Designation, Extension and Validation States for European Patent Applications
For European patent applications filed since 2009, all available EPC member states are designated by payment of one designation fee.
The EPO has a number of agreements with other countries. Under these agreements, the European patent application can be optionally “extended” to those countries (where available) through payment of an additional fee.
The EPC member states and additional countries available depend on the filing date of the application, or filing date of the PCT application for regional phase applications.
For European regional phase applications, the designation fee must (usually) be paid by the deadline for entry into the European regional phase. That is 31 months from the earliest priority date.
For European patent applications filed directly with the EPO, and for European divisional applications, the designation fee must be paid within 6 months of publication of the European search report.
As of June 2012, there are 38 EPC member states. These are:
|Albania (AL)||Italy (IT)|
|Austria (AT)||Liechtenstein (LI)|
|Belgium (BE)||Lithuania (LT)|
|Bulgaria (BG)||Luxembourg (LU)|
|Switzerland (CH)||Latvia (LV)|
|Cyprus (CY)||Monaco (MC)|
|Czech Republic (CZ)||Former Yugoslav Republic of Macedonia (MK)|
|Germany (DE)||Malta (MT)|
|Denmark (DK)||Netherlands (NL)|
|Estonia (EE)||Norway (NO)|
|Spain (ES)||Poland (PL)|
|Finland (FI)||Portugal (PT)|
|France (FR)||Romania (RO)|
|United Kingdom (GB)||Serbia (RS)|
|Greece (GR)||Sweden (SE)|
|Croatia (HR)||Slovenia (SI)|
|Hungary (HU)||Slovakia (SK)|
|Ireland (IE)||San Marino (SM)|
|Iceland (IS)||Turkey (TR)|
A European patent application can be extended to one or both of the two extension states. To do this, the extension fee for each selected state must be paid. The deadline for paying each extension fee is the same as the deadline for paying the designation fee.
Historically, more extension states were available. The number has decreased as extension states have become member states, which are covered by the single designation fee. For divisional applications having an older filing date, more than two extension states may be available.
The EPO now has a number of agreements with countries called “Validation Agreements”. Those countries are available as validation states for applications filed on or after the relevant date. Validation fees work in the same way as extension fees.
To extend a European patent application to a validation state, the validation fee for that state must be paid. The deadline for paying each validation fee is the same as the deadline for paying the designation fee.
If the extension or validation fee for a country is paid, when the European patent is granted, the patent owner can choose to validate their patent in that country by filing any necessary translations and paying any necessary fees. The process is similar to obtaining a patent in member states such as Spain or Italy via the EPO.
The deadline for paying any and all extension and validation fees is the same date as the designation fee. You should therefore tell us which, if any, extension and/or validation states are wanted when the designation fee is instructed.
We do not pay extension and validation fees unless instructed to do so.
If the deadline is missed, it is possible to pay extension and validations fees within a grace period, at 50% surcharge.
The grace period is short.
If the designation was paid in time, the grace period for paying extension and validation fees with surcharge within two months of the due date. The EPO does not inform us of this grace period.
If the designation fee was not paid in time, the EPO will issue a loss of rights notice for the non-payment of the designation fee. The loss of rights notice sets a period of two months from notification for paying the designation fee under further processing. Any extension and validation fees may be paid (with surcharge) within the further processing period.
Countries that were previously extension states but are now member states are:
|Albania (AL)||Former Yugoslav Republic of Macedonia (MK)|
|Croatia (HR)||Romania (RO)|
|Lithuania (LT)||Serbia (RS)|
|Latvia (LV)||Slovenia (SI)|
This information is simplified and should not be taken as a definitive statement of law or practice.