• What are the requirements for EP direct validation?

    As part of the validation procedure, some states require partial or full translation, as well as a power of attorney. The requirements vary vastly, for different states the following requirements apply:

    No translation requirements: Belgium, France, Germany, Ireland, Luxembourg, Malta, Monaco, Morocco, Tunisia, UK.

    Claims translation only: Albania, Bosnia & Herzegovina, Cambodia, Denmark, Croatia, Finland, Hungary, Iceland, Latvia, Lithuania, Macedonia, Montenegro, Norway, Netherlands, Slovenia, Sweden.

    Full text translation: Austria, Bulgaria, Cyprus, Czech Republic, Estonia, Georgia, Greece, Italy, Moldova, Poland, Portugal, Romania, Serbia, Slovakia, Spain, Turkey.

     A Power of Attorney is required in all validation states, except for Belgium, Denmark, Finland, France, Germany, Iceland, Latvia, Luxembourg, Malta, Portugal, Spain, Sweden, the Netherlands, Turkey, and the UK.

  • Is a petty patent the same as a utility model and in which states they are legally protected?

    Many applicants are informed that some states provide patent protection for utility models, but petty patent is not always the same.

    Only devices are protected as utility models in most jurisdictions, but not only devices are protected as petty patents. All technical solutions that meet novelty and industrial applicability criteria may be protected as petty patents or utility innovations.

    Petty patent and utility innovation are protected in some ASEAN states such as Philippines, Indonesia, Thailand, Malaysia.

  • Is late EP validation available?

    The term for Direct EP validation expires 3 months after the date of publication and mention of the grant of the patent. Late validation, restoration or re-establishment of rights is not available.

    Regarding Unitary patent:

    The deadline for requesting a Unitary Patent is one month after the grant, and re-establishment of rights at the EPO is available. The deadline to apply for re-establishment is two months from expiry of the one-month term.

  • Can my priority rights be restored at the national phase?

    Even if the deadline for claiming priority was unintentionally missed, there is still a chance to enter the national phases in some countries.

    The WIPO website informs that many states do not allow the restoration of priority when entering national phases https://www.wipo.int/pct/en/texts/restoration.html

    However, some patent offices allow priority rights restoration even if they are marked as “No restoration” or “Due care”.

    In Algeria, the applicant can file a petition to restore priority, providing explanations for missing the priority deadline along with the evidence confirming due care. The Algerian PRO may require additional documentary evidence, and the decision also depends on the expert.

    The EPO also provides an opportunity to apply for the restoration of the right to claim priority, even if the deadline for filing a PCT application has been unintentionally missed. However, evidence of due diligence is required, because the EPO applies due care criteria.

    Similar rules are applied by the Thai patent office, where the applicant has the opportunity to apply for priority rights restoration even if the PCT application was filed with priority rights restoration under unintentional criteria. Like the EPO, the Thai Office requires evidence of due diligence.

Did not find an answer to your question?
Write to us