According to article 64 of the European Patent Convention (EPC), a European Patent shall confer its proprietor the same rights as would be conferred by a national patent granted in that State, from the date on which the mention of its grant is published in the European Patent Bulletin.
However, provided that the official languages of the European Patent Office (EPO) are English, French and German (article 14 of the EPC) and that there are several Contracting States of the EPC whose official language is none of those (the complete list of Contracting States can be checked here), article 65 EPC provides that any Contracting State may prescribe (under its national legislation) that the proprietor of the patent shall supply to its central industrial property office a translation of the patent as granted in order to avoid been deemed to be void in such Contracting State.
This is what is normally called validation of the European patent. It is worthless to go through a full grant process before the EPO if the proprietor fails to validate its patent in the Contracting States where protection is desired.
Specifically, article 65(1) EPC states the following:
Any Contracting State may, if the European patent as granted, amended or limited by the European Patent Office is not drawn up in one of its official languages, prescribe that the proprietor of the patent shall supply to its central industrial property office a translation of the patent as granted, amended or limited in one of its official languages at his option or, where that State has prescribed the use of one specific official language, in that language. The period for supplying the translation shall end three months after the date on which the mention of the grant, maintenance in amended form or limitation of the European patent is published in the European Patent Bulletin, unless the State concerned prescribes a longer period.
Provided that the official language in Spain (Spanish) is none of the official languages of the EPO, filing a translation, before the Spanish Patent and Trademark Office (Oficina Española de Patentes y Marcas – OEPM) of the European patent as granted is a crucial requirement for conferring the proprietor of the European patent full rights in Spain.
Particularly, article 155(1) of the Spanish Patent Act of July 24th, 2015 (which can be read here, but, obviously, in Spanish), states exactly what the EPC is inviting the Contracting States to prescribe under their national legislations. Specifically, the Spanish Patent Act prescribes the obligation of the European patent proprietor to file a translation into Spanish of the patent as granted, within a deadline of three months from the date on which the mention of the grant was published in the European Patent Bulletin. This means that the Spanish Patent Act sticks to the minimum term declared by article 65(1) of the EPC, despite the possibility that the Spanish legislator had of increasing such term (which did not happen, unfortunately for EP proprietors).
Article 155(2) of the Spanish Patent Act states that, in the event of failure of providing such translation along with the payment of the official fee within such three-month term, the European patent shall be deemed to be void ab initio in Spain. Therefore, filing this translation is a crucial requirement for having rights over such European granted patent in Spain. This deadline is not extendable.
Speaking of official fees, these are not very high, compared to the official fees that the proprietor had paid before the European Patent Office. To the day of uploading this post, the official fee to be paid before the Spanish Patent and Trademark Office for filing the validation of a European granted patent is of 272,79 EUR for the first 22 pages; and 10,97 EUR for each additional page. It is worth noting that no official fees are charged depending on the number of claims, unlike EPO’s practice; which is good news.
Naturally, professional fees and translation fees will vary depending on the extension of the patent and the local firm chosen for the filing. According to article 154(2) of the Spanish Patent Act, the translation must be made by an Official IP Attorney or by a sworn translator, when the proprietor has no registered address in Spain.
Concerning renewals, article 161(1) of the Spanish Patent Act provides that these shall be paid within the same deadlines and under the same conditions (i.e., same official fees) than any other Spanish patent. According to article 86(2) EPC, the obligation to pay renewal fees before EPO shall terminate with the payment of the renewal fee due in respect of the year in which the mention of the grant of the European patent is published in the European Patent Bulletin. This means that further renewals in Spain, if the European patent has been validated in such Contracting State, shall be paid before the Spanish PTO. However, article 141(2) EPC shall be also taken into account: any renewal fees falling due within two months of the publication in the European Patent Bulletin of the mention of the grant of the European patent shall be deemed to have been validly paid if they are paid within that period. Any additional fee provided for under national law shall not be charged.
Renewals before the Spanish PTO (both for national patents and for European patents validated in Spain) are due every year beforehand (apart from the first two renewals from the patent application, which are included, both in EPO and in the Spanish PTO); payable from the last day of the month of the anniversary of the date of application of the patent, within a deadline of three months from that date. Renewals after such term of three months can be paid within an additional term of six months, under the payment of a surcharge on official fees. Thus, nine months from the due date seems to be a more than reasonable term for the proprietor to preserve its file.
This means that, e.g., if a European patent was filed before the EPO on January 20th, 2016; granted by the EPO on June 15th, 2019; and validated in Spain on August 25th, 2019 (within the three-month deadline for validating), 5th renewal would be payable before the Spanish PTO from January 31st, 2020 (last day of the month of the anniversary of the date of application of the European patent), to April 30th, 2020 (three months from such date). In case of failure of payment, the proprietor would have an additional six-month deadline (until October 30th, 2020) for paying the renewal, with a surcharge on official fees. 1st and 2nd renewals were included in the European patent application; and 3rd and 4th renewals were paid (in 2018 and 2019, respectively) before the EPO. Next year would be the same, but the official fee may increase (as they normally get higher along with the life of the patent).
If you think we might be of help for validating a European patent in Spain, do not hesitate to contact us. Check out some of our patent services in Spain and Europe here.