EPO announces top-up searches for earlier national rights

The EPO has announced that from 1 September 2022 it will carry out systematic top-up searches to find earlier national rights, assess their prima facie relevance and identify any prima facie relevant national rights in an intention-to-grant communication (Rule 71(3) EPC). This service will be free of charge, and will be carried out for all applications for which the examiner triggered a Rule 71(3) EPC communication on or after 1 September 2022. 

The provision of information concerning earlier national rights will help patentees make informed decisions about how to validate their granted European patents

What is an earlier national right? 

An earlier national right is a national patent/application, in an EPC Contracting State, that was filed before and published after the filing date of the European patent application in question (“earlier-filed, later published”). Earlier national rights are not considered prior art for the purpose of European substantive examination, but can be invoked in national proceedings to revoke the European patent in the relevant country (i.e. in the country in which the earlier national right was filed). 

An earlier national right has the same prior art effect with respect to the European patent as it would with respect to a national patent in that country (Art. 139(2) EPC). For example, consider a European patent validated as a bundle of national patents in the UK, France and Germany via the classic validation route. An earlier-filed, later-published UK patent application is novelty only prior art for the UK part of the granted European patent, but not for the DE or FR part of the same granted European patent.

Why is the top-up search important?

Even though the existence of earlier national rights is not a bar to grant of a European patent, the EPO notes the presence of an earlier national right identified at the search stage in its search report. The applicant has the opportunity to submit different sets of claims for different EPC Contracting States (Rule 138 EPC). 

The benefit of the new top-up search is that it will identify publications that were not available at the time the initial search was carried out.  
The results of the top up search will be particularly interesting to those considering making a request for unitary effect. A fundamental principle underlying the Unitary Patent (UP) is that it has unitary character. This means it has just one set of claims for all states in which it has effect, which can only be enforced/revoked/limited centrally through the Unified Patents Court. 
A consequence is that, where an earlier national right exists but is not identified until after grant, a UP could be centrally revoked/limited on the basis of that earlier national right. By contrast, had the same European patent been validated in UP-participating states via the traditional route (i.e. by validating in individual states to obtain a bundle of national patents), the earlier national right could only have caused revocation/limitation in the country in which it was filed. 

The provision of information concerning earlier national rights will help patentees make informed decisions about how to validate their granted European patents.

What practical steps should be taken?

The results of the top-up search will be provided with the intention-to-grant communication issued under Rule 71(3) EPC. 
An applicant considering making a request for unitary effect should ensure that any earlier national right from UP participating states cited in the top-up search is reviewed to establish the relevance of the earlier national right (i.e. would it be novelty-destroying in the relevant country?). 

Where there is a relevant earlier national right in one of the UP participating states, the possible scope of protection will differ between the state in which the earlier national right was filed (the “earlier national right state”) and the remaining UP participating states (the “other UP states”). 

In these circumstances applicants have the option to obtain protection in UP-participating states by:

•    validating via the classical validation route
•    amending the UP claims to re-establish validity in view of the national right  

If the European patent is to be validated in at least some UP-participating states using the classic validation route, it is possible to make use of the fact that the European patent can contain different claims for different designated states (Rule 138 EPC). 

By contrast, if the European patent is validated in the UP-participating states by requesting unitary effect (based on an amended claim set) the scope of protection in the “other UP states” is limited relative to the scope that would otherwise have been available. 

Applicants remain ultimately responsible 

The EPO has made it clear that the service is not a requirement under the EPC but an extra quality measure provided by the EPO free of charge to users. Ultimately, applicants remain responsible for identifying and making in-depth assessments of the existence and relevance of earlier national rights.