UPDATE

15 January 2024 marks a significant moment for the Republic of Georgia, becoming the 45^th country where a European Patent can be validated. The agreement, signed on 31 October 2019, between Georgia and the European Patent Organization, has now entered into force, offering new opportunities for inventors and businesses.

Currently, the European Patent Convention (EPC) includes 39 member states, comprising the EU member states plus Iceland, Liechtenstein, Norway, and other countries such as Albania, Switzerland, the United Kingdom, Monaco, Montenegro, North Macedonia, Serbia, San Marino, and Turkey. These states are ‘optioned’ – technically designated – in a European patent application through the payment of a single fee. Upon grant, it will be necessary to activate the option in the countries of interest. In fact, the European Patent will only take effect in the interested states where certain administrative formalities are completed, through the so-called European Patent validation process.

In addition to the countries directly adhering to the EPC, agreements have been signed over the years with various other European and non-European states to obtain patent protection through the granted European Patent. These agreements, known as ‘extension’ and ‘validation’ states or countries, allow European Patent holders to extend patent protection to specific territories. Up to now, the extension system applied to Bosnia and Herzegovina, while the validation system applies to Morocco, Moldova, Tunisia, and Cambodia. From January 15, 2024 on, validation in Georgia is also available for any European patent application filed on or after this date.

Extension and validation requests are considered filed at the time of the European patent application, and the fee must be paid within six months of the publication of the European search report, under the risk of withdrawal of the extension/validation request. However, this phase is only useful to ensure that these states are included in the validation option mentioned above. Indeed, only if, once the European Patent is granted, the validation/extension fees are validly paid, will the European patent effectively come into force in the countries where the subsequent formalities to grant have been completed.

In addition to the possibility of bringing a European patent into force in the 45 possible territories, a European patent can also be used to obtain a Unitary Patent. This option, available for European patents granted from June 1, 2023, allows covering, through a single registration, a subset of 17 EU member states (according to the latest rumors, Ireland might join based on the outcome of a referendum likely to be held in June 2024), providing a unified mechanism to obtain patent protection in a large number of independent states/territories following a single examination and grant procedure.

It is thus clear that it is possible for European Patent holders to have – via validation agreements – a simple, timely, and economically advantageous way to obtain patent protection in the validation state, based on a single European patent application. In addition to making the markets of these countries more attractive for European patent holders, validation agreements can help attract foreign investments, foster innovation and improve technology transfer.