Posted by Jeff Shieh on Mon, Jun 07, 2010 @ 01:41 PM
Although many of our clients know granted European applications must be validated, a good number of them don't have a strong understanding of the grant and validation process.
For many applicants, especially those in the US, their post-prosecution involvement begins and ends with simply instructing their European agent to "finish the job and validate in countries X, Y and Z."
Here, I'll try to provide a simple overview of the European grant and validation process.
Part 1: Getting to Grant
The end of the prosecution stage is marked by issuance of the Notice of Intention to Grant (also known as a Communication under 71(3) EPC). Congratulations, the hard part's over! The granted claims must now be translated into French and German (assuming the original application was filed in English). The translated claims are submitted to the EPO with the printing and grant fees within 4 months of the issuance of the Notice of Intention to Grant. For most US-based applicants, their European agent coordinates these steps.
Next, the EPO issues a Decision to Grant (also known as a Communication under 97(1) EPC) which is published in the European Patent Bulletin. Following publication of the Decision to Grant, the applicant has 3 months to validate the granted application in those countries where protection is desired.
Part 2: Time to Validate
Validation involves corresponding with the patent offices in each of the selected countries. Depending on which countries are chosen, the applicant may need to do any combination of the following:
Pay a fee
Submit forms or a letter indicating that validation is required
Lodge a translation of the claims or of the entire specification
Record a local address for service
However, in many countries such as the UK, Germany and France, a formal "validation" step is no longer required. The European patent will be in force in such countries as long as annuities are paid at the country level.
Following validation, the patent is now in force within the selected jurisdictions. To maintain the patent, the applicant must pay annuities, also known as renewal fees, each year.
See this page for more detail regarding the European validation process.
FYI: inovia typically helps clients save time and money at Part 2 of the grant and validation process, but we can also step in at Part 1 if desired. From our website, you can get an estimate for your European validation.
Posted by Elizabeth Golluscio on Thu, Apr 22, 2010 @ 09:32 AM
At the AUTM 2010 Annual Meeting, several University Technology Transfer Office (TTO) executives asked us how and why TTOs are using inovia and what benefits they see. Here's a brief case study of a current university client:
Background
The TTO of this CA-based University files, on average, about 20-40 PCT applications a year. For the most part, entry into the national stage for any particular application requires a licensee in place for the claimed technology, and the licensee determines in which countries to nationalize. Payment of fees is also handled directly by the licensee.
Previously, the TTO entered the national stage and validated their granted European applications via their outside US counsel. National stage entry instructions were sent to US counsel, who would then prepare the requisite forms and instruct their foreign agents accordingly. European validation followed a similar process.
Working With inovia
An obvious concern for the TTO was how to incorporate a foreign filing provider with minimal disruption to their current practice. Here, the TTO now sends instructions regarding foreign filing and validation to us, rather than their outside counsel. We prepare all the forms necessary for national stage entry. The TTO notified their law firm that national stage entry and European validation would be handled by inovia. Once the application enters the desired countries, the TTO and their domestic counsel work together with our foreign associates through prosecution.
Regarding communication with the foreign associates, the TTO wished to receive all correspondence directly, with copies sent to their licensee and outside counsel. This way, all relevant parties were "in the loop" as far as foreign filing was concerned.
The primary benefit of this arrangement was cost savings. The elimination of an extra layer of legal fees (i.e. the cost of instructing US counsel, who would then relay instructions to the foreign associates) results in a significant reduction in costs. This TTO previously worked with a number of US law firms, each with their own network of foreign associates. In an effort to streamline their foreign filing, the TTO, by filing through inovia, was able to consolidate their foreign representatives, and reap those cost savings as well.
Given the financial pressure many Univerisities (and companies) are under this year, saving on foreign filing (without having to reduce the number of countries they enter) was a welcome arrangement.
Posted by Elizabeth Golluscio on Wed, Jan 13, 2010 @ 08:53 AM
Which country / countries should we add next to our pctfiler network? We're looking for your feedback.
Today we can handle our clients' PCT national stage entry and European validation in 60+ countries (see the list of countries covered by our global agent network).
Which PCT contracting states should we add next, based on your (or your clients') foreign filing needs?
Our shortlist presently includes:
- ARIPO
- UAE
- Egypt
- Chile
- Thailand
Posted by Elizabeth Golluscio on Mon, Jan 04, 2010 @ 11:12 AM
Yes, we know it's officially known as the PCT National Phase... inovia was founded by an Australian patent attorney, after all.
Yet many patent attorneys, agents and applicants in the US refer to it as "PCT national stage entry". We've used 'stage' on our website and in other materials because many of our (mostly US-based) clients say 'stage'. So, we're having an internal debate about this choice and thought we'd open it up to our blog readers... what do you say? Should we use 'phase' or stick with 'stage'?