- How to validate European patents with fewer middlemen
You can get patent protection in Europe either by applying directly in each country or more commonly, through the European Patent Office (EPO).
Using the EPO applicants can apply for patent protection in some 40 European countries.
As in other parts of the world, patent agents helping a customer usually only act in their own country and towards the EPO. When the time to validate comes, the granted patent application in other countries, the patent agent asks other agents in the countries of interest to perform the local validations.
Very often the local agent will then for instance, contact a translation agency to arrange a translator to perform the translation.
As an example, the whole chain can include the following parties: a Japanese patentee
– a Japanese patent agent – a European patent attorney – national patent agents
– translation agencies – translators.
If all of the parties add on 20-40%, the cost of the middlemen becomes higher than the price of the whole validation.
The process starts when you file a European patent application. The states you choose to designate for the application are the ones where you can subsequently obtain patent protection. A European patent attorney usually supports you but in many cases it is possible to apply yourself, both as an individual or as a company.
The European Patent application process starts with the Grant phase and ends with the Validation phase. The grant phase begins after the European Patent application is filed. During the grant phase, the European Patent application is examined at the EPO. The grant phase, usually takes some three to five years.
At the end of the Grant phase the EPO issues a communication called Intention to Grant, also referred to as a 71(3) notice. Within four months you then have to file a translation of the patent claims in the two other, official languages of the EPO and pay printing and grant fees to the EPO. The official languages of the EPO are English, French and German.
From this stage and onwards Direct Validation can help you.
Some 4-6 months after the Intention to Grant, the validation phase starts with the EPO sending out the Decision to Grant letter. Opposite to what is commonly believed, the EPO does not grant usable patents, they only provide an examination accepted by all the member states. To obtain patent protection you need to validate the granted patent application in the states of interest for you.
The grant date is mentioned on the Decision to Grant letter. The time limit to validate is 3 months from the publication of the grant in almost all member states.
From now on the process is decided by the patent laws of each country where you seek protection. The validation process is rather straight-forward but there may be many small differences in each country’s patent processes such as what forms to use, how to set up the translation, where to file the translation, fee payments, if there is a requirement for a local address etc.
Direct Validation probably knows better than anyone all the ins and outs as we are continuously in contact with all of the national patent offices.
During the 3 month period you need to:
In most states it is not necessary to use a patent attorney for the validation; neither your European patent attorney, nor a local patent attorney.
Direct Validation can assist you to perform direct validations without unnecessary middlemen, either you are a patent attorney or a patent holder.
When we have completed the validations for you, the following information will be sent back to you:
Once the validations are concluded there is nothing more you need to do than to pay the annual fees in each country you seek patent protection.
To keep patents alive, it is necessary to pay annual fees to each national patent office (also called annuities).
Direct Validation can administer payment of annuities for you and will continue to administer fee payments as long as you do not inform us to stop.
For this reason we cooperate with some of the best annuities specialists to ensure both quality and prompt payments.