National Law relating to EPC, A. Introduction
A. Introduction
A2. Validation and extension system
The centralised, fundamentally autonomous and uniform procedure for the grant of European patents, introduced by the European Patent Convention (EPC), is linked in a special way with the national patent law of the member states of the European Patent Organisation, and at a number of stages it "interfaces" with the national legal systems – a feature essential to smooth interaction between European and national law. In each of the contracting states for which it is granted, the European patent has the effect of and is subject to the same conditions as a national patent granted by that state, unless otherwise provided in the EPC (Article 2(2) EPC).
The salient characteristic of these interfaces is that, at the outset or in the course of the European grant procedure or after it has been completed, the patent applicant or proprietor may or must take certain steps before the patent authorities of the contracting states in order to acquire or maintain certain rights in those states. It is therefore of primordial importance for all European applicants and proprietors to be familiar with and carefully observe such procedural steps laid down by national law and the conditions for their validity, if full advantage is to be derived from the European patent system and loss of rights is to be avoided.
The European Patent Office intends this booklet to be a concise and reliable guide to the most important provisions and requirements under the EPC contracting states' national law governing European patent applications and patents, for the use of European patent applicants and proprietors and all others concerned with the European patent system. The synopses given in the following tables have been prepared in close co-operation with the authorities of the contracting states responsible for the protection of industrial property.
Although we have exercised the greatest care in drawing up the tables, we cannot vouch for the absolute completeness and accuracy of the information given. If only because of their conciseness and the fact that they concentrate on the bare essentials, the tables can be no substitute for consultation of the national legal sources themselves, supplemented where appropriate by professional advice from authorised persons, and it cannot be stated with any certainty that the legal provisions summarised in them will not have changed by the time this booklet appears. In particular, the reader should not assume that the official fees given at various points in the tables have not been increased in the meantime. It is therefore advisable always to refer back to the official publications of the contracting states so as to keep up to date with the development of national legislation and official practice.
The EPO will continue to provide regular and, as far as possible, up-to-date coverage in its Official Journal of legal developments in the contracting states. The reader is in particular referred to the online version of the brochure "National law relating to the EPC"*, which is updated whenever the EPO learns of any relevant changes at national level.
*www.epo.org/law-practice/legal-texts/national-law.html
A2. Validation and extension system
The European Patent Organisation has concluded agreements on extending or validating the protection conferred by European patents (extension/validation agreements) with states which are not party to the EPC.
These agreements form the basis of extension and validation systems providing patent applicants with a simple and cost-effective way of obtaining patent protection in these other, non EPC countries. At the applicant's request and on payment of the extension or validation fee, European patent applications (direct or Euro-PCT, provided PCT applications include the designation both for a European patent and for such non-EPC states) and patents can be extended to these countries, where they will have the same effects as national applications and patents.
At present, it is possible to request:
- extension to
Bosnia and Herzegovina (as from 1 December 2004)
- validation in
Morocco (as from 1 March 2015)
Republic of Moldova (as from 1 November 2015)
Tunisia (as from 1 December 2017)
Cambodia (as from 1 March 2018)
Note: Extension or validation is possible only for applications (Euro direct or PCT) filed after the date of entry into force of the relevant agreement.
The extension and validation systems largely correspond to the EPC system operating in the EPC contracting states, except that they are based not on direct application of the EPC but solely on national law modelled on the EPC. The relevant procedure is thus governed by the national extension or validation rules of the country concerned.
Those rules which are identical for all the states concerned are summarised below, while the states' main individual requirements are shown in the relevant tables immediately after the information for the contracting states.
Extension or validation fee
The extension or validation fee is payable to the EPO. The time limit for payment of the fee is:
- for European applications
six months from the date on which the European Patent Bulletin mentions the publication of the European search report.
- for Euro-PCT applications
within the period for performing the acts required for an international application to enter the European phase.
Withdrawal of the request for extension or validation
A request for extension or validation is deemed withdrawn if the extension or validation fee is not paid or the application is withdrawn, refused or deemed withdrawn.
Subsequent payment of extension or validation fees
If the fee for an extension or validation state has not been paid within the basic period, the applicant can pay the extension or validation fee subsequently in combination with a 50% surcharge
1. within two months of expiry of the basic period (on the "re-introduced grace period", see OJ EPO 2009, 603; and OJ EPO 2015, A19) or
2. within two months of notification of a communication of loss of rights owing to non-payment of the designation fee.
In the latter case, a subsequent payment is possible only if the conditions set out in detail in the Guidelines for Examination, A-III, 12.2, are met. Under those conditions, the applicant can request further processing for the designations deemed to be withdrawn (Article 121; Rule 135 EPC), paying the extension or validation fees at the same time.
The synopses given in the following tables have been drawn up in close co-operation with the authorities responsible for the protection of industrial property in the extension and validation states. They give an overview of the most important provisions and requirements applicable under each state's national law on extended or validated European patent applications and patents. They are intended to be as accurate as possible, but it is always advisable to consult the states' own official publications to keep up to date with any changes in their national legislation on extension or validation and in their national offices' related practice.
Accession to the EPC of an extension state
The extension agreement between an extension state and the European Patent Organisation will terminate with the entry into force of the EPC in that state. It will thereafter no longer be possible to extend European patent applications and patents to the former extension state. The extension system will, however, continue to apply to all European and international applications filed prior to the date of entry into force of the EPC in that state, as well as to all European patents granted in respect of such applications.
The legal situation outlined above exists in Slovenia (termination of the extension agreement with effect from 1 December 2002), in Romania (termination of the extension agreement with effect from 1 March 2003), in Lithuania (termination of the extension agreement with effect from 1 December 2004), in Latvia (termination of the extension agreement with effect from 1 July 2005), in Croatia (termination of the extension agreement with effect from 1 January 2008), in North Macedonia (termination of the extension agreement with effect from 1 January 2009), in Albania (termination of the extension agreement with effect from 1 May 2010), in Serbia (termination of the extension agreement with effect from 1 October 2010) and in Montenegro (termination of the extension agreement with effect from 1 October 2022).