EP Validation Services – do they really save costs?
European Patents have to be validated after grant in up to 38 member states of the EPO – each of which has different requirements regarding translations and fees. Therefore, several validation providers – often run by patent translators - have been established, which offer the service of European Patent validation at competitive prices in comparison with patent law firms. The service covers the translation and payment of validation fees. However, to ensure low costs, the validation providers do not normally appoint patent attorneys as representatives before the various national patent offices. Therefore, notices regarding late payment of annuity fees are often not received by the patent owner. Further, the payment of annuities is usually not covered by the validation provider, which may lead to confusion and loss of rights.
Müller Schupfner & Partner recently handled a case in which a small firm had instructed a validation provider to handle the validation in several countries, among them Germany, in order to avoid the higher costs of its patent law firm. However, the patent owner was not aware that an annuity had become due directly after grant of the European Patent, which meant that, at the time the patent was validated, the annuity fees had to be paid in each contracting state. The validation provider did not alert the patent owner to this fact, and accordingly the patent lapsed in all countries in which it had just been validated. Müller Schupfner & Partner was asked to request re-instatement, which was fortunately granted. However, the overall costs were much higher than if the patent owner had originally entrusted the EP validation to a patent law firm. Patent law firms may have higher charges than EP validation providers, but they provide additional services, such as carefully checking for any annuity fees due, as well as the appointment of an attorney who will receive late payment notices from the Patent Office.