How to Validate a European Patent

Introduction of the European Patent

This post covers various aspects of the validation and designation system of the European Patent in designating countries. The validation of the European Patent can be done in countries who are signatories to the European Patent Convention and the counties who have signed extension/validation agreements with the European Patent Office (EPO). The proprietor can validate its patent in East European states which are not a member of the EPC but are termed as extension countries.

The extension and validation systems are largely the same as the designation system for contracting states. However, the extension and validation systems are based not on direct application of the European Patent Convention (EPC) but solely on the relevant national law modelled on the EPC. Hence, they are subject to the national extension/validation rules of the country concerned.^[1] A proprietor who wishes to apply for a patent in the signatory countries, can either file a patent application with the respective national offices of each member state or make a consolidated application with the EPO and thereafter validate the patent in each of these states. A European Patent will have the same effect as that of an application filed with the National patent office.

List of countries of the European Patent

Under Article 2(2) of the EPC, the granted European Patent shall have the same effect and will be subject to same conditions, as that of a national patent, in each contracting state unless otherwise stated.[2] The contracting states can be categorized into the below categories:

Member States of European Patent Convention

The countries which are currently are the signatories of the EPC are :

Albania, Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, North Macedonia, Malta, Netherlands, Norway, Poland, Portugal, Romania, Serbia, Sweden, Slovenia, Slovakia, San Marino and Turkey. ^[3]

Extension & Validation States

Additionally, the EPO has also signed extension and validation agreements, by virtue of which the following countries have been included in the patent validation process:

Extension states: Bosnia and Herzegovina, Montenegro

Validation states: Morocco, Republic of Moldova, Tunisia, Cambodia

Pre-grant Process

Under the simplified process of obtaining a European Patent, the applicant files a single application with the EPO, having the same effect as a national application in each contracting member state wherein the patent application is validated. The applicant must select the contracting states in which they wish to validate their application any time after the application has been filed but prior to grant of the patent.

Designation in Contracting States

As per Article 79 of the European Patent convention (EPC), once a patent application has been filed with the EPO, all contracting states shall be deemed to have been designated, subject to payment of a designation fee. The Applicant has an option to withdraw the contracting states from its application as it deems fit but the same must be done before the grant of the European Patent by the EPO.^[4]

Unitary Patent & Unified Patent Court

Unitary Patent

Unitary Patent (UP) is a short of European Patent with unitary effect. It’s a single patent right which will be granted to the proprietor covering renewal, transfer, revocation and lapse for all contracting states. Unitary Patent will make it possible to protect a granted patent in up to 25 EU member states through a single application with the EPO. The system has come into force in June 2023, starting with 17 states. EU Regulation no. 1257/2012 and 1206/2012 established the UP.

With the introduction of the Unitary Patent the patent proprietor, would have an option to either validate its patent nationally or to select the Unitary Patent route. However, for EPC member states who are not included under the Unitary Patent, it would still be required to validate the patents nationally and to comply with the translation requirements of each state. Furthermore, it will be possible for the proprietor to proceed with a mix of both the options i.e., Unitary Patent and validation of the patent for instance in the UK, Switzerland and Norway.

The pre-grant stage of European patent with the EPO is not affected with the introduction of Unitary Patent.

Unified Patent Court (UPC)

The Unified patent court has been established under the Unified Patent Court Agreement (UPCA) which has been signed by the Member States of the Euroean Union except initially Spain, Croatia and Poland.

The examination and grant is carried out by the EPO and the enforcement will be by the Unified Patent Court (UPC).

Opt-out

The opting-out system simply means that the patent owner can remove their patent from the jurisdiction of the UPC, to keep the patent under the jurisdiction of national courts.

As the UPC opened on 1 June 2023, all existing European Patents fall under its jurisdiction, implying that the third parties can initiate action against existing patents even if they are past the opposition period. In order to avoid this, proprietor’s have been given a window of 3 months (sunrise period) to opt out of the patents from the jurisdiction. There will be no impact on the UK part of the European patent.

Filing of Patent Translations with National Offices

As per Article 65 of the EPC, the contracting states can have a requirement for submission of translations of the granted patent by the proprietor to the central industrial property office in the prescribed language. Each contracting state has its own requirements with regard to submission of translations. What applies to one contracting state might not be applicable for another. For instance, Hungary and the Netherlands require proprietor to submit a translation of the claims but countries like Italy, Poland, Spain, Czech Republic, Bulgaria, Romania, Turkey have a requirement for submitting translation of the patent specification in the respective languages of the member states. Depending upon which country the proprietor wishes to validate its patent, requirements should be understood in order to avoid any non-payment or late payment of fees.

In an event of amendment of claims by the proprietor, certain member states could additionally have a requirement for filing translations of the amended claims as well. For instance, this requirement is there in case the patent proprietor has validated their patent in Hungary.

The London Agreement which came into force on 1 May 2008, plays a very important role in simplifying the patent validation process. It is in relation with the translation regime. The applicability of this regime is dependent to the member states who have ratified or acceded to the agreement.[5] This Agreement is applicable in relation to the European Patent applications filed with the EPO and grants published in the European Patent Bulletin after the agreement came into force. The enforcement of the London agreement has simplified the validation process. The patent applications filed with the EPO prior to the enforceability of the agreement shall not be within its scope.

Timeline for Filing Translations 

The proprietor must submit these translations before the end of three months after the date of publication of the grant in the European Patent Bulletin, unless the State concerned prescribes a longer period.^[6] The proprietor or their respective patent attorneys need to comply with requirements of how these translations should be filed with the national patent offices. Normally, these translation requirements are country specific and the patent proprietor or their attorney’s must be vigilant about it, in order to avoid any error.

After submission of translations, these can be viewed by the public through means such as Inspection in the reading room, copies available, entry in the patent register etc. It is also possible to submit corrections in translations by paying an additional fee depending upon the rules in individual contracting states.

As the unitary patent system has become operational in June 2023, initially there is still a requirement for filing translation, however, this requirement will be reviewed again after 6 years depending upon the availability of high-quality machine translations.

Fees and Costs

• Validation Fees

The cost of validating a patent largely depends on the number of contracting states in which the proprietor wishes to validate its patent. The fees in each contracting state would differ.

• Translation Fees

The translation fees are case specific and dependant on various factors. Translation requirements vary from one member state to the other, while some request for translation of just the claims, there are member states who have a requirement to submit translations of the patent specifications. Further, the cost would be higher if the proprietor wishes to validate the patent in more than one member states with translation requirements.

• Additional costs

Subject to states in which the proprietor wishes to validate its patent application, the proprietor would have to account for fees pertaining to filing of the translations with the national patent office’s either electronically or by post etc., for publication of specifications in the national language(s), attorney charges etc.

Payment Terms

The validation fees in respect to the European Patent applications should be paid within a period of six months from the date on which the European Patent Bulletin publishes the European search report;^[7^] Payment of validation fee is not standard throughout; it is dependent upon the requirements set by each contracting state. Certain contracting states also grant extension of time by payment of an additional fee.

The validation process in Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco and Switzerland and the United Kingdom is relatively faster than the rest of the contracting states, owing to the simplified requirements.

Appointment of a Representative

Certain contracting states do not have any requirement for submitting a power of attorney in favour of the representative for the purpose of validation. In the case of German and Hungarian patents, there is no specific requirement for filing the power of attorney. In case of Hungary, if the applicant’s permanent residence is not in the territory of the EEA, they shall appoint a professional representative who is authorised to appear before the Hungarian Intellectual Property Office. However, it is advisable to file a proof of address in case of any correspondence from the respective national patent offices to receive correspondences from the office. On the contrary, Switzerland and Liechtenstein require a proof of address in either of the countries. Since the validation processes can be complicated and the requirements of each member state vary, it’s advisable to appoint a representative.

Forms

For entering the European phase, contracting states could have a country specific requirement for filing translations. These translations must be filed in the manner specified by the national patent offices of the member states in which the proprietor wishes to validate the granted patent.

Effects of Brexit on the European Patent

The signatories of the European Patent Convention include the United Kingdom. However, the exiting of the United Kingdom from the European Union has had no impact on the European Patent applications or registrations as the patent registration process under EPO extends to nations other than the member states of the European Union.

Renewal Fees

Renewal or annuity fee is payable each year on the date of filing of patent application. These are paid directly to the concerned national patent offices where validation was done. Some of the national patent offices send reminders at the applicant’s local address or at its local legal representatives. The proprietor should ensure that the renewal fees are paid in time in order to ensure that the patent protection is maintained. The payment of annuity shall become due from third year and thereafter each subsequent year from the date of filing of application^[8^].

Footnotes:

^[1]https://www.epo.org/law-practice/legal-texts/extension-validation-system.html#:~:text=The%20extension%20and%20validation%20systems,payment%20of%20the%20designation%20fee.

[2] https://www.epo.org/applying/european/validation.html

^[3] https://www.epo.org/about-us/foundation/member-states.html

^[4] https://www.epo.org/law-practice/legal-texts/html/epc/2020/e/ar79.html

[5] https://www.epo.org/law-practice/legal-texts/london-agreement.html

^[6] Article 65 EPC-  https://www.epo.org/law-practice/legal-texts/html/epc/2020/e/ar65.html

^[7] https://www.epo.org/law-practice/legal-texts/official-journal/2015/02/a19.html

^[8^] Article 86 of PC – https://www.epo.org//law-practice/legal-texts/html/epc/2020/e/ar86.html

This is to announce that Proton & Me Law Firm has won the award “Intellectual Property Law Firm of the Year in Hungary – 2022” at the 2022 Corporate INTL Global Awards.

Over recent months, Corporate INTL has conducted their extensive nomination and research process for their 15^th Global Awards. To coordinate their awards, they receive confidential nominations via their website and the shortlisted candidates are then judged on the credibility of those nominating, the work provided for those nominees, the rankings of the firms/individuals nominated, the calibre of each of the partners/directors nominated, previous awards, network affiliations, overall reputation, publication contributions and previous speaking engagements.

Corporate INTL has confirmed that this was their largest awards to date with more nominations received through their website than ever before.

Law Firm Overview

Proton & Me Law Firm was established in 2011. Proton & Me Law Firm is an award-winning intellectual property, data protection, advertising law & technology law firm based in Hungary and in Germany.

We are committed to providing bespoke, comprehensive legal services tailored to the needs of your business in a cost-efficient manner. We are able to assist in various activities, including application procedures for patents, trademarks, designs; litigation in patent, trademark and design issues; prosecution procedures at patent offices, courts and the EUIPO. We have entrepreneurial spirit and our advice will add value to your business, help your business grow and we advocate to provide protection for your intellectual property assets.

Proton & Me Law Firm is one of the most reputed, outstanding, internationally regarded and award-winning intellectual property law with expertise and extensive knowledge for achieving excellent results for clients in this highly specialized area of law. The firm has been ranked in the top tiers for IP law in Hungary and has been bestowed by numerous prestigious legal awards. Our law firm’s aim is to pursue proactive and assertive partner-led case strategies for each client. Despite all the technological means, firm ensures that legal services are diligently tailored and adaptable to the need of each client.

Managing Partner of the firm is Proton & Me Law Firm, who is a certified IP professional, and a certified data protection officer (DPO). He has gained 15 years of experience as an IP/IT, data protection lawyer. He advises international companies and creative private individuals in intellectual property, data privacy and internet, media and advertising law issues.  The clients receive the managing partner’s attention so it is ensured that all the services are provided in an experienced, timely and cost-effective manner.

Proton & Me Law Firm is truly an international practice, that can represent you at Hungarian, German and European Union courts and authorities. The firm can provide proactive and extremely responsive legal services in English, French, German and Hungarian languages.

In trade mark proceedings the parties may be required to file Witness Statements in the form of an affidavit or a statutory declaration. The purpose of this statement is to record the evidence of a person laying out necessary details in support of their case. Depending upon the nature of the proceedings, the Tribunal would notify the parties the time period within which they would be required to file the witness statement and the evidence. The parties must ensure that the witness statement is filed within the statutory time limit and as per the guidelines laid down by the UK Trade Mark Registry. The witness statements are not required to be authenticated by a Notary public.

We would like to bring to your attention these guidelines and requirements for filing witness statements and for recordals of evidence.

Commencement of evidence stage

In opposition proceedings: 

As per Section 20 of the Trade Marks Rules, 2008, the Registrar specifies the time period within which the evidence and submissions shall be filed by the parties. Witness statements shall be filed in cases where the opposition was based on an earlier trade mark and on grounds other than the mark being identical and/ or similar, the goods and services being identical and/or similar and lastly in cases where the Applicant denies any claim set out by the Opponent in its statement of use.

In an event of failure to file evidence by the Opponent within the prescribed time, it shall be deemed that the Opposition is withdrawn. However, parties do have an opportunity to file for extension of time for submitting their evidence, but it is at the Registrar’s discretion whether to grant it or not. An extension is only possible if the application is made before the expiry of the original term in Form TM9. 

In cancellation proceedings:

Once the proceedings have been initiated i.e., the parties have filed the application to start invalidation proceedings and Notice of Defence and counterstatement, both the parties are given an opportunity to file evidence supporting their cases.

What a witness statement should and shouldn’t  include 

Submissions made in the witness statement should be used for explaining the purpose of any submitted evidence, parties take on the opposite parties evidence or their case., primarily be for pointing out the shortcomings in the evidence submitted by the opposite party and for challenging their claims. Primarily the witness statement should include details of the signatory, details about the use of the mark in the United Kingdom within the relevant period and most importantly the statement of truth. The statement of truth is a declaration by the signatory testifying that the facts disclosed are true, this should also be dated and signed. In case the statement of truth and the signatures are not on the same page, the entire witness statement including the statement of truth should be page numbered. 

Additionally, it should be noted that Evidence and submissions are not the same thing. In KILLER CHORUS (BL O/431/12) the difference between the two was explained with reference to Rule 20(1) of the Trade Marks Rules. While evidence is the information introduced into the proceedings for the purpose of substantiating facts and matter, submissions are “representations made by the party putting them forward as to the position and approach which the Registrar should adopt in relation to the matters addressed”. The UKIPO in their guidance dated 8 November  2019, have asked parties to the proceedings to refrain from making any legal arguments or opinions in the witness statement. However, these can be filed separately as submissions. Practically, arguments about law and facts should be either made during the hearing stage by the legal representative or while drafting the final written submissions instead of a hearing. 

It is also possible for the parties to not submit any evidence but to merely comment or challenge the opposite side’s evidence and submission, by filing a written submission in the form of a letter. 

Who can sign a witness statement

During opposition and cancellation proceedings, parties often have to submit witness statements. Similar to all other legal drafts, the statement starts with the details of the authorised signatory and the Company (if applicable) and the signatory disclosing the source of information of all of the facts and details disclosed. The source of such information could be personal knowledge or company records etc, and hence it is advised that the signatory be a person who has first hand knowledge. Hearsay evidence should be strictly excluded while making submissions by the representative as they may not be given consideration by the Registry. Practically, a signatory is either the Director of the Company or someone from the top level management and in case an individual, that individual. 

It should be noted that the person making the witness statement can be called for cross-examination of evidence at the time of hearing. The witness statement must be accompanied with exhibits. The following should be provided by the parties in order to show use of the mark during the relevant period:

• The date of first use of the mark in the UK;
• The form in which the mark is used;
• Where all the mark has been used – in relation to which goods and services;
• The actual or estimated sales under the mark;
• The sales and advertising figures and the mediums through which the mark was promoted etc.

For the sources of evidence, parties should try and obtain sales invoices pertaining to the relevant period, invoices cleared towards advertisement and promotion of the mark, social media campaigns, extracts of youtube videos, use of the mark on Facebook, Instagram, Twitter and other social media handles, newspaper articles, journals, magazines having reference of the mark in question, domain name registration details, website extracts. The parties can additionally also submit brochures and pamphlets, however it is better if these are not the only supporting evidence and it is difficult to substantiate the level of awareness it must have created amongst the target audience.

Admissibility of evidence 

The UKIPO has strict rules when it comes to admissibility of evidence and the parties must ensure that these are adhered to. To begin with, it must be ensured that the evidence in chief for opposition or cancellation proceedings, does not exceed 300 pages unless special permission is granted by the Registry.  The parties must provide all evidence to substantiate the claims made by them by submitting all relevant documentary evidence. Normally, the evidence is submitted in order to prove prior use of the mark in the relevant jurisdiction. However, there are cases wherein evidence may not be required to be filed at all, for instance opposition cases filed on grounds of likelihood of confusion with a prior right  though not old enough to challenge non-use. Following are the common documents submitted by the parties to show use of the mark:

• Marketing and Advertising figures, newspaper articles, brochures and pamphlets, photos from exhibitions;
• Sales figures relating to the mark, sales invoices for the relevant period;
• Extract showing details of purchase of domain name i.e., whois result;
• Extracts or screenshots from websites from the relevant period
• Copies of awards and recognitions received by the product bearing the mark

In case of cancellation proceedings based on the grounds of non-use of the mark within five years from registration, evidence in support of the following shall also be admissible as per section 46(2) of the Trade Marks Act, 1994:

• Use of the mark in a form alternative to the registered mark, also termed as ‘variant form’, as long as the distinctive character is not altered, irrespective of whether the mark in the variant form is registered or not under the name of the proprietor, and;
• Use in the UK shall include use of the mark on the goods or to the packaging of goods solely for exporting.

Additionally, while submitting the evidence, parties must write a brief about the relevance and what they are trying to set out. Each exhibit submitted must be clear and legible. The parties must ensure that the evidence of use must establish the place, time, extent and nature of use of the mark for the goods and services in respect of which it is applied for/ registered. Since there is a general restriction on the number of pages, all evidence should be reviewed and the most relevant ones should be included. During opposition proceedings, the Opponent files its evidence followed by the Applicant, further the Opponent thereafter has an opportunity to file additional evidence which must be strictly in response to the Applicant’s evidence.

Case Law

While drafting the witness statement it must be ensured at all times that all the facts and figures shared by the parties can be substantiated with evidence especially in case of proving prior use in the relevant territory. Further, greater vigilance should be paid to ensure that the only relevant and important evidence is submitted. It is not necessary to make the evidence bulky as long as it substantiates the claims made. There have been instances wherein the parties have submitted evidence which doesn’t show use of the mark and it has not worked out in their favour. 

One of such cases was of  VIÑEDOS EMILIANA SA  v. CONSORZIO TUTELA VINI EMILIA, CHIARLI 1860 – PR.I.V.I SRL and MEDICI ERMETE E FIGLI SRL. The final order during the opposition hearing was in favour of the Applicant and thereafter the Opponent had appealed to the same. The Tribunal had dismissed the Appeal vide its decision dated 21 January 21 2022.

It can be implied that there was lack of evidence or submission of irrelevant evidence by the Opponent. In the final order the Hearing officer had stated that “Even if the Opponents have sufficiently demonstrated that they trade in a class of wines which can be defined with reasonable precision, the name by which the products are known is, in my view, Lambrusco and not Emilia – this is how they are described on the invoices which make up a substantial part of the Opponents’ evidence.” Further, it was stated that “Therefore, when taking the evidence as at March 2017, insufficient evidence has been produced to demonstrate that EMILIA was distinctive of a protectable goodwill.” and the same was reiterated and agreed during the Appeal proceedings.

Post evidence stage

In  case of ex parte procedures, the applicant / owner has a right to request a hearing before a senior office of the Registry to argue his / her case in relation to the objection. In ex parte procedures, the parties will either be invited to a hearing or will be requested to submit their final written submissions in lieu of hearing. In case the parties opt for written submissions in lieu of hearings, the Tribunal will make the decision based on the submissions made during the proceedings. However, in case of an oral hearing, the parties can ask for cross-examination of the witnesses of the opposite side.

BACKGROUND IN THE USA

You may have heard of the scandal shaking the IP community in 2021: the USPTO has systematically set up a system to filter and target U.S. legal representatives who share their log-in data with foreign trademark agents.

As a result, in one of the cases, over 8000 potentially fraudulent trademark applications have been suspended. The USPTO held that

“The conduct infected thousands of applications, resulted in false and fraudulent submissions being made to the USPTO, and adversely affected the integrity of the federal trademark registration process.“

Source: https://www.uspto.gov/sites/default/files/documents/TM-Sanctions-Order-Yusha-Zhang.pdf

The cited case was the epitome of the efforts of the USPTO. Ultimately, the rules of representation have been changes and clarified too. The USPTO has analysed access dates, times, frequency, IP addresses, etc. to arrive to the conclusion that the U.S. trademark applications had been actually filed outside the U.S.

BACKGROUND IN THE EU

The EU faces a similar problem. Apparently, some EUIPO representatives share their log-in credentials with non-EU IP agents for a small fee. This is certainly not allowed, but so far the EUIPO has not invested into any infrastructure to tackle downs this type of usage and has lacked effective measures against such illicit usage. This seems to have started to slowly change since Summer 2021 when the EUIPO took first steps to filter illegal representative accounts and has updated the CONDITIONS OF USE OF THE USER AREA (02/07/2021).

A Summary of the new approach has been also published in the News Section of the EUIPO website. Should the EUIPO recognize, by technical means, the unauthorized sharing of EU representative log-in credentials, the most severe re-actions by the EUIPO would be

– immediate suspension of the EU representative’s account

as a result, neither the foreign IP agent, nor the EU trademark / design representative would have access to the files and would be unable to file new applications until further notice;

– informing the competent national authorities

as a result the EU lawyer could face civil, criminal charges, could be investigated by data protection authorities, fines up to €10 million, his / her Bar Association and could theoretically lose his / her licence to practice law.

We do not know how quick / slow the EUIPO is in this matter, but the legal and technical framework is now set up to filter and sanction the granting of access of lawyer accounts to third parties.

PROTON & ME LAW FIRM are proud to announce that we have been ranked amongst the top 25 trademark e-filers by the EUIPO. The EUIPO have released their figures for Q3 2020, and our firm has been included in their list of top filers across the EU with rank #7 with a cumulative

482 European trademark, EU design patent and EUIPO opposition filings between 1 October and 31 December 2020

For Hungary, we have kept our position as No. 1 for five consecutive years now, this time with 71 filings in Q3 2020. Rank #2 was achieved by SBGK UGYVEDI IRODA with 39 filings and rank #3 by KOCSIS ES SZENASSY UGYVEDI IRODA with 14 filings. See the complete list for Hungary below.

For Germany, we have reached the top three position for the first time. We have ranked No. 2 with 411 filings in Q3 2020. Only ZELLER & SEYFERT PARTG MBB managed to file more in this quarter and BOEHMERT & BOEHMERT ANWALTSPARTNERSCHAFT came in third. See the complete list for Germany below.

Every quarter, EUIPO publishes its ranking of its top 25 e-users. The ranking is classified both at EU and individual Member State level. The top 25 ranking includes users registered as representatives, comprising associations, lawyers, EUIPO professionals and employee representatives. Users are ranked by the volume of their electronic trademark, design and opposition filings.

We are delighted with these rankings. We are achieving our goal to establish our IP law firm in Germany and maintaining our position as the leading IP firm in Hungary and in the EU in general.

You can read the full list on the EUIPO website, here.

At that time European Union trade mark and design registrations will spin off or clone into identical UK trade mark and design registrations. This is an automated process, if we represent your trademark or design patent, there is nothing to be done (unless you do not want the cloned IP right).

If we are not recorded as the representatives for your EU trademark or design: We can manage this process in the UK free of charge for you: We would become your representative at the UK IPO for these new UK registrations.

We would like to remove any uncertainty you or your clients may have over this process.

On its website the UK IPO says: “These comparable UK rights will be recorded on the UK register and retain the filing dates recorded against the corresponding EUTM. They will also inherit any priority and/or seniority dates.

It will be different if your trade mark or design is still in the application process (not yet registered): If you have a European trademark or design application that’s still pending on 1 January 2021, you will be able to:

– apply to register the same trade mark / design patent as a UK right until 30 September 2021

– retain the earlier filing date of the pending EUTM / design patent even if it is older than six months

Please send us the trade mark or design patent information to our dedicated email clone.uk@protonsandme.com