European Patent Validation – Now in Morocco


For the first time in EPO (European Patent Organization) history, a non-European state will begin validating European patents. Morocco has entered into an agreement with the European Patent Organization that went into effect on March 1st, 2015 that will make it possible to validate European patents in Morocco that will be subject to Moroccan patent law.

Under this new agreement, European patents and applications (once validated for Morocco) will offer the same IP protection in Morocco as patents filed via the PCT or Paris Convention route. This includes PCT applications containing a designation for a European patent. However, validation in Morocco it will not be available for PCT applications filed prior to March 1st, nor for any European patents resulting from such applications.

The agreement was announced by Benoît Battistelli, the President of the European Patent Office (EPO), along with Moulay Hafid Elalamy, the Moroccan Minister of Industry, Trade, Investment and the Digital Economy, back in January of this year.

EPO President Battistelli was quoted as saying, “This is a historic step for the European patent system, and it brings to 41 the number of countries for which patent protection can be obtained simultaneously with a single European patent application… Morocco’s strategic vision with regard to building up a national patent system that is firmly anchored in the international system”.

In terms of patent translation, in the past a French or Arabic translation was required of the specification, claims and abstract—but not anymore. The only translation that will need to be submitted to the OMPIC is a French or Arabic translation of the granted claims. Since a French translation of the claims must already be filed as part of the EPO grant procedure, no further translations will be required for Morocco.

Morocco joining the European patent system is an exciting development, and other non-European countries are expected to follow in its path. Both Moldova and Tunisia have signed agreements with the EPO and are expected to begin validating European patents in mid to late 2015.

Cambodia – fourth validation state for EP applications


From 1 March 2018, Cambodia will join Morocco, the Republic of Moldova, and Tunisia as an available validation state for European patent applications.

Validation in Cambodia will be possible for all European applications filed after that date.

What is a validation state?

A validation state is a non-contracting state to the European Patent Convention (EPC) that has entered into a validation agreement with the European Patent Office (EPO). The first validation agreement (with Moldova) took effect in 2015.

A validation agreement enables the validation of European patent applications in a validation state. After validation, the resulting patent will confer in the validation state essentially the same protection as patents granted by the EPO in contracting states to the EPC. As is evident, validation agreements are not limited to European countries.

How can I choose to validate a European patent application in a validation state?

The EPO validation system is largely the same as the designation system for contracting states to the EPC, although separate validation fees are payable if an applicant wishes to pursue the option of validation in any of the validation states. The period for payment of the validation fee is the same as the period for payment of the designation fee for contracting states to the EPC. Following grant, the relevant national validation requirements will need to be met.

Limitations: pharmaceutical products

As the validation system is based on the relevant national law modeled on the EPC, rather than on direct application of the EPC, it is subject to the national validation rules of the country concerned.

It is important to note that, under the Law on Patents in force in Cambodia, pharmaceutical products are excluded from patent protection. Cambodia benefits from the World Trade Organisation waiver allowing Least Developed Countries (LDCs) to avoid granting and enforcing IP rights on pharmaceutical products until 2033. This waiver would also apply to European patents providing protection for pharmaceutical products, for which validation is sought in Cambodia.

Applicants can, however, benefit under Article 70.8 TRIPS from what is known as a ‘mailbox system’. Under the ‘mailbox system’, Cambodian legislation authorizes the filing of patent applications for pharmaceutical products, despite the fact that they are excluded from patent protection. These national applications will not be examined as to their patentability until the end of the transitional period. Following that period, protection may be granted for the remainder of the patent term, calculated from the filing date of the application.

London Agreement


The Agreement on the application of Article 65 EPC – the London Agreement – is an optional agreement aiming at reducing the costs relating to the translation of European patents. It is the fruit of the longstanding efforts to provide for a cost attractive post-grant translation regime, which began in the 1990s in the framework of the European Patent Organisation and gained momentum at the Intergovernmental Conference held in Paris on 24 and 25 June 1999 (see OJ EPO 1999, 545). It was concluded at the Intergovernmental Conference held in the London on 17 October 2000 (see OJ EPO 2001, 549).

The EPC contracting states which have ratified or acceded to the Agreement undertake to waive, entirely or largely, the requirement for translations of European patents. Under Article 1(1), (2) and (3) of the London Agreement,

  • a state which has an official language in common with one of the official languages of the EPO shall dispense entirely with the translation requirements provided for in Article 65(1) EPC;
  • a state which does not have an official language in common with one of the official languages of the EPO shall dispense with the translation requirements provided for in Article 65(1) EPC if the European patent has been granted in the official language of the EPO prescribed by that State, or translated into that language and supplied under the conditions provided for in Article 65(1) EPC. These states may however require that a translation of the claims into one of their official languages be supplied.

Download Agreement dated 17 October 2000 on the application of Article 65 EPC.

Social Share Buttons and Icons powered by Ultimatelysocial