25 July 2022
From 1 September 2022 the EPO will carry out systematic top-up searches to find "earlier national rights" and assess their prima facie relevance. This new enhanced service will be available free of charge to all applicants.
Regular top-up searches for European and PCT applications as prior art under Articles 54(3) and 153(5) EPC at the end of examination constitute an extra quality check in the EPO grant procedure. The EPO will complement this quality assurance with a new service for prior art which the EPO does not have to search for and assess under the EPC.
Unlike European and PCT applications, national applications referred to as earlier national rights are not considered prior art for the purpose of a European substantive examination for patentability (Article 54 EPC). These earlier national rights can only be invoked in national proceedings as grounds for revocation after the European patent has been granted (Article 139(2) EPC). Therefore, applicants can decide to file a separate set of claims for a country of an earlier national right before examination is complete (Rule 138 EPC).
This option may be of interest to applicants in the context of a Unitary Patent since only European patents granted with the same set of claims for all participating EU Member States are eligible for Unitary Patent protection (see Article 3(1) of Regulation (EU) No. 1257/2012).
Building on a successful pilot, the EPO will offer applicants an extra service that helps with their decision whether to file separate sets of claims. The examining division will search for earlier national rights, assess their prima facie relevance and communicate the citations of any prima facie relevant national rights in an intention-to-grant communication (Rule 71(3) EPC). On that basis, applicants will be able to make an in-depth assessment of any cited earlier national right.
The new service will be reflected in the regular update of the Guidelines scheduled for publication in spring 2023.