Where to validate your European patent?

Once your European patent has been granted by the EPO, the next key decision is where to validate it, i.e. convert the granted European patent into a national patent.  One of the main considerations here is cost, as there will be a cost associated with actually validating the patent in each country you choose (local agent’s fees, official fees, preparation and filing of translations, etc.), as well as ongoing maintenance costs (you’ll need to pay renewal fees each year to keep the patent in-force, in each country.

A patent is a national right: it effectively ring-fences one country.  So, having a British patent in place enables you to take action if a competitor makes, keeps, uses, sells, offers for sale, imports or otherwise exploits the patented technology in the United Kingdom.  Therefore, if you only have a British patent, if a competitor makes the invention in Germany, but sells it in France, then there normally is nothing you can do to stop it.  However, if the same competitor makes the invention in Germany, but offers it for sale in the UK, or imports it into the UK, then your British patent can be used to stop the importation, offer for sale, sale, or subsequent keeping and use, in the UK.

The choice of where to validate could be viewed, to an extent, at as question of tactics, which depends to a large extent on the market for different products.

On the most basic level, you should be looking to validate your patent in all countries where you envisage the invention will be made, used, sold or marketed.  This will provide you with the best range of options when you come to enforce your patent.  Taking the example above: suing in Germany (using your EP(DE) patent) for the making or offering for sale; and/or in the UK (using your EP(UK) patent) for the keeping and using.

In certain technology sectors, such as consumer electronics, this can require a large number of validations, and hence push-up costs.

However, you also need to consider your ability to enforce your patent(s).  Patent litigation is notoriously expensive and complex, and you may not have the funds or capacity to litigate in multiple jurisdictions.  Moreover, your IP litigation insurance may not cover you for actions outside certain jurisdictions, so validating your patent in countries where you cannot afford to enforce it, or where you are not insured to enforce it, could be viewed as a waste of money.

On the other hand, you may be lucky enough to have partners/distributors/licensees in other countries, who could be persuaded (or contractually obliged) to take on the costs of maintenance and enforcement of your patent in their territory. In that case, having a validated patent in the country or countries in question could be an essential part of a larger commercial agreement, whcih which case, validation in those countries is a no-brainer!

Further, certain markets (e.g. automotive), tend to adopt a “European specification” for consistency in the European market.  That is to say, key players may try to avoid having different specifications in different countries, in which case, securing patent protection in just a few key countries could be sufficient to effectively cover the entire region.

You should also consider the market size for your invention in different countries, and if funds are limited, focus on trying to obtain the “best bang for your buck” by validating in the countries with the greatest impact.  Using a bit of basic online research, it is possible to obtain a “hit list” list of countries in various sectors, for example:

Top countries by population (m)

  1. Germany (82)
  2. France (64)
  3. United Kingdom (63)
  4. Italy (61)
  5. Spain (61)
  6. Ukraine (44)
  7. Poland (38)
  8. Romania (21)
  9. Netherlands (16)

If yours’ is a consumer product invention, then going for the top 5 countries may secure you adequate protection.

Countries by healthcare expenditure (€bn):

  1. Germany (322)
  2. United Kingdom (237)
  3. France (223)
  4. Italy (146)
  5. Spain (95)
  6. Netherlands (72)
  7. Switzerland (60)
  8. Sweden (48)

If yours is a medical device or biotech invention, you may be able to obtain adequate protection by just going for the top 4 or 5 countries.

Top 5 renewable energy usage (m tonnes of oil equivalent):

  1. Germany (388.9)
  2. Italy (235.6)
  3. France (214.2)
  4. Sweden (183.7)
  5. Spain (168.7)

Top 5 aerospace ($bn of exports):

  1. France (53.4)
  2. Germany (44.6)
  3. United Kingdom (21)
  4. Spain (5.1)
  5. Italy (4.9)

If your invention relates to the aerospace industry, simply validating in the top 3 countries could cover you quite effectively.

As you can see from the above, there is often no need to validate everywhere.  We encourage all clients to take a pragmatic view, and carefully do their research, before committing to the substantial and long-terms costs of validation, as validating in a country where there is no market, or where you cannot afford to enforce your patent, is a waste!

Alternatively, you might consider a two-tier list of countries: a main list of countries where validation is deemed essential, and a second tier, where you will make a final keep/drop decision in a few years’ time.

We are happy to discuss your requirements with you.  Please contact us for more information.