and the Organisation Africaine del la Propriete Intellectuelle (OAPI) interested in joining the validation system so that a further expansion of possible coverage of a European patent is to be expected in the near future.
2. When has the applicant to decide about the states of interest?
a) When filing a European patent application nothing has to be done since in the application form provided by the EPO all member states and all extension states and validation states are automatically named.
b) The payment of designation fees and the extension fees and the validation fees necessary for a valid designation of states must be effected within six months after the date on which the European Patent Bulletin mentions the publication of the European search report (in general identic with the publication date of the European search report).
There is a combined designation fee for all 38 member states which must be paid in any case if the application is to be pursued . So the applicant has only to decide which one of the extension states and validation states, if any, is of interest for him and to order the payment the respective fee for such states(s).
- First decision about countries of interest -
The combined fee and the fees for the individual designation of extension states and validation states are enlisted in the attached “List of States for the European Application”. Please note that a validation in a certain validation state is only possible for application filed after a certain date which date is also quoted in the list.
c) After grant the European patent disintegrates into national parts which are administrated by the respective national patent offices. National annuities have to be paid and translations of the patent specification or of the claims have to be filed with some of the national patent offices. These costly actions are part of the so-called “nationalizing” of the European patent.
At that point the patent owner has to decide in which of the 38 member states, and valid designated extension states and validation states the European patent is to be further pursued (nationalized) as national part of the European patent and to order the respective nationalizing.
- The second decision about the countries of interest -
d) At any time the patent owner may abandon a national part by non-payment of a due annuity.
- The final decision -
3. What is the difference between extension states and validation states?
The status of extension states has been introduced as an intermediate step before full membership. Other states now full member states have also been extension states in the past. Extension states are allowed to participate to meetings of the administrative council as observers.
For states outside of Europe the status of a validation state opens the possibility of coverage of a European patent for the respective state, however without the prospect of a later full membership.
For the applicants/owners of European patents there is no difference in the handling of the designation and later nationalizing of extension states and validation states.