Beginning from September 1, 2022, the EPO will systematically look for "prior national rights" and evaluate their apparent relevance. All candidates will have free access to this new, improved service.
The EPO award procedure includes regular top-up searches for European and PCT applications as prior art under Articles 54(3) and 153(5) EPC at the conclusion of assessment as an additional quality check. With a new service for previous art that the EPO does not have to search for and evaluate under the EPC, the EPO will supplement this quality assurance.
National applications referred to as earlier national rights are not regarded as prior art for the purposes of a European substantive assessment for patentability, in contrast to European and PCT applications.
Only after the European patent has been awarded may these prior national rights be used in national proceedings as grounds for revocation (Article 139(2) EPC). Therefore, before the test is finished, candidates may choose to submit a different set of claims for a country with an earlier national right (Rule 138 EPC).
Since only European patents awarded with the identical set of claims for all participating EU Member States are eligible for Unitary Patent protection, this alternative would be of relevance to applicants in the context of a Unitary Patent (see Article 3(1) of Regulation (EU) No. 1257/2012).
The EPO will give applicants an additional service to assist them decide whether to submit different sets of claims, building on a successful pilot programme.
In an intention-to-grant communication, the examining division will conduct a search for earlier national rights, evaluate their seeming relevance, and provide the citations of any apparent relevant national rights (Rule 71(3) EPC). The applicants will then be allowed to evaluate any earlier national right that has been cited in-depth.
The regularly scheduled update of the Guidelines, which is slated for release in spring 2023, will take into account the new service.
Comments