The majority of the applicants, who have made a decision to file their applications with the regional patent offices of Europe (EPO) and Eurasia (EAPO) have little idea what they need to do in the situation, when the decision to grant a patent has been made and the long-awaited patent has been granted.
At first, it is necessary to understand clearly what is meant by such concepts as “validation” and “annual maintenance.” The validation of the patent essentially means the national adaptation of the patent, namely the translation of the application into the language of the state, where it is intended to apply the invention. At the same time, not all regional offices provide for such a procedure.
Let us consider the differences existing in the procedure of the national adaptation in the regional offices of the EPO and the EAPO. In the EPO, the validation of the patent is a mandatory requirement for the patent to take effect. As to the EAPO, it does not require the use of the validation procedure, what, in turn, simplifies greatly the lives of many applicants and rights holders.
Now, let us turn our attention in more detail to what actions the applicant/right holder should undertake for the validation of the patent in the EPO. After making a decision on the readiness of the patent to be granted, subject to the compliance with the conditions of the timely payment of the required fees and the submission of the translations of the claims into other two official languages of the EPO (the official languages of the EPO are English, German and French), a group of the examiners shall make a decision on the grant of a European patent. From this point on, the European patent shall be divided into a number of separate national patents in the indicated Contracting States, respectively, the European patent shall transfer to the jurisdiction of the patent offices of the indicated Contracting States. Some of these countries require a mandatory submission of the translation of the entire patent document, or at least the claims, if the patent has been issued not in the official language of the Contracting State. In case of failure to translate the patent in the required language, the European patent shall lose its effect on the territory of the relevant Contracting State.
At the same time, some countries included in the London Agreement (Switzerland, Germany, Great Britain, France, Liechtenstein, Ireland, Luxembourg, Monaco, Malta) do not require the mandatory validation – the patent on their territory will be in effect without this procedure, it is necessary only to pay the fee for its effect.
Thus, the validation of the patent in the EPO essentially consists in translating at least the claims into the relevant national language of the European state of interest and paying the relevant fees.
Now, let us consider what is meant by the concept “the annual maintenance of the patent.” The annual maintenance of the effect of the patent is a legally significant action aimed at preserving the exclusive right granted by the patent.
In the EAPO, the fees are paid annually for the maintenance of the effect of the Eurasian patent. The fees for the maintenance of the effect of the Eurasian patent shall be paid after it is granted annually on the date, which corresponds to the date of filing the Eurasian application. In order to continue the effect of the Eurasian patent in each Contracting State, the right holder must indicate the name of each Contracting State, in which he wishes to continue the effect of the patent. Such indication shall be sent to the EAPO simultaneously with the payment of the fee for the maintenance of the Eurasian patent in effect. This fee shall be paid in respect of each indicated Contracting State. Thus, the right holder according to the Eurasian patent does not need applying to each patent office of the member state of the Eurasian Convention, what in turn reduces the financial costs for the maintenance, due to the fact that there is no need paying for the services of the attorney for the actions undertaken by him related to the payment of the annual fees separately to each national patent office.
In the EPO, the situation with the annual maintenance is somewhat different. The main difference between the EPO and the EAPO in terms of the payment of the annual fees is the payment of the annual fees for the maintenance of the effect of the application. That is, not yet having an idea whether the European patent will be granted, it is necessary to pay the fees regarding the application, and in the case of a refusal to grant the patent, nobody will return the fees. Having received his long-awaited European patent and having validated it in the countries of the European Union of interest, the right holder will need paying the fee for the annual maintenance of the patent to each national office separately. Thus, the annual maintenance of the European patent in the countries, in which it has been validated, is financially expensive due to the fact that it will be necessary to pay for the services for the payment of each separate fee. But at the same time, it should be noted that many European patent attorneys have access to the national offices, what allows reducing the costs for the annual maintenance of the patent.
Despite the fact that at the first glance, the validation and annual maintenance of the patents in the regional offices are the more or less simple actions, it is always better to turn to the professionals in this field, who will always tell the right holder where he can save on the fees due to the fact that he has the right to certain benefits.