The launch of the EP patents validation system in Georgia will enable EPO applicants to extend their EP patents to Georgia through a simple procedure. Specifically, paying the prescribed validation fee and submitting a properly prepared Georgian translation of the full application suffice to finalize the validation procedure and obtain exclusive rights in Georgia.
The new 2023 amendments to the Georgian Patent Law have implemented the rules for validating EP patents in Georgia. The key aspects of the procedure are as follows:
- After entering into force the Validation Agreement of EP patents in Georgia, it is deemed that a request for validation in Georgia is made for all applications which enter national phase in EPO.
- Validation requests may be withdrawn anytime. Validation requests are deemed withdrawn if a validation fee for Georgia is not paid in time or if the EPO issues refusal to the granting of the EP patent.
- the Georgian PTO has an obligation to publish the request for validation on all applications after receiving notification from the EPO about payment of respective validation fees, but not before the period of 18 months after the filing date of the EP application or, if priority is claimed, after the date of earliest priority.
- Validation fees shall be paid to EPO within 6 months after publishing the information in European Patent Bulletin on the European search report, or within the period determined for such payment for PCT applications entering national phase in the EPO. If an applicant fails to pay the validation fee within the indicated deadline, late payment with an additional 50% of fee is possible within 2 months after the expiration of initial payment term.
- If an applicant wishes to exercise provisional/conditional rights on the EP patent application for which validation in Georgia is claimed, he is authorized to submit a translation of the claims certified by a registered patent attorney of Georgia to the Georgian PTO at any time and pay the publication fee. Provisional rights commence from the date of publication of the translation of the claims by the Georgian PTO.
- An Applicant shall submit a full translation of the EP patent (specifications, claims, abstract, drawings) certified by a registered patent attorney of Georgia to the Georgian PTO within 3 months from publication by the EPO of information on granting EP patent and shall pay the fee for publication of the Georgian translation of the EP patent.
- Georgian PTO checks only conformity of the translation of the claims with the authentic text of the EP patent and in case of any discrepancies, issues an Office action. The translation should be corrected within the deadline determined in the Office action upon payment of a respective publication fee.
- In case of restriction of claims and/or any amendment in the EP patent by the EPO, a respective translation shall be submitted to the Georgian PTO and corresponding publication fees shall be paid.
- Late payment of publication fees are possible together with additional 100% late payment fee within 3 months after expiration of the deadline.
Respective amendments have been entered into the Resolution of the Government of Georgia on Approval of Fees for Patenting and Registration of IP objects, and validation fees related of EP patents have been determined:
Given the recent developments, including the EU’s decision to grant candidate status to Georgia, which once again confirms the prospect of Georgia becoming an EU member in the foreseeable future, it is clear that the significance of protecting IP in Georgia for international businesses is increasing dramatically.
At the same time, Georgia already has free trade agreements with the EU, EFTA, China, Ukraine, Turkey, Azerbaijan, Armenia, Kazakhstan, Kyrgyzstan, Tajikistan, Uzbekistan, and Turkmenistan, making it an important transit hub and crossroads between Europe and Asia and an attractive country for doing business, as goods produced in Georgia enjoy various tax and other benefits in the aforementioned countries. However, these circumstances also increase the risks of patent infringement, as infringers’ access to these different markets is also simplified if they produce goods in Georgia.
Based on the above, the launch of the EP patents validation system is the right and timely decision to simplify IP protection for rights holders and ensure credible and reliable patent protection. Finally, the validation of European Patents in Georgia is a step forward towards membership of the EPO, which is the ultimate desired destination for the country.