Validation, a short guide part II – How to perform validation?

Validation is, to put it simply, an activation of the right of protection for a patent in the territory of a country being a signatory of the European Patent Convention. Once a European patent has been obtained, it should be validated in the countries chosen by the proprietor, so that the invention is protected in those countries.  

In order to validate in Poland a previously obtained European Patent, we have to remember about fulfilling a good number of formal requirements.

1. First of all, to validate a European Patent the proprietor has three months from the date of B1 publication (EPO), which informs that the patent has been granted. This term cannot be extended. Have you missed the deadline? Unfortunately, the chance is gone.

2. The Polish Patent Office, and therefore the Polish language. The next step is to translate the patent into Polish.

3. The next necessary element is the Power of Attorney appointing a patent attorney by whom the matter is handled. It is essential not to miss to indicate the place and date of signature, as well as the position of the authorized signor.

4. Along with the request for a validation that is filed with the Polish Patent Office, we have to additionally file a patent translation on a digital carrier (a CD) or optionally, all the documents may be filed electronically through a dedicated online filing system.

5. The last and very important step is to make all the necessary payments:

– The official fee for publication of the translation must be paid directly to PPO. The sum to be paid depends on the number of pages of the translation. The fee, up to 10 pages, is PLN 90. The fee for every single page above the 10th page is PLN 10.

– Another payment to be made is the fee for filing a Power of Attorney. It is a fiscal fee which is payable the Office of the Capital City of Warsaw – Fiscal Department. It is PLN 17. There should be as many Powers of Attorney as proprietors and as many fiscal fees must be paid. For example, if there are 3 proprietors, there should be 3 Powers of Attorney and respectively 3 fiscal fees of PLN 17 each.

It is essential to note that the Patent Office, at any time and at any stage of the proceedings, may request that some additional documents which are deemed necessary, be filed by the proprietor. Some of those requests may be anticipated as they are a logical consequence of whether or not we have submitted complete documentation.

If all goes smoothly and appropriately, the process of validation lasts about 4 months. However, if this process starts to involve additional correspondence with the Patent Office, the time may be substantially prolonged, thus making validation more complicated, which in turn causes more effort on the part of the proprietor’s representative.



About Olimpia Misztal

Olimpia Misztal is an assistant in Patent Department at Patpol. She supports patent attorneys by taking care of preparation of documentation, applications and letters which are necessary for national, international and European patent applications and validations. She is a graduate of the Faculty of Law and Administration at the Lazarski University in Warsaw.