On 1 September 2022, the EPO introduced an extra “quality check” prior to granting a European patent (EP).
The extra quality check constitutes a top-up search for “earlier national rights”. Any earlier national rights that the EPO considers to be prima facie relevant are indicated in the intention-to-grant communication (under Rule 71(3) EPC). The EPO provides this service free of charge.
The significance of any earlier national rights is explained in detail below. In summary, they do not count as prior art during the examination of the pending EP application and, if traditional national validations are performed at grant, they would only count as prior art in the specific EP validation county of the earlier national right. However, if a UP is taken and the country of the earlier national right is covered by the UP, then the earlier national right will count as prior art against the entire UP.
Therefore, this enhanced service may help to inform the decision of whether to take a unitary patent (UP) after the EP is granted or take the traditional approach of validating the EP as a bundle of national rights, on a country-by-country basis.
What is an earlier national right?
In Europe, an earlier national right is a national patent/application in a contracting EPC state, filed before, but published on or after the filing/priority date of an EP application (“earlier filed, later published”). If you are familiar with prior rights under Article 54(3) EPC, then you will see that they are similar in terms of being “earlier filed, later published”, but different in that national prior rights are patent applications filed in respect of a single country (e.g., France) rather than being applications under the EPC.
Earlier national rights are not considered prior art against a pending EP application. Therefore, until 1 September 2022, the EPO did not identify or assess such rights.
However, while earlier national rights do not prevent the grant of a European patent, they are relevant in national proceedings in the relevant country after validation (Article 139(2) EPC). For example, an earlier national right in France may be relevant in proceedings in the French Courts concerning the validity of the French patent arising from validation of an EP.
EPO’s historic approach to earlier national rights
Historically, the existence of an earlier national right could only pose a danger to the European patent’s validity in the country of the earlier national right. In recognition of this, the EPO allows applicants to file a separate set of claims for a country of an earlier national right before during examination (Rule 138 EPC). However, amending the claims in this way was entirely voluntary. The EPO’s examination procedure did not identify earlier national rights, and so use of this procedure relied on the applicant becoming aware of a relevant earlier national right by some other means.
EPO’s new approach to earlier national rights and what that means for applicants
The EPO now takes a proactive approach of searching for and assessing the prima facie relevance of earlier national rights, at the end of examination of every European patent application.
This new practice is mainly motivated by the upcoming availability of the UP, which will cover 24 “UP Member States”. Importantly, earlier national rights can invalidate a UP (see Article 65(2) of the UPC Agreement, in conjunction with Article 139(2) EPC). Moreover, the UP must have the same set of claims in all UP Member States, because of its unitary nature (Article 3(1) of Regulation (EU) No. 1257/2012).
Therefore, an earlier national right in a UP Member State could lead to the central revocation of a UP in all 24 UP Member States, or narrowing its claims across all UP states.
Thus, it is important for applicants to be aware of any relevant earlier national rights when deciding how to validate their granted EP. Making conventional validations allows the claims to be voluntary narrowed in a single UP Member State, whereas taking a UP does not.
Practical tips and examples
While the extra quality check should assist applicants, the EPO has made it clear that the responsibility for assessing earlier national rights still rests with the applicants. Applicants may find the following tips helpful.
If any prima facie relevant earlier national rights are identified by the EPO in the intention-to-grant communication under Rule 71(3) EPC, the applicant should immediately review these earlier national rights and consider their relevance. If the applicant does not deem the earlier national rights to be novelty-destroying, then the applicant can freely choose to request a UP, or to proceed via the traditional validation route, without making any claim amendments.
Conversely, if the earlier national right seems to be novelty-destroying, then the applicant should amend the claims to achieve novelty over the national right in the country of the earlier national right. If the earlier national right is from a UP Member State, and a UP is desired, then the applicant must amend the claims to achieve novelty over the national right in all UP Member States to safeguard the validity of the UP. Alternatively, the applicant could amend the claims only for the country of the earlier national right and proceed with traditional national validations without claim amendments in all other desired states.
Any amendments would need to be requested at the time of responding to the communication under Rule 71(3) EPC.
Example 1: Relevant national right in a UP Member State
Germany is a UP Member state. If the EPO identifies an earlier national right in Germany, the applicant should assess its relevance.
If the earlier German patent/application appears to fall inside the EP claims, the applicant could decide to amend the claims for Germany only, to establish novelty over the earlier German patent/application. National validations of the unamended claims can be used in other states of interest, e.g. France, UK and Italy.
Example 2: Relevant national right in a non-UP Member State
The UK is not a UP Member state. If the EPO identifies an earlier national right in the UK, the applicant should assess its relevance.
If the earlier UK patent/application appears to fall inside the EP claims, the applicant should amend the claims for the UK only, to establish novelty over the earlier UK patent/application. The applicant can use unamended claims for a UP to cover other states of interest, e.g. Germany, France and Italy.
How can Mewburn Ellis help applicants?
With experience and expertise in European patent prosecution, we can advise applicants on all aspects of European patent procedures. We can also review any earlier national rights identified by the EPO, assess their relevance to the European patent application and to help the applicant decide on the most appropriate validation strategy.
About the authors
This blog was co-authored by Eliot Ward and Darena Slavova.
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Eliot Ward
Eliot handles a diverse client portfolio spanning the life sciences sector and a growing practice in the cross-over space between physics and biology. A skilled patent prosecutor, Eliot also has wide experience of drafting patent applications on breakthrough technologies, as well as leading offensive and defensive opposition proceedings post-grant. Eliot is also experienced in handling Freedom to Operate projects and in performing due diligence, which have led to the successful completion of high value transactions and investment rounds.
Email: eliot.ward@mewburn.com
