NB: This article was updated on 17h November 2022
A patent application in an EPC member state that has been filed before but only published after the effective date of a European patent application is not full prior art for assessing the novelty and inventiveness of the European patent application but may affect the validity of a national validation of the granted European patent in the EPC member state in which the national patent has been filed. To avoid this the EPO has long allowed applicants to pursue a different/narrower set of claims for the state concerned whilst maintaining a set of claims pursuing broader protection in all other states.
Unitary Patent protection can only be obtained on the basis of a granted European patent if the claims are the same for all of the states that would be covered by the Unitary Patent. It is accepted that Unitary Patent protection is not available for applications comprising claims that have been amended with regard to only one UPC member state to deal with a prior national rights.
Conversely, if Unitary Patent protection is obtained in the absence of knowledge of the existence of a prior national right, then a worst-case scenario could lead to the dis-allowance of Unitary Patent protection. As there are presently no provisions in the respective national patent laws of UPC member states that would allow conversion of the Unitary Patent into traditional national validations once the normal validation deadline has passed, such dis-allowance of Unitary Patent protection would have the inevitable consequence of whole sale loss of protection in UPC member states.
To reduce the likelihood of late discovery of prior national rights, the EPO has started on 1 September 2022 to cover national prior rights in a top-up search. The results of the top-up search will be communicated to patent applications together with the communication under Rule 71(3) EPC. Applicants are well advised to address any national prior rights uncovered in this top-up search before patent grant, given the above-discussed risk.
It is moreover advisable to keep the risk posed by national prior rights in mind more generally, even in the absence of any such rights being cited by the EPO. In particular in situation where the advantages provided by a Unitary Patent are not certain to outweigh those provided by “traditional” national validation of a granted European patent, the risk of late discovery of a national prior right may favour a national validation strategy.