Insights 20.04.2021

EP validations: A step-by-step guide

The European Patent (EP) system provides companies with an important structure for protecting and exploiting inventions in Europe. To maximise the benefits of the system, while minimising cost and administrative hurdles, requires on-the-ground and specialised support. Cédric Gaspoz explains how NovumIP is able to help.

It takes usually between three and five years to move from a European Patent (EP) filing (with entry into the EP phase) to the EP validation process itself. This movement from EP application to validation follows a defined process, which includes requirements for:

  • Search report with written opinion;
  • Publication of the application and search report;
  • Substantive examination;
  • Communication about the intention to grant (as per Rule 71(3) EPC);
  • Publication of the patent specification; and
  • Launch of the validation process.

Most, EP validations providers will focus primarily on the validation process itself, including translations (complete or claims only), as required. Through its network of European attorneys, however, NovumIP is able to also support companies and innovators across the complete EP process, from filing to managing Rule 71(3) communications, validations, translations and third-party oppositions.

What is Rule 71(3) EPC?

Communication Rule 71(3) is a formality under the European Patent Convention (EPC) that notifies applicants about the intention to grant (equivalent to the notice of allowance in the US).

Following this communication, the applicant has a four-month deadline in which to approve the text (or request an amendment/correction), pay official fees and file the claim translations in the two other official languages than the procedural language (English, French, German).

From grant to validation

Once the Rule 71(3) process is complete, it takes about four to six weeks for the publication of the patent specification and patent holders have a three-month deadline from the grant date to perform the validation process.

The grant date is also the launch of the nine months afforded to third parties to file an opposition against the European patent (as granted), which can result in one of three scenarios:

  • Revocation – loss of protection of the EP and all previously validated countries;
  • Maintained as amended – the applicant has to re-validate the patent in the countries where a translation is required to keep the right in force (three-month deadline from the new publication); or
  • Maintained as granted – no further steps needed for validation.
The benefits of end-to-end support

Traditionally, many patent holders may have relied on a range of specialists to support them during this time-consuming process; for example, in order to prepare the translations in the necessary languages or manage formalities in the necessary countries.

Thanks to our network of European patent attorneys, we are able to manage all that and more, including providing clients with a domestic address for service, paying official fees, and monitoring and paying any annuities due in the validated countries via our single validation and annuities web portal.

As important, for those companies that require additional support, we can also take over as representative for the European Patent after issuance of the intention to grant, which enables us to answer the 71(3) communication, file the (approved) claims translations, and pay the grant and publication fees on their behalves.

To find out more, contact us today for a comparison quote.

Cédric Gaspoz is Managing Director, IP Services Patents at Novagraaf, a NovumIP company.

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