Validation of European Patents in Morocco

In a “historic first” European patents can now be validated in a non-European state. From 1st March 2015, Morocco will be a designated “Validation State” of the European Patent Office (EPO) - in effect similar to current extension states Bosnia and Herzegovina and Montenegro. With the agreement between the EPO and the Moroccan Intellectual Property Office (OMPIC) in effect, the number of countries in which it is possible to obtain simultaneous protection with a single European patent application rises to 41. It is expected that similar agreements with Tunisia and Moldova will be brought into effect shortly. There are already early indications that companies providing “green energy” solutions will particularly be looking to extend their protection into Morocco. If you are looking to gain IP protection in Morocco through a European application, here are six facts to bear in mind:

1. Validation is only available to European patents following from applications filed after 1st March 2015.

2. Validation is available upon payment of a validation fee of EUR 240 (compared with an extension fee for extension states of EUR 120) within the set time period.

3. The set time period is six months from the date on which the European patent bulletin mentions the publication of the European search report (or for a Euro-PCT application, 31 months from the date of filing or six months from the date of publication of the international search report - whichever is latest). Validation fees can be paid within a two month grace period after the initial time period expires provided that a surcharge of 50% is also paid within this period.

4. Validation in Morocco is deemed requested for any application filed after 1st March 2015, therefore the applicant will benefit from “provisional protection” in Morocco without any obligation to translate the text. If the validation fee is not paid in due time, the request for validation is deemed withdrawn.

5. Once the European patent is granted, a copy of the claims in either French or Arabic must be filed with the OMPIC. The whole specification does not need to be translated. Claims in English, French, and German are already required for a granted European patent - there should therefore be no extra costs involved with translations.

6. Once validated, the patent will have the same legal effect as a Moroccan patent and will be subject to Moroccan laws. Recent amendments to Moroccan law will apparently confer essentially the same protection as patents granted by the EPO for the current 38 member states. The amendments are currently only available in Arabic - please keep your eyes peeled for our update on the legal effects on a Moroccan patent once the information becomes available.

If you have any questions concerning the above, please get in touch with your usual contact at Swindell & Pearson Ltd or Robert Lambton at [email protected]. Robert is based in the East Midlands, at our head office in Derby.