The Out-of-Europe Reach of European Patents
While all eyes are on the unitary patent which will initially make it possible to get patent protection in 17 of the EU Member States through a European patent, by submitting a single request to the European Patent Office (EPO) after grant, it seems worthwhile to recall that the geographical coverage of European patents, far from being limited to the European Union (EU), extends beyond the geographical limits of Europe, in Asia and Africa. A single European patent application filed with the EPO thus offers the chance to obtain protection in no less than 44 countries.
The reach of European patents beyond the borders of the EU is due to the very nature of the European patent system. The system is based on an intergovernmental organization with no link to the EU: the European patent organization. The purpose of this organization is to grant European patents through its executive body: the EPO. At its inception in the 1970s, the European patent organisation had 16 members, that is 7 members more than the EU at that time (the "Europe of Nine"). Today, the European Patent Organisation has 39 members compared to 27 members for the EU. A European patent can thus confer protection outside the EU, for example in Norway, Switzerland, the United Kingdom and Turkey.
More recently, the coverage of the European patent has been extended beyond Eastern Europe and the Mediterranean Sea.
To do so, the European patent organisation signed agreements, known as "validation agreements", with several states outside the organisation: first with Morocco in 2010 (entered into force in March 2015), then with the Republic of Moldova in 2013 (entered into force in November 2015), Tunisia in 2014 (entered into force in December 2017), Cambodia in 2017 (entered into force in March 2018) and Georgia in 2018 (not yet entered into force).
According to these validation agreements, a European patent can be validated in the selected validation state(s), where it will have the same effect as a national patent and be subject to national law. In practice, after a European patent application is filed with the EPO, a validation fee has to be paid to the EPO in due time, that is, for direct-filed applications, no later than six months from the date on which the European Patent Bulletin mentions the publication of the European search report, or, for Euro-PCT applications, within the 31-month time limit for entering into the European phase. The validation fee may still be validly paid with a 50% surcharge within a grace period of two months from expiry of the basic period for payment. Then, after the grant, it becomes possible to validate the European patent in the selected validation state(s) by filing a full or partial translation of the patent and paying a publication fee.
Validation agreements are aimed at reducing duplication of search and examination work, thus enabling national patent offices to prioritize first filings from national applicants, while respecting the sovereignty of the validation states. In particular, the national courts retain exclusive competence for deciding on patent validity and infringement according to national law.
Thus, to date, a European patent can confer (subject to post-grant formalities varying from state to state) protection in 44 states, and the European patent organisation has the ambition to further extend this coverage.
The EPO is in talks with other countries in Africa and in the Middle East (with Jordan) to formalize new validation agreements. Recently, the EPO's support to the African Intellectual Property Organization (OAPI) has been strengthened with the aim of preparing a validation agreement between the two organizations. If such a validation agreement were concluded, it would become possible, through a European patent application, to obtain protection in the 17 African Member States of OAPI, including Côte d'Ivoire, Congo and Cameroon.