Insights: EPO introduces systematic top-up search for earlier national rights

As of 1 September 2022, the EPO are providing a new, free of charge, service that involves carrying out a top-up search to find earlier national rights and assess their relevance before a European patent application grants.

What is an earlier national right?

The term “earlier national right” is used specifically to refer to a national patent application (e.g., a German patent application) that was filed before, but published after, the filing date (or priority date, if relevant) of a European patent application.

European patents applications (and international ‘PCT’ applications that have entered Europe) that were filed before, but published after, the filing/priority date of the European application in question are citable against the application in question for novelty only (and not for inventive step).

Unlike European (and PCT) applications, an earlier national right (i.e., the German application) is not considered to be prior art. Therefore, as long as this earlier national right was published after the filing date of the European application in question, a patent can still be granted.

However, the earlier national right can be raised later on in national revocation proceedings of that country (Germany, in this example), once the European patent has granted. The earlier national right doesn’t affect the validity of the European patent in any of the other countries it has been validated in.

The new top up search

During the search stage, the EPO indicates if any earlier national rights have been found. At this stage, some earlier rights may not yet have published and so would not be found in the search.  Currently, at the end of examination, the EPO also do a top up search for applications that constitute earlier rights.

The new top up search service will also be carried out on all European applications for which an allowance communication (Rule 71(3) EPC) has been issued on or after 1 September 2022. The top up search will identify all earlier rights not previously available, i.e. earlier rights including European, PCT and national applications, and assess their prima facie relevance to the European application in question.

The new top up search service is free of charge and does not need to be requested.

Unitary patents

At the time of writing, the arrival of the Unitary Patent and Unified Patent Court (UPC) is highly anticipated. Once in operation, a Unitary Patent (i.e., a European patent with unitary effect) will give rise to a single unitary right which covers multiple EU countries.

In cases where an earlier national right does exist, an applicant may file a different set of claims for that country during examination of the European application before the EPO to avoid national revocation proceedings, i.e., the claims are amended to be novel over the earlier national right.

However, this won’t be the case for Unitary Patents. A Unitary Patent has unitary character, and therefore has only one set of claims. As such, only European patents with the same claims across all participating states will be eligible for Unitary Patent protection.

Moreover, the sole claims set of a Unitary Patent can be challenged at the UPC using an earlier national right from one of participating states. Such an earlier national right could invalidate the entire Unitary Patent, potentially leading to a loss of protection across all states it has effect in, if revoked.  Alternatively, the claims may be limited but must still remain unitary, i.e. a common claims set for all participating states of the Unitary Patent.

Accordingly, the EPO’s new top up search service aims to aid applicants who are considering Unitary Patents.

What do I need to do as an applicant?

The new top up search results will be provided with the allowance communication. If you are considering a Unitary Patent, at this stage you should make sure that any earlier national rights which were filed in a Unitary Patent participating state are reviewed to assess their relevance to the allowed claims. Any earlier national rights not filed in a Unitary Patent participating state (e.g., the United Kingdom) are not of concern.

When reporting the allowance communication, we will indicate if any earlier national rights have been found and, if agreed, review and report on their relevance.

If the earlier national right is novelty destroying, you then have the option to validate via the traditional route and file amended claims in the country of the earlier national right, or amend the allowed Unitary Patent claims so that they are novel over the earlier national right.

As a final note, the EPO have indicated that this new service is not a requirement of the EPC but rather an additional quality measure they are providing. The top up search should not be relied upon to find all earlier national rights. This responsibility still lies with the applicant.