European Patent after Grant from the Patent Proprietor's Perspective
The following article is a comprehensive guide for patent proprietors who have just received a notification of a European patent grant. It aims to assist them in making informed decisions on how to maximally monetize their patent rights in Europe.
This article explores several critical aspects, including:
- The advantages and disadvantages of the European patent validation system,
- The newly introduced European patent with unitary effect,
- Key considerations for potential patent litigation at a national court or the Unified Patent Court (UPC).
Written by an experienced European patent attorney and Unified Patent Court representative, this guide provides valuable insights for patent holders guiding the post-grant phase. While it does not constitute personalized legal advice, we are available to assist with any specific questions or strategic decisions regarding your European patent. Feel free to contact us for expert guidance.
Contracting states of the European Patent Organisation
- 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
- Montenegro
- North Macedonia
- Malta
- Netherlands
- Norway
- Poland
- Portugal
- Romania
- Serbia
- Sweden
- Slovenia
- Slovakia
- San Marino
- Türkiye
Validation states
On top of the Contracting States, the European Patent can be validated in:
- Morocco
- Republic of Moldova
- Tunisia
- Cambodia
- Georgia
Extension state
Only the extension agreement with Bosnia and Herzegovina (BA), which is not a Contracting state of the European Patent Organisation, but the European Patent can be validated there.
European Patent Granted by the European Patent Office – Next Steps for Patent Proprietors
A European patent is an exclusive right granted by the European Patent Office (EPO). The protection takes effect immediately after the mention of the grant is published in the European Patent Bulletin. However, in each Contracting State where the European patent is granted, it has the same legal effects as a national patent in that country, unless otherwise specified by the European Patent Convention (EPC). A list of Contracting States can be found in the left column of this article.
What Should Patent Proprietors Do After the Grant of a European Patent?
After the publication of the European patent grant, the patent proprietor must decide in which Contracting States, validation states, or the extension state the patent will be actively used and enforced. This decision impacts how the patent will be monetized or commercialized.
Although national laws govern patent rights in each country, in general, a European patent grants the proprietor exclusive rights over the invention for up to 20 years. These rights prevent third parties—such as competitors—from making, using, offering for sale, selling, or importing the patented product or using the protected process without permission. The patent proprietor may choose to:
- License the patent to another entity through a patent license agreement,
- Sell the patent to another company, or
- Enforce the patent rights against infringers in relevant jurisdictions.
Therefore, it is crucial for the patent proprietor to conduct a thorough market analysis to determine:
- Where the invention has commercial potential,
- Where competitors operate, and
- Which enforcement strategy is most beneficial.
This decision requires a deep understanding of the patent proprietor’s business strategy, combined with the legal expertise of a European patent attorney to ensure compliance with the legal framework and maximize the patent’s value.
Choosing Between Validation and Unitary Patent Protection
Once the Contracting States for protection are selected, the patent proprietor has two main options for enforcement:
- Validation of the European Patent – The traditional system where the European patent is validated separately in each selected country, following national rules and translation requirements.
- Unitary Effect of the European Patent – A newly introduced system that provides uniform protection in all participating EU Member States with a single administrative procedure. However, not all EU Member States as participating. In such as case, a combination of Validation and Unitary effect can be taken into account.
Understanding the differences between these systems is essential for maximizing the strategic value of a European patent. Consulting a European patent attorney can help in making an informed decision tailored to the patent proprietor’s business needs.
European Patent Validation – Key Steps for Patent Proprietors
The European Patent Convention (EPC) establishes a uniform procedure for granting European patents. However, once granted, a European patent becomes a bundle of national patents, each governed by the national laws of the Contracting States.
National Validation Requirements After Grant
After the grant of a European patent, the patent proprietor must take specific steps in each selected Contracting State to acquire or maintain patent rights. These validation requirements vary by country and must be carefully observed to avoid loss of rights and maximize patent protection.
The key validation requirements in many countries include:
- Translation of the patent into the national language (full specification or claims only),
- Appointment of a national representative (where required by law).
Some Contracting States have waived or simplified translation requirements under the London Agreement, making the European patent effective immediately without further formalities.
The London Agreement – Simplifying European Patent Validation
The London Agreement is an optional agreement under the EPC, designed to reduce translation costs for European patents.
Countries That Have Waived Full Translation Requirements
The following Contracting States do not require any translation if the European patent is granted in an EPO official language (English, French, or German):
- Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland, and the United Kingdom.
Countries Requiring at Least a Translation of the Claims
Certain Contracting States require only a translation of the claims into their national language:
- Albania (Albanian), Croatia (Croatian), Denmark (Danish), Finland (Finnish), North Macedonia (Macedonian), Hungary (Hungarian), Iceland (Icelandic), Latvia (Latvian), Lithuania (Lithuanian), Netherlands (Dutch), Norway (Norwegian), Sweden (Swedish), and Slovenia (Slovene).
These states waive further translation requirements if the European patent has been granted in an official EPO language or if a translation into the prescribed language is provided under Article 65(1) EPC (as outlined in Article 1(2) of the London Agreement).
Time for requesting the validation
Generally, all the acts, if required, must be met within 3 months from the date of publication of mention of the European Patent in the European Patent Bulletin.
Why Consult a European Patent Attorney for Validation?
Understanding the validation requirements in different Contracting States is crucial to ensuring full protection of a European patent. Failure to comply with national laws can result in loss of rights or higher costs. A European patent attorney can help patent proprietors navigate these complexities and choose the most cost-effective and strategic validation approach for their business.
For expert assistance with European patent validation, feel free to contact our European patent attorneys.
The European Patent with a Unitary Effect covers the territory of the following 18 EU Member States:
- Austria
- Belgium
- Bulgaria
- Denmark
- Estonia
- Finland
- France
- Germany
- Italy
- Latvia
- Lithuania
- Luxembourg
- Malta
- the Netherlands
- Portugal
- Romania
- Slovenia
- Sweden
European Patent with Unitary Effect – Simplified Protection Across the EU
A European Patent with Unitary Effect allows patent proprietors to obtain patent protection in up to 18 EU Member States through a single request submitted to the European Patent Office (EPO). This system simplifies the post-grant procedure, making it more cost-effective and administratively efficient.
Which Countries Are Covered?
This unitary protection ensures that patent rights, limitations, and available legal remedies remain the same in all participating states (see list on the right), offering broader and more consistent enforcement compared to traditional national validation.
How to Request Unitary Effect?
After a European patent is granted, the patent proprietor must submit a “request for unitary effect” to the EPO to activate Unitary Patent protection. The request:
✔ Must be filed in writing (online submission is accepted),
✔ Must be submitted within one month of the mention of the grant in the European Patent Bulletin,
✔ Is free of official charges, but professional fees for an attorney and translation services may apply.
Translation Requirements During the Transitional Period
As per Article 6(1) of Regulation (EU) No 1260/2012, a translation of the full patent specification must accompany the request for unitary effect during the transitional period:
- If the language of proceedings is French or German, a full translation into English is required.
- If the language of proceedings is English, a full translation into another official EU language is required.
Opt-Out from the Unified Patent Court (UPC)
Patent proprietors who do not wish to be subject to the exclusive jurisdiction of the Unified Patent Court (UPC) must file an opt-out request with the UPC Registry. This cannot be done through the EPO.
For further details on the European Patent with Unitary Effect, visit: Bauer IP
European Patent with a Unitary Effect
Renewal of a European Patent – Ensuring Continuous Protection
Regardless of whether a patent proprietor chooses classic validation in individual states or opts for a Unitary Patent, renewing patent rights is essential to keeping the European patent in force.
Renewal Fees for European Patents
- For validated European patents, renewal fees must be paid separately to each national patent office, with the amount and deadlines determined by national laws.
- For a European patent with unitary effect, a single renewal fee applies, covering all participating Unitary Patent states.
How Much Are the Renewal Fees?
The official renewal fees for a Unitary Patent can be found here.
Ensuring timely payment of renewal fees is crucial to maintaining exclusive rights and preventing loss of protection. If you need assistance with managing renewal payments, consulting a European patent attorney can help streamline the process.