When an applicant in the EPO gets the good news that the applicant is going to receive an EP patent, one of the things that happens next is that the EP patent has to be “validated” in the one or more countries in the EPO area where protection is desired. This costs some money and takes some time.
In the EFS-Web listserv (a discussion group for US patent practitioners) the question came up why EPO validations cost as much money as they do, and why a rush fee might be imposed by an EPO validation service provider if instructions were given at the last minute. Indeed one might ask why there is an EP validation process at all? What is the problem for which an EP validation process is the solution? These questions prompted me to write this blog article.
Let’s start with the question of why there is such a thing as EP validation at all?
It will be recalled that if you go far enough back in time, there used to not be an EPO. Back in 1978 it was desired to “turn on” the EPO, and to “turn on” the notion that there would be a single place in Europe where you get the answer to whether or not your invention is patentable, and to “turn on” the notion that there would be a single place where you would hand over money to obtain your patent rights.
Back in 1978 if you were an employee of a national patent office in any of the 23 countries that make up the EPO, you probably pretty much hated all of these ideas. These ideas, if carried through fully, would largely eliminate the need for your national patent office, and the need for your job, to exist.
Back in 1978 if you were a patent practitioner who until then made your living charging professional fees to people for obtaining patents from any one of those 23 national patent offices, you pretty much hated all of these ideas. These ideas, if carried through fully, would largely eliminate your opportunity to charge a premium for your services by being one of the limited number of people who happened to have a license to practice before that national patent office.
To somehow “sell” the notion of “turning on” the EPO, something had to be done to placate the unions representing the workers in those 23 national patent offices who would soon have very little work to do, and something had to be done to placate the registered practitioners in those 23 national patent offices. What was arrived at was EP validation. The idea was that no matter how many jobs got destroyed by “turning on” the EPO, there would in perpetuity be at least some guaranteed flow of work for at least some of the registered practitioners in those 23 countries, and there would be at least some guaranteed flow of government fees to those 23 national patent offices.
This EP validation process would only serve its “placating” goals if things were set up in each of the 23 countries so that not just anybody could hand in the money. To placate the registered practitioners in a particular country, it had to be set up so that the only person who can hand in the validation money in that particular country was a registered practitioner in that particular national patent office.
Layered on top of this great need to protect jobs that might be affected by “turning on” the EPO was that remarkably, at just the same time, it was planned that the PCT would be “turned on”. Yes, the EPO got “turned on” in 1978 and the PCT got “turned on” in that same year of 1978. And the PCT was specifically designed to eliminate the ability of practitioners in particular patent offices to be able to charge professional fees to deliver physical certified copies of priority documents to particular patent offices. That income stream was also threatened.
More than forty years have passed since EPO was “turned on”. During those forty years, there have been particular countries of Europe where, if a patent firm has somehow remained in business for lo these forty years, it has been largely due to the fact that only a registered practitioner in that country can pay this EP validation money to the local national patent office.
What you will find if you methodically click around on the web sites of each of the 23 national patent offices in the EPO geographic area is that even after these more than forty years, many of those offices still require that EP validation money be handed in by a registered practitioner in that country.
Yes there are some national patent offices in the EPO geographic area where anybody can do the EP validation from anywhere in the world, while sitting at home in their pajamas. Those are patent offices where you could, if you wish, hire a registered practitioner to hand in your EP validation money, but if you feel differently, you can bypass the practitioner community in that country and pay the EP validation money yourself.
Why might an EP validation service provider charge a rush fee for last-minute instructions? The reason is that very likely at least some, and maybe all, of the countries in which EP validation is desired for a particular set of instructions are a country where the EP validation money is required to be handed in by a registered practitioner in that particular country. This means that the EP validation service provider has only a short period of time during which to dispatch instructions to patent firms in several distinct countries in Europe. As for each country, a docket must be set to check for an acknowledgment that the patent firm in that country has received the instructions. As for each country, a string of further dockets must be set and cleared, one by one, to check that the patent firm in that country actually said that it carried out the validation, and to check that the patent office in that country actually received the validation money and coughed up the official receipt for the money.
Keep in mind as well that some of the countries where EP validations get carried out are countries that use a currency other than the Euro. So the EP validation service provider also has the burden of carrying out currency conversions into various individual currencies. Not only that, if the EP service provider quotes fixed fees for particular EP validations, the EP service provider takes the risk that a currency exchange rate might shift in an unfavorable direction without warning.
A reader points out to me that in some national patent offices in Europe, the validation process involves not only paying a government fee to the national patent office but also providing a translation of the claims into a tongue specified by that national patent office. Such a validation requires the EP validation service provider to obtain a translation of the claims into that tongue. In cases where the EP validation instructions were provided to the EP validation service provider at the last minute, it will be appreciated that the need for such translations being made on a rush basis can also contribute to the magnitude of the rush fee being charged.
Anyway that is why you have to get your EPO validation instructions (and money) into the hands of your EPO validation service provider well in advance of the due date. And that is why you get charged a rush fee if you don’t.
And that is why there is such a thing as EP validations in the first place. And that is why EP validation services cost as much as they do.
Do you carry out your own EP validations in any of the “pajamas” national patent offices in the EPO area? If so, in which national patent offices do you do this? Please post a comment below.
(Updated to add a mention that the validation process in some national patent offices requires not only paying money but also handing in a translation of the claims into a particular tongue.)