Validation of European Patents
The ratification of the Validation Agreement by the parliament of Georgia completed the negotiation process between Georgia and the European Patent Office, which was launched in 2012.
The conclusion of the Validation Agreement with the EPO is an important tool for further development of the patent system in Georgia. It will strengthen the industrial property protection and facilitate fulfillment of the commitments under the Association Agreement between the European Union and Georgia and gradual integration of the economy of Georgia into the European market.
Currently, it is possible to obtain a patent for an invention in Georgia in two ways:
- Direct filing of an application with the Georgian IPO
- Through the Patent Cooperation Treaty.
According to the amendments, the Patent Law of Georgia will provide for the third, faster and more cost-effective way of obtaining a patent protection – filing a European patent application and requesting its validation in Georgia.
Entry into force in 2024?
Pursuant to the amendments to Patent Law, applicants will be able to validate European patents granted by the EPO in Georgia (even though Georgia is not a contracting state to the European Patent Convention). European patents validated in Georgia will have the same legal effect as Georgian patents.
Noteworthy is that the Validation Agreement increases the opportunity for Georgia to join the EPO and become a full member of the European patent system, which subsequently will benefit the country to a greater extent.
The specific date of entry into force of the Validation Agreement, will be announced after consultations between the Georgian side and the EPO. It is expected that this date will be 1st of January 2024.
Ratification of the Validation Agreement was followed by the amendments to the Patent Law of Georgia. By introducing these amendments Georgia has fulfilled the requirements which were necessary for entering into force of the abovementioned agreement.
Additionally, the amendments were designed to harmonise the Patent Law of Georgia with the European Patent Convention the legislation of the EU countries and the Patent Law Treaty.
Namely, issues related to patentability criteria and exceptions, the rights of the inventor and the holder of the patent were clarified and put in compliance with international standards set out by the above-mentioned agreements.
A special chapter regulating the Institute of Patent Attorneys was also introduced. After January 1st, 2025, appointing a patent attorney registered at the Georgian IPO will be mandatory for foreign patent applicants who do not have an official address in Georgia.
Currently, registered patent attorneys in Georgia who have passed special exams can practice both patent and trade mark issues. According to the new amendments, specialisation of the attorneys according to the different fields (patents, trade mark and designs etc.) will be introduced. Respectively different requirements per field are set out.
Amendments to the law will be followed by the amendments to the Instruction on Procedures Related with Drafting and Filing Applications for Inventions and Utility Models and Granting a Patent, which will clarify specific procedures before the Georgian IPO.
FICPI’s view and involvement
FICPI is the only organisation exclusively for independent IP attorneys, bringing practitioners from around the world together to connect, share knowledge and grow, through occasions such as the FICPI World Congress, the FICPI Open Forum and regular FICPI webinars. IP attorney members can get involved with FICPI work to promote common solutions and advocacy for private practice through FICPI Commissions and Committees.