23/09/2022
A European patent application can be granted by the EPO even if there are “earlier national rights” filed before the patent application in one or more designated states, provided those earlier national rights were published after the priority date of the European patent application. Nevertheless, after grant, these national rights can be used to challenge the validity of national validations of the European patent in those states. These national rights do not affect the validity of the patents in the other states where such earlier national rights do not exist. However, since a Unitary Patent will be a single right covering multiple states, if there is an earlier national right in any one of the participating states that would invalidate the patent, this national right would invalidate the unitary patent. Therefore, the protection would be lost across all of the states covered by the unitary patent.
To try and identify earlier national rights that would invalidate a unitary patent, the EPO are now carrying out free top up searches to find relevant earlier national rights published since their initial search. This will allow patent owners to instead opt for traditional national validations where such publications exist.
For traditional national validations, it is possible to file amended claims for the particular national validation invalidated by the earlier national right. This enables the patent to be amended to be valid over the novelty destroying earlier national right in that specific jurisdiction, whilst maintaining the broader claims in the remaining validations of the European patent.
However, it is not as simple for unitary patents. Only European patents granted with the same set of claims across all EU member states in which the unitary patent would have effect are eligible for unitary patent protection. Therefore, if before grant the applicant is aware of any earlier national rights, they can choose whether to validate nationally, with narrower claims in one jurisdiction, or they can choose to amend the claims to ensure novelty of the Unitary Patent over the earlier national right.
The top up search will be provided by the EPO with the intention-to-grant communication issued under Rule 71(3) EPC. This will inform the applicant of any earlier national rights which were not available at the time of the initial EPO search. Based on the results of this search, the applicant can decide whether to validate nationally or request unitary effect.
The EPO will, as part of the search, assess the prima facie relevance of any identified national rights, which is a service they are not required to provide under the EPC. Therefore the search is intended to provide the applicant with the opportunity to make an in depth assessment of any cited rights, but cannot be relied upon to find all relevant prior art, and it is therefore still the applicant’s responsibility to find any earlier national rights.
If you have any questions about this or other topics related to the introduction of the Unitary Patent system, please get in contact with one of our dedicated UP/UPC team.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
