EP Validation in Tunisia

From 1 December 2017, it is possible to ask for validation of European patents in Tunisia.

Until end of November 2017, patent protection in Tunisia could only be obtained as a national patent filed directly or by national phase entry from a PCT application. However, from 1 December 2017, in application of the Agreement on validation of European patents in Tunisia (signed since 3 July 2014), at the applicant’s request, it will be possible to designate Tunisia as a “validation state” in European patent applications. After grant of the European patent and validation in Tunisia, it will confer essentially the same protection as patents granted by the EPO for the now 38 member states of the European Patent Organisation.

With the addition of Tunisia as a validation state, in total 43 countries will be within the reach of applicants for a European patent (including the current 38 contracting member states, 2 non-contracting extension states and 2 validation states).

In practice, the procedure before the European Patent Office (EPO) for Validation of European patents in Tunisia is similar to that which applies for extension states (currently Bosnia-Herzegovina and Montenegro) and other validation states (Morocco and Moldova). European patent applications will automatically be deemed to include a request for validation in Tunisia, the request being deemed withdrawn only if the applicant does not pay the requisite official fee to the EPO in time. The time limit to pay the official fee is the same as that for payment of the designation, extension and other validation fees, i.e. within six months from the publication date of the European search report or, where applicable, within the period for performing the acts required for ex-PCT entry into the European phase. The same two-month grace period, for late payment with a 50 per cent surcharge, will apply. The official fee, at EUR 180, is slightly lower than the corresponding fees for validation in Morocco (EUR 240) and Moldova (EUR 200).

Once the European patent has been granted, and subject to completion of Tunisian validation requirements (e.g. filing a patent translation into English or French or Arabic language, and paying a local fee, at the Tunisian IP Office), the European patent will have the same legal effects in Tunisia as a Tunisian national patent.
The new provisions regarding validation of European patents in Tunisia apply only to European applications (filed directly or as a European phase entry from a PCT application) having a filing date on or after 1 December 2017.

Local regulations in connection with Validation of European patents in Tunisia

Within three (3) months from the date on which the mention of grant of the European patent has been published, the patent holder shall provide the Institute with the text or an Arabic or English or French translation of the European patent specification, as issued and pays the prescribed registration fee (to be confirmed). (Article 5 (2) of the Agreement on Validation of European patents in Tunisia).

If, following to an opposition or a limitation request made before the EPO, the European patent is maintained in an amended form, the holder shall provide the Institute, within three months, from the date on which the decision to maintain the European patent, as amended or limited, is published, with the text or a translation of the patent, as amended or limited in Arabic, English or French and pays the prescribed registration fee. (Article 5 (3) of the Agreement).

If the text or the translation referred to in paragraphs 2 or 3 is not produced in due time or if the registration fee is not paid in due time, the validated European patent shall be deemed to have no effect from the outset. The text or the translation may be validly produced within an additional period of three (3) months from the expiry of the applicable time limits referred to in paragraphs 2 and 3, subject to payment, within this additional period, of a surcharge of an equal amount 100% of the registration fee (Article 5 (6) of the Agreement).

At any time, the applicant of a European patent or the holder of a validated European patent may submit to the Institute a reviewed translation accompanied by the prescribed registration fee. The reviewed translation of the published European patent application claims and the European patent reviewed translation as granted, have no legal effect until they have been re-opened to the public by the Institute (Article 6 (3) of the Agreement on Validation of European patents in Tunisia).

Validated European patent annuities fee shall be paid to the Institute for the years following the year in which the mention of the grant of the European patent was published. If annuities fee under a validated European patent are due within the following two months from the European grant date published in the European Patent Bulletin, such annuities fee shall be deemed to have been validly paid subject to payment within the period specified by the institute. No surcharge is levied under Tunisian patent law (Article 9 (1, 2) of the Agreement on Validation of European patents in Tunisia).

Filing requirments in connection with Validation of European patents in Tunisia

Power of Attorney : No Power of Attorney is required.

Translations : The following translations are required:

• Title : English or French or Arabic
• Abstract : English or French or Arabic
• Claims : English or French or Arabic
• Description : English or French or Arabic
• Drawings : English or French or Arabic

Filing Deadline

• The translation shall be filed within three (3) months following the European Grant Date.
• Grace period: three (3) months (with an extra charge of 100% of registration fee).

Should you require any information or help in connection with validation of European patents in Tunisia, please do not hesitate to contact us.

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