[Guest post] Georgia becomes 5th validating state to the EPO

On 31 October 2019, a significant milestone was achieved by Georgia when it signed the Agreement on Validation of European Patents with the EPO. This moment marked the beginning of a promising new chapter in Georgia’s journey towards aligning with the European patent system.

(Big) Kat in Tbilisi

The Validation Agreement promises to bolster the protection of intellectual property rights within the industrial sector, thus safeguarding and promoting innovation and technological progress in the country. Moreover, this agreement plays a role in ensuring the successful fulfilment of commitments outlined in the Association Agreement between the European Union and Georgia, also serving as a driver for the gradual integration of Georgia’s economy into the European market.

As of now, there are two traditional routes to obtain patent protection for an invention in Georgia. The first option involves filing an application directly with the National Intellectual Property Center of Georgia (Sakpatenti). The second one, as you might expect, is through the PCT (Patent Cooperation Treaty) system. However, a third option will become available once the Validation Agreement enters into force. The latter, obviously, will offer a simpler, more convenient and cost-effective means of obtaining patent protection through the European Patent Office (EPO).

Since the establishment of the EPO, numerous countries have become signatories to the treaty, including all EU member states. As of November 2023, the EPO features 39 member countries, with Montenegro being the most recent addition, following a significant pause on extension since 2010 when Albania and Serbia joined.

In addition to its member countries, the EPO also operates a patent validation system. This involves signing of Validating Agreements with non-member countries, creating an opportunity to extend the protection of European patents to those nations. Under these agreements, European patents are validated in the respective validating state without undergoing further examination at the national IP office. Formalities are kept at a minimum level, and prescribed additional fees must be paid. The crucial point is that validated patents have the same legal effect as national patents, conferring the same rights, as if they were granted by the respective national IP offices.

As of now, the EPO has validation agreements in force with Morocco, Cambodia, the Republic of Moldova, and Tunisia, and as mentioned above, with the Republic of Georgia it is currently pending.

The Validating Agreement with Georgia shares some similarities with previously concluded agreements, but it’s important to note the following:

• Translation Requirement: It is mandatory to provide a translation of the patent specification, including the abstract, claims, description, and drawings, into Georgian within three months from the date on which the mention of the grant of the European patent has been published;
• Fees: Registering a Validated European Patent costs 200 USD. This fee includes the publication of the translated patent specification and the issuance of a patent certificate for up to 30 pages of the patent specification. Additional fees may also be applicable, which you can review in detail here;
• Patent Attorney Requirement: Foreign patent applicants without an official address in Georgia must appoint a patent attorney registered at the National Intellectual Property Centre of Georgia;
• Application of National Legislation: Any legal action concerning a validated European patent, except for proceedings related to opposition, central revocation, or limitation before the EPO, shall be governed by Georgian legislation. You can find the relevant Georgian legislation on patents here for reference.

Following the signature of the Validation Agreement, Georgia undertook substantial efforts, including collaboration with EPO experts to draft necessary amendments. In 2021, the drafting of the legislative changes was completed, which was followed by formal procedures. Initially, the package of amendments was approved by the Government of Georgia and subsequently presented to the Parliament for legislative hearings. In May 2023, the Parliament of Georgia enacted the respective amendments, and afterwards, the Validating Agreement was ratified.

At this point, Georgia has fulfilled all the requirements outlined in the Agreement. The only remaining detail is determining the date of entry into force, which is expected to be January 1, 2024. This means that the Georgian IP Office will likely receive the first request on the validation of European patent approximately 18 months after this date.

It’s also worth noting the potential impact of the Validation Agreement with the EPO, for that reason, I compared aggregated patent applications filed before the Georgian (you’ll find the statistical data here, in annual reports) and Moldavian (you’ll find the statistical data here, in annual reports) IP Offices, which includes local, foreign, and PCT applications from 2016 to 2020. The choice of Moldova as a term of comparison is justified due to its similarities with Georgia, including geographical location in Europe, similar country size and population, and most importantly, the fact that Moldova, as mentioned earlier, already has a Validation Agreement with the EPO in force.

If we examine the data of the patent applications in the graph, we initially observe that Georgian patent applications surpass the number of Moldavian applications, though, both countries have low volume of patent applications. Furthermore, there’s a noticeable declining trend in the number of applications for both countries, with 274 and 155 applications in 2016, decreasing to 215 and 96 in 2020, for Georgia and Moldova respectively.

When it comes to Patent Validation Requests, an intriguing picture emerges. Right after the entry into force of the validation agreement, requests for patent validation experienced a significant surge, with 27 applications in 2016 and a remarkable increase to 695 applications in 2017. Subsequently, the trend has held steady, with the number of applications fluctuating around 1000 annually. This trend serves as a clear indicator of the growing interest in validating patents in Moldova. A similar trend may be expected to apply to Georgia, given the similarities between these two countries. However, it’s worth noting that with the agreement expected to enter into force at the beginning of 2024, Georgia will likely receive its first request in the middle of 2025, which means that we’ll need several more years to evaluate the progress.