Is the EPO carrying out a search covering national earlier rights?

Since 1 September 2022, the EPO carries out systematic top-up searches to find earlier national rights in all EPC contracting states and assess their prima facie relevance. The new service is available free of charge and does not require a request from the applicant.

EPO examiners carry out a search for any additional conflicting European applications falling within the area defined by Article 54(3) EPC unless this was already covered by the European search report. In addition to retrieving Article 54(3) documents which were not available at the time of the initial search, the EPO's top-up search takes into consideration, inter alia, potentially relevant prior art cited by other patent offices on applications belonging to the same patent family as the application under examination at the EPO, and therefore needs to be performed for any file at the start and end of examination (see Guidelines for Examination in the EPO, C-IV, 7.1).

Under Article 139(2) EPC, a national patent application and a national patent in a contracting state have with regard to a European patent designating that contracting state the same prior right effect as if the European patent were a national patent. This refers to national applications of one or more states designated in the European application of which the filing dates are prior to the filing or priority date of the European application and which were published as national applications or patents on or after that date.

Earlier national rights are not included in the state of the art for the purposes of the EPO examination for patentability (Article 54 EPC). However, under Article 139(2) EPC, after the European patent has been granted earlier national rights can be invoked as a ground for revocation in national proceedings. Therefore, applicants can file separate sets of claims for countries in which earlier national rights are found (Rule 138 EPC).

A European patent with unitary effect ("Unitary Patent") is a European patent that is granted by the EPO under the rules and procedures of the EPC and given, at the patent proprietor's request, unitary effect for the territory of those EU member states that are participating in the enhanced co-operation in the creation of Unitary Patent protection and have ratified the Agreement on a Unified Patent Court (UPCA). To be eligible for the registration of unitary effect, the European patent must have been granted with the same set of claims in respect of all the 25 participating member states (see Article 3(1) of Regulation (EU) No. 1257/2012).

Since 1 September 2022, the EPO assists applicants in their decisions whether to file separate sets of claims by providing them with non-binding information, in a communication under Rule 71(3) EPC, about earlier national rights that were found to be prima facie relevant. Since the service is not a requirement under the EPC but an extra quality measure provided by the EPO free of charge to users, applicants are reminded of their responsibility to make in-depth assessments of earlier national rights and the need to file separate sets of claims (see Guidelines for Examination in the EPO, G-IV, 6).

For further information, see also the FAQ "What are the requirements for obtaining a European patent with unitary effect (Unitary Patent)?"