The system for validating European patents in a non-member state is based on an international agreement between the European Patent Organisation and the respective validation state. Applicants can obtain patent protection in the validation state using effectively the same procedure before the EPO as for obtaining national patents in the Organisation's 38 member states and two extension states. At their request, and on payment of the prescribed fee, European applications and patents can be validated in the validation state, where they will have the same effect as national applications and patents.
The validation system ensures that foreign applications entering the validation state have been examined in accordance with the same high quality standards as any other patent application filed with the EPO. The thoroughness and reliability of the EPO's patent grant process results in a high degree of legal certainty for the holder of a European patent. Thanks to the EPO's role as the patent office for Europe and a leading PCT authority, the inventions protected by a European patent are typically filed internationally and are of high economic value. The grant of a national patent through the validation system is thus a simple, timely and cost-efficient way of achieving high-level protection for an invention in a jurisdiction that is not part of the European Patent Organisation.
Importantly, the validation procedure and the legal effects of validation are governed solely by the national law of the validation state. Consequently, validated patents are subject to the same national rules as the national patents granted by the national IP office. This means in particular that the national provisions of the validation state on revocation and infringement of national patents apply to validated European patents, and the national courts will be the ultimate arbiter of the protection conferred by these patents.
National patents granted to non-residents are a stimulus for foreign direct investment and technology transfer, provided that investors can rely on the legal certainty attached to the granted patents and applicants on the ability to enforce their rights. The legal certainty attached to patents of foreign origin is also important for local innovators and potential competitors as they must have clarity on the granted scope of protection to avoid developing technologies that infringe the rights of others.
By contrast, national patent applications filed by residents are usually the product of local research and development, and the national patent system is expected to act as a catalyst for converting the commercial potential of these inventions into economic development. The legal certainty attached to these patent applications and patents is essential to allow domestic patent proprietors to reap the full benefits from their inventions, whether in terms of commercialisation through licensing for instance, successfully preventing others from copying the invention or protecting it in foreign markets.
Patent applications filed by residents are usually "first filings" because the applicant has not yet filed patent applications for the same invention in other jurisdictions. Timeliness is an essential factor for first filings as applicants need to know whether their invention is patentable as soon as possible after the filing date and before the expiry of the 12-month priority period. They need early certainty regarding the patentability of their invention in order to take an informed decision on the further development of it, and possibly also on whether to extend the protection to other jurisdictions, in other words, to develop exports and foreign trade.
However, first filings normally require patent offices to carry out the substantive search and examination on patentability from scratch as there are no family members to consult. Hence, they are usually more time-consuming and complex to examine than second filings, where related work products from other patent offices usually exist. Furthermore, many national patent offices face capacity constraints and do not have enough qualified patent examiners to examine the growing range of technology.
At many patent offices, second filings represent the majority of national patent applications. Once the validation agreement with the EPO takes effect, non-resident applicants usually opt for the validation route resulting in a sharp decrease in the share of second filings at the national office of the validation state. It can then devote more examination resources to first filings and prioritise timeliness and quality. Its examiners can focus their efforts on guiding local applicants through the patent grant process and even participate in IP awareness and capacity-building activities organised by the national IP authorities for local stakeholders.
The EPO has designed a comprehensive technical co-operation programme for validation states pitched at a level similar to the one created for its member states. It comprises technical co-operation activities across all areas of the patent system and is aimed at supporting the national patent offices in maximising the benefits from the validation system and in strengthening the national innovation ecosystems. The technical co‑operation activities undertaken are usually focused on three main areas, namely, the national patent office, the post-grant system and local innovators. Depending on the needs, priorities and goals of the respective validation state, technical co-operation activities with the national patent office often include training of patent examiners, access to search tools and data exchange, technical assistance in developing operating procedures and guidelines and procurement of information technology and equipment. To ensure that the post‑grant system functions effectively, training for local patent attorneys and specialised judges is usually provided. Finally, to increase the capacity of local innovators to use the patent system for their benefit, a dedicated train-the-trainer programme is implemented with the national patent offices where their staff act as trainers and multipliers in establishing further train-the-trainer programmes within relevant organisations and institutions such as technology and innovation support centres, technology transfer offices, universities, etc.
The EPO has concluded validation agreements with five countries so far: Cambodia, Georgia (not yet in force), the Republic of Moldova, Morocco and Tunisia. More countries are currently in negotiation with the EPO.