How to Validate a European Patent in Morocco?

As indicated in our 10 March 2015 brief, the President of the European Patent Office (EPO) and the Moroccan Minister of Industry signed in December 2010 an agreement relating to the validation of European patents. This agreement entered into force on 1 March 2015.

As indicated in our 10 March 2015 brief, the President of the European Patent Office (EPO) and the Moroccan Minister of Industry signed in December 2010 an agreement relating to the validation of European patents. This agreement entered into force on 1 March 2015.

Under the terms of this agreement, any European patent application filed on or after 1 March 2015, either by the direct national route or through a PCT application can be effective in Morocco. 

To do this, the steps to take at the EPO are similar to those that an applicant must take in order for the European patent to be effective in one of the Extension States (currently Montenegro and Bosnia-Herzegovina), namely, within 6 months from the publication of the European search report, pay a validation fee, the amount of which has been fixed at 240 euros.

The validation agreement signed between the President of the European Patent Office and the Moroccan Minister of Industry has not been made public, meaning it is not yet possible to know the precise the conditions under which the European patent will take effect in Morocco, in particular, the steps that must be taken from the grant of the European patent. 

Until the EPO updates and publishes its “National law relating to the EPC” booklet which should incorporate a chapter on Morocco, it is possible to refer to the 3 July 2014 validation agreement signed the between the EPO and Tunisia, the content of which is apparently similar to the one signed with Morocco.

Regarding the important question of the translations needed for the European patent to be effective in Morocco, it would seem that the mere translation of the claims in Arabic or French is necessary. The text of the European patent already including a translation into French of the claims, and any additional translations, must be filed before the Moroccan Office of Industrial and Commercial Property (OMPIC) within a period of three months from the date of publication of the mention of grant of the European patent.

In addition to this requirement concerning the language of the specification of the European patent, and within in the same three-month period, an official fee for registering the European patent must be paid in order for the European patent be fully effective in Morocco, with the same effect as for a National Moroccan patent issued by OMPIC. 

It should be noted that the entry into force of the validation agreement signed between the President of the European Patent Office and the Moroccan Minister of Industry is part of a strengthening process of the Moroccan Industrial Property system. In particular, on 18 December 2014, the law 23-13 was promulgated to supplement and amend the law 17-97 of 18 December 2004.

This new law 23-13 provides new legal provisions in several areas of industrial property:

  1. Improvement of the patent system;
  2. Consolidation of the national trademark system;
  3. Reform of the national industrial designs system;
  4. Strengthening of the enforcement of industrial property rights ;
  5. Modernization of the filing procedure industrial property titles applications.

An important change concerning patents is the transition from a registration system to an examination system, where novelty and inventive step will be now be assessed by an examiner, who will prepare a preliminary research report, to which the applicant must reply to avoid their Moroccan patent application being rejected.

Other changes to note are the 18-month publication of all Moroccan patent applications along with the possible preliminary research report, the opportunity for third parties to file observations within a 2-month period from the publication date of the Moroccan patent application, or the possibility of filing of divisional applications.

At the “Focus  Morocco” conference organised by the EPO on 12 March 2015, these changes in the Moroccan Industrial Property system were presented by the delegates of Morocco as an important step forward for the benefit of all individuals wishing to launch operations in Morocco. In effect, it provides more certainty for patent holders as to the validity of their right, all whilst offering third parties greater visibility of the patent applications being examined by OMPIC.

After bringing the law into compliance to meet the requirements of the TRIPS Agreement in 2004, Morocco has now taken the lead in harmonizing its patent system with existing systems, particularly with a view to be consistent with the PLT (Patent Law Treaty) requirements, which Morocco should soon be joining. 

Morocco therefore becomes the first State to allow the validation of a European patent, but it should soon be joined by the Republic of Moldova and Tunisia for which validation agreements were signed in 2013 and 2014, respectively. 

We will keep you informed of these future changes, and we of course remain at your disposal for further information on this new system of European patent validation. 

Published by

Sylvain Thivillier

Partner
Head of the Munich office