Unitary patent and national prior rights – wider geographical limitation of protection

The unitary effect and the Unified Patent Court (UPC) system comes with a wider aspect as to validity against national prior rights (national applications with an earlier priority date but a publication after the priority date of the European patent (EP)).

Such national prior rights are not relevant as to the grant of an EP but can lead to national validity issues (e.g. a German prior right might restrict validity for the German validation). For national validations, this can be addressed by either directly filing an adapted claim set for the respective country (e.g. Germany) or amend the claim set during a national procedure (nullity or restriction).

In case the respective country is a UPC member state (e.g. Germany) and the patentee selects unitary effect, no national limitation is available any longer. Thus, to limit the Unitary Patent (UP) against the national (e.g. German) prior right, the full UP needs to be limited with effect for all UP countries. Therefore, additional care should be taken while considering a UP when national prior rights are involved.

In a helpful move to assist applicants in this regard, the EPO is now providing, as a non-binding service, additional information on national prior rights with the Rule 71(3) EPC ‘notice of allowance’ communication. In summary, the EPO will now perform ‘top-up’ searches whilst gearing up to issue a notice of allowance, toward identifying any national prior rights, while providing an indication as to their prima facie relevance. Any researched relevant national prior rights will then be flagged to the applicant, as a courtesy, with the notice of allowance communication. This search will be performed at no additional cost (and without any need to specifically request it) and will be carried out for all EP applications where the notice of allowance communication was ‘triggered’ on or after 1 September 2022.

Thus, this additional top-up search effectively provides an additional layer of quality control. It will remain the applicant’s responsibility to perform a careful assessment of any national prior rights, and take any action considered necessary. The need to act will be particularly important where the UP and the UPC are concerned.