On 15 January 2024, the International Agreement on validation of European patents between the Government of Georgia and the European Patent Office (the Validation Agreement) entered into force. The European Patent Office examines European patent applications and grants European patents respectively. The Validation Agreement ensures a fast and cheap way of obtaining a patent for an invention in Georgia by requesting validation of the European patent application in Georgia.
A patent is a document issued by the state that confirms exclusive rights to the invention, a technical solution in any field of industry. According to the Patent Law of Georgia, the registration of a patent is only possible if an invention is novel as well as industrially applicable and has an inventive step (i.e. its creation is not obvious for the specialist based on prior knowledge). An application for the registration of a patent should be submitted before the National Intellectual Property Center of Georgia (the Georgian IP Center) which is responsible for registering intellectual property rights in Georgia. Notably, the registration of a patent enables the patentholder to benefit from their invention on the territory of Georgia and prohibits other persons to use it without the patentholder’s permission.
The novelty and effect of the Validation Agreement is that, effective from 15 January 2024, the European patents registered by the European Patent Office will also benefit from such a scope of protection in Georgia after their validation by the Georgian IP Center. In this regard, the collaboration between the Georgian IP Center and the European Patent Office should be carried out in legal as well as administrative matters to ensure the effectiveness of the validation system. Furthermore, a joint committee should be established to discuss all matters arising from the Validation Agreement. The joint committee shall consist of representatives of the European Patent Office and the Georgian IP Center.
One of the fundamental approaches of the Validation Agreement is that the European patent application and the European patent validated in Georgia should be granted the same legal force and protection as the Georgian patent application and the Georgian patent. Accordingly, the European Patent Office will not grant a European patent if it is similar to a national patent that is already registered in Georgia. Therefore, this process will not only result in time and cost-efficiency for applicants, but also create a possibility to ensure legal certainty of these applications and patents from the perspective of both the European Patent Office and the Georgian IP Center.
The validation process includes several stages to be followed. Firstly, according to the Validation Agreement, a request for the validation of European patents in Georgia should be submitted to the European Patent Office. This can be done by choosing Georgia as a validating country while submitting an application of the registration of a European patent before the European Patent Office. It is worth mentioning that the only European patent applications submitted from 15 January 2024 before the European Patent Office are subject to validation in Georgia.
As for validation fees, they must be paid to the European Patent Office within six months of the date of publication of the European search report in the European Patent Bulletin. The European Patent Office should then transfer any information on European patent applications and related proceedings to the Georgian IP Center.
At the next stage of the validation process, if a European patent is granted, the patent owner then has three months to submit a complete and precise Georgian translation of the European patent to the Georgian IP Center and pay the fees established for publication. Notably, where the text of the formula of the invention contains references to drawings, such drawings should also be attached to the Georgian translation.
Once a European patent is validated in Georgia, it will be in force during the term of the European patent itself, provided applicable fees are paid for the maintenance of validation.
The Validation Agreement dated 31 October 2019 is valid for a period of five years and will continue for further five-year periods, unless the Government of Georgia or the European Patent Office express their objection in writing no later than six months before the end of the relevant five-year period. In case of termination of the Validation Agreement, the provisions regarding the request for validating the European patent will still be applicable for: (i) Pending European patent applications, if the requests for their validation are submitted before the termination date; and (ii) European patents that are granted based on such pending European patent applications.
By executing the Validation Agreement Georgia, becomes the 5th country with the validation status and the 45th country where patent protection is possible on the basis of a European patent application. As we look ahead, this will also attract foreign investments in Georgia, as well as contribute to Georgia’s accession to the European Patent Convention and the process of Georgia becoming a member state of the European Union.
