EPO extends its reach in Eastern Europe via a validation agreement with Georgia. Will this trend continue?

This October, the Eastern European state of Georgia became the fifth state to sign a validation agreement with the European Patent Office, thus allowing European patents and patent applications to take legal effect there.

Here, we examine the t’s and c’s behind the validation agreement, how patent protection in Georgia could benefit businesses looking to build a footprint in Eastern Europe, and whether other states are likely to follow suit.

On 31 October, António Campinos, president of the European Patent Office (EPO), and Genadi Arveladze, Georgia’s Deputy Minister of Economy and Sustainable Development, met in Munich to sign a validation agreement that, once in force, will allow European patent applications and patents to take legal effect in the Eastern European state.

Marking the latest milestone in the European Union’s efforts to build political association and economic integration with Georgia, the agreement also signifies an expansion in the protection a European patent will afford.

What is a validation agreement?

Existing validation agreements are already in force with four non-EU member states: Morocco, Cambodia, the Republic of Moldova, and Tunisia. Georgia’s will join them in 2024.

This essentially means that applicants can validate European patent applications and EPO-granted patents in these states, as well as those contracted to the European Patent Convention, without having to undertake further examination at that state’s national intellectual property (IP) office.

Validated patents also have the same legal effects and rights as national patents, although they are subject to certain requirements, depending on the nuances of the validation agreement.

What does Georgia’s validation agreement include?

Once in force, Georgia’s validation agreement will allow European patent applications to avoid the traditional routes for securing patent protection in Georgia. These included filing directly with Georgia’s national IP centre, SAKPATENTI, or filing through the Patent Cooperation Treaty (PCT) system. Instead, a third, simpler, and more cost-effective option will be available via the EPO – one that, conveniently, will also provide protection in the 44 nations covered by a European patent.

There are, however, certain requirements that patents will need to meet prior to validation in Georgia. These are stipulated in the validation agreement and include:

• Translation: It will be mandatory for applicants to provide Georgian translations of the patent specification, abstract, claims, descriptions, and drawings within three months of the patent’s grant being published.
• Registration fees: Applicants will need to pay US$200 to cover publication of the patent specification and the patent certificate.
• Patent attorney: Applicants that do not have an official address in Georgia will need to appoint a patent attorney that is registered with SAKPATENTI.

It is also important to note that Georgia’s national legislation will apply for any legal action concerning a validated European patent, except where such action concerns oppositions, central revocations, or limitations before the EPO.

Why is Georgia’s validation agreement significant?

Since signing an Association Agreement in June 2014, both Georgia and the EU have stepped up efforts to build economic cooperation.

The EU is now Georgia’s main trading partner, accounting for 21% of total trade in 2021. The implementation of the Deep and Comprehensive Free Trade Area (DCFTA), which has opened the EU market to Georgian businesses and permitted visa-free travel to the Schengen area for Georgian citizens since 2017, has also increased bilateral trade by 15%.

In terms of innovation, Georgia arguably has room for patentable ideas to take root. The EU, which is its largest donor, provided €340m in investment between 2021 and 2024, with further investment planned for numerous projects to build Georgia’s resilience and innovation, including electric and data cables through the Black Sea. This, in turn, has helped the country rise from 74th in the Global Innovation Index in 2022, to 65th this year.

Outside of Georgia, however, this validation agreement also provides food for thought on the likelihood of other non-EU states signing such agreements. Indeed, Genadi Lebanidze, chairman of SAKPATENTI, has already stated that the country’s national IP centre will be “in a position to fully benefit from the most advanced European best practices through a comprehensive technical co-operation framework with the EPO”, while Deputy Minister Arveladze has said that this will “contribute to further anchoring the national economy into the European market.”

It is therefore entirely possible that other states hoping to both benefit from a recognised framework for patent protection and open doors to the EU market may sit up and take notice of the possible advantages of validation agreements.

What does this mean for European patents?

For European patent applications, Georgia’s validation agreement provides a cost-effective opportunity to expand the breadth of protection afforded through a single application.

It is also worth considering the commercial opportunities protection in Georgia may offer, however, both nationally and within Eastern Europe.

With Georgia having presented its application for EU membership in March 2022, it is possible that patents based on innovations will provide the means to support Georgia in meeting its objectives under the Association Agreement and may provide, not just protection for these innovations, but an emerging market for them too.