A validation agreement was recently signed between the government of Georgia and the European Patent Office (EPO). Once the agreement is in force, it will be possible to obtain patent protection in Georgia via the EPO.
Georgia has become the fifth non-member validation state alongside Morocco, Republic of Moldova, Tunisia and Cambodia. The non-member validation states are not contracting states of the European Patent Convention (EPC), but they have bilateral agreements with the EPO which enable an Applicant for a European patent to obtain patent protection in these additional validation states. The protection is obtained by paying additional validation fees which are due with the designation fee. Therefore, once the agreement enters into force, the process of obtaining patent protection in Georgia will be much simpler.
There are currently 38 states which are a party to the EPC, two extension states, and four validation states that are not party to the EPC (five once the new agreement comes into force). Thus, this agreement will increase the reach of a single European patent application to 45 countries which highlights the strength, geographical reach and attractiveness of the European patent system.
The difference between “validation fees/ countries” and “designation fees/ countries” can often be confusing at times. Thus, a brief explanation is provided below.
The designation fee is a flat fee which covers all 38 contracting (or member) states of the EPC. When a European patent grants, an Applicant has to decide in which of the designated contracting states they would like to validate the European patent so that the patent is in force in those states.
An Applicant can request to extend the effects of the European patent application (and the eventual European patent) to any non-contracting states with which extension or validation agreements were in force on the filing date of the application.
The extension states are European states which are not a party to the EPC. Currently, there are two such extension states: Bosnia & Herzegovina and Montenegro. The non-member validation states are non-European states which are not a party to the EPC. The non-member validation states (i.e. the five mentioned above) are not to be confused with the process of validating a European patent in the designated contracting states, although the similar terminology is confusing!
In order to obtain protection in the extension states or non-member validation states, an Applicant must pay additional fees for each required state at the same time as paying the designation fee.
For a Euro-PCT application, the designation fee is due upon entering the national phase which is 31 months from the priority date. This means that the validation fees and extension fees, if required, are also due upon national phase entry. Therefore, we will check with you or the Applicant before the deadline to enter the European national phase about whether the Applicant wishes to obtain patent protection in any of the non-member validation or extension states.
For a direct European patent application, the designation fee must be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report. Consequently, the extension fees and validation fees, if required, must be paid within the same time limit.
The full announcement is available here.