A free top-up search is now provided to applicants by the European Patent Office (EPO) to identify any earlier national rights in individual European Patent Convention (EPC) contracting states. The discovery of earlier national rights by this new service has the potential to change how applicants decide to validate their patents after grant - i.e. whether to obtain unitary patent protection or to validate in individual European patent contracting states via the classic validation route. This procedure builds on the top-up search provision already in place whereby EPO Examiners, before grant of the patent, search for any additional European prior art documents that were not discovered in the initial search performed. This service is being carried out for all applications in respect of which the examiner has triggered an intention to grant communication (Rule 71(3) EPC) on or after 1 September 2022.
Prior art and earlier national rights
In order to be patentable, a claimed invention must be both novel (different in some way) and have an inventive step in comparison to the prior art.
Prior art comprises anything that was made available to the public before the filing date of a patent application (or priority date, where priority is claimed). Under European patent law, full prior art encompasses anything (document, oral disclosure or otherwise) available in any jurisdiction prior to the filing date of a European patent application (Art. 54(2) EPC). This type of prior art can be used to attack a European (EP) patent application on grounds of both a lack of both novelty and a lack of inventive step during examination of the European patent application. So called “earlier filed, later published” prior art documents (Art. 54(3) EPC) are another type of prior art which are specifically European patents/applications (or European parts of internationally filed patents/applications). As can be inferred from the name, these documents are filed prior to the priority date of the European patent application in question, but remain unpublished on the priority date of said EP patent application. This type of prior art can only be used for novelty, and not inventive step, attacks on any such later EP patent application under examination.
Earlier national rights are a further type of prior art and are akin to the European “earlier filed, later published” prior art mentioned above in that they are filed prior to the EP patent application in question but remain unpublished on the priority date of the EP patent application. However, earlier national rights are in respect of individual national patents/applications (e.g. in the United Kingdom, France or Germany - GB, FR or DE) and are not, therefore, EP patents/applications. In contrast to full prior art and European “earlier filed, later published” prior art, earlier national rights are only relevant to patentability in the country in which the earlier national right is published. Furthermore, earlier national rights are not considered during examination of an EP patent. They cannot be used as prior art to attack the novelty or inventive step of a European patent application during examination, or opposition, proceedings at the EPO. However, they can be used to challenge the validity of a European patent following grant. This is when validation – i.e. the conversion of the single EP patent into national patent equivalents across one or more of the EPC contracting states - occurs. This is discussed in more detail in relation to unitary patent protection below.
Effect of earlier national rights on European patent protection
Earlier national rights are not specifically looked for during the initial search of a European patent application, but if found, the applicant is informed by the EPO. Accordingly, during examination, the applicant may limit the claims and amend the description and drawings of an EP patent application in view of any existing earlier national rights that have been discovered (only after the EPO has evaluated such an earlier right, Rule 138 EPC). Therefore, if an earlier national right has been found before grant, an applicant can choose to limit the claims in one or more EPC contracting states and end up with different claim scope across different states. Earlier national rights can also be used against granted European patents whereby they can be invoked in national revocation proceedings, potentially resulting in loss of patent protection in the jurisdiction where the national revocation proceedings occurred.
The new top-up search provided for by the EPO will allow for the discovery of any earlier national rights after the initial search and prior to the grant of the patent. This will enable the applicant to take the necessary steps to amend the claims and description accordingly to avoid any potential revocation actions which could take effect in national jurisdictions.
Effect of earlier national rights on a Unitary patent protection
In order to be eligible for registration as a European patent with unitary effect, the European patent must have been granted with the same set of claims in respect of all 25 participating member states (Article 3(1) of Regulation (EU) No. 1257/2012). A European patent with unitary effect may also only be limited, transferred or revoked, or lapsed, in respect of all the participating member states.
If an earlier national right, depriving a patent of novelty in even one Unitary patent country were to be discovered, a unitary patent could therefore be centrally revoked across all member states. Accordingly, the discovery of earlier national rights through this new top-up search could prompt important considerations regarding the validation of European patents and whether or not to obtain unitary patent protection.
On the one hand, if any earlier national rights were to be discovered by the top-up search, patentees would have an opportunity to limit the claims after receipt of the intention to grant communication, before grant. Therefore, if unitary patent protection was desired, revocation of the whole unitary patent could potentially be avoided owing to the early discovery of such an earlier national right.
On the other hand, patentees may in that case feel more comfortable proceeding by the classic approach of validating their European patent in individual EPC contracting states. This is because revocation in one state would only cause revocation of part of the EP patent in that respective validation state. Protection in all other individually validated states would, therefore, still be maintained.
What does this mean for the patentee?
In summary, this new top-up search appears to be a beneficial complement to the top-up searches normally performed by the EPO and it will provide applicants with another chance to identify any earlier national rights that could have serious implications for the protection obtained across different states. It is especially important because of the potential effect of earlier national rights on Unitary patents. The EPO have, however, made it clear that this service is purely an extra quality measure which is not required to be performed under the EPC. It is therefore stressed that the applicant is still very much responsible for identifying any earlier national rights that could affect the fate of their patent.
Regarding the practical steps to take on moving forward, patentees should review in detail any earlier national rights identified in the new top-up search which will be communicated to the applicant in the intention to grant communication prior to grant. If these earlier national rights appear to be a risk in terms of novelty, then the applicant can choose either to limit the claims prior to grant and obtain unitary patent protection or to maintain the claims without amendment and obtain national protection in each desired state through the classic validation route.
Ultimately this decision will depend on the jurisdiction of any earlier national rights discovered and the importance of obtaining patent protection in that jurisdiction.
If you have any questions about this topic please do not hesitate to contact us.
Author: Melissa Walden