ONCE A EUROPEAN PATENT HAS BEEN GRANTED, IT IS NECESSARY TO “VALIDATE” AND MAINTAIN IT IN EACH COUNTRY IN WHICH PROTECTION IS REQUIRED
Once a patent has been granted by the European Patent Office (EPO), it needs to be validated in each EPC contracting state in which patent protection is needed. Validation is the process whereby the notational patent offices that have signed up to the European Patent Convention (EPC) recognise a patent granted by the EPO as being equivalent to a national patent granted by the respective patent office.
The validation process has been greatly simplified by the London Agreement 2000, which came into force on 1 May 2008. The London Agreement basically relaxed many of the translation requirements that used to make validating a patent an expensive process, and also relaxed the need, in many of the EPC contracting states, for patentees to appoint a local representative or “address for service”. Nowadays, validation in certain EPC contracting states has become virtually automatic, and, in fact, the UK Patent Office (UKIPO) even goes so far as to synchronise the UK Register of Patents with the EPO’s records so that, in principle, granted European patents automatically become United Kingdom patents.
WHY APPOINT AN ATTORNEY?
There are some idiosyncrasies that need to be checked, and it is therefore recommended to go through a formal validation process.
Firstly, and this is mainly an issue for patents that have been prosecuted in parallel via a number of routes (e.g. a direct UK application prosecuted in parallel with a Euro-PCT application), the UKIPO automatically revokes a granted UK patent that is the same as a corresponding EP(UK) patent. This provision of UK law is there to prevent “double-patenting” (i.e. having two identical UK patents in-force simultaneously, which could otherwise enable a patentee to sue an infringer twice for the same act of infringement). We can check for such potential conflicts and inform the UKIPO accordingly to prevent automatic revocation (e.g. if the respective claims are of different scope), or advise on assigning either the EP(UK) patent or the UK-direct patent to another entity to avoid the double-patenting provisions.
Secondly, renewal fees need to be properly monitored. The automatic validation of a UK patent is only effective until the next anniversary of the patent’s filing date. If renewal fees are not paid on-time, then the patent will lapse. The UKIPO only sends renewal warning notifications to addresses within the EU, so if the patentee has a non-EU-based representative, then these warnings will not be sent. Further, sometimes more than one renewal fee is payable in the first year of the patent to cover renewal fees that were “skipped” for example, when the EPO prosecution takes more than 4 years to complete. We can attend to renewal payments upon validation either as a one-off, or on an on-going basis.
Thirdly, in the event of post-grant proceedings being instigated, the UKIPO will only guarantee to notify an agent based in the EU. In practice, the UKIPO would probably notify a non-EU-based representative or patentee, but given that many post-grant proceedings have relatively short response periods, having a suitably qualified (i.e. UK-qualified) agent as the first recipient of such correspondence is highly recommended. We can become your UK address for service.
OUR FIXED-FEE VALIDATION SERVICE:
At Hutchinson IP, we offer a fixed-fee validation service which takes the hassle and administration out of the process for you: When the EPO issues the notification of intent to grant, the patentee will have already filed a translation of the claims of the patent into the three official languages of the EPO (English, French and German). The UKIPO only requires a translation of the claims into English for validation purposes (although in post-grant proceedings, a translation of the entire patent specification will most often be needed). In addition, by appointing Hutchinson IP as your address for service, we will be the main contact point for the patent office in relation to post-grant matters, meaning that you have a suitably-qualified UK practitioner on hand should any post-grant proceedings be initiated in respect of the patent.
COST OF EP(UK) VALIDATION:
Our fixed fee for validating a granted European patent in the UK is just £175 + VAT(for individuals and companies liable to UK VAT, currently at 20%, the total cost is just £210). This service includes checking the EP and UK registers, checking the renewal requirements and informing the UKIPO of any changes to the patent specification that may have occurred between the EPO’s notification of intent to grant and the publication of grant the European Patents Bulletin (EPB).
EXTRA COSTS:
Further services that you might require to perfect the validation process may include:
Attending to payment of one or more renewal fees (read more);
Updating the UK Register of Patents to reflect a change of owner or licensee, for example, if the EP(UK) patent has been assigned or licensed to a different entity to the proprietor of the EP patent. Attending to this costs £250 + VAT, inclusive of the official fee (£290 including VAT); and/or
Correcting the UK Register of Patents to reflect a change of name or address, for example, if the proprietor of the EP patent has changed its name or address but the new details were not notified to the EPO prior to grant. Attending to this typically costs just £150 + VAT (£180 including VAT).
ON-GOING COSTS:
If we receive any post-grant communications from the UKIPO regarding the patent, we will forward the same to you immediately. The initial docketing and notification will be charged at £100 + VAT (£120 including VAT), and a cost estimate or quotation will be provided for dealing with any issues raised.
INSTRUCTING US:
If you would like us to validate a European patent for you, then please contact us with your requirements or complete the enquiry form on the right of this page.