Unitary effect and European validations in view of national prior rights

The EPO top-up search

European patent portfolio holders are well aware of the meaning behind receiving a communication under Rule 71(3) of the European Patent Convention (EPC) – also known as a communication of intention to grant a European Patent. This notice plays a pivotal role in determining the geographical extent of protection among the 39 contracting states of the Convention.

As an annex to this notification from the European Patent Office (EPO) comes the so-called "Form 2906" – sometimes overlooked despite its critical importance. Yet, it can reveal undetected national prior rights documents that could potentially invalidate the subsequently granted patent if essential measures are not taken in time. For this reason, the EPO has implemented a new search system, benefiting applicants from September 1, 2022. The EPO now automatically broadens the scope of the supplementary search conducted during the grant phase to highlight national patent applications and patents from EPO contracting states. This search, conducted at no cost to the applicant, aims to provide guidance regarding the possibility of the granted patent to benefit from unitary effect. The implications of validating said patent in certain countries could also be affected, carrying significant consequences.

We detail below how certain additional verifications at the same juncture can prove crucial in avoiding problematic outcomes.

National prior rights as post-grant risks

So-called national prior rights are national patent applications from states participating in the EPC, having a priority date preceding that of the considered European Patent but published afterward.

Article 139(2) of the EPC currently governs the principle of national prior rights, stating that their effects are determined for each jurisdiction according to its own national legislative provisions.

Assuming that a relevant, i.e., novelty-destroying, national prior right is identified during the EPO top-up search, the validity of the corresponding national part of a granted European Patent may be negatively affected in case of a revocation action before a competent national court. This is despite the fact that national prior rights do not impact the grant of a European Patent by the EPO as they are not part of the state of the art according to Article 54(2) and (3) EPC, being published after the effective date of the subject matter of the considered European Patent. Hence, for the EPO, the existence of a national prior right does not prevent the grant of a European Patent.

However, if seeking to validate in the country corresponding to this national prior right, a patent holder should take appropriate measures. For instance, a national prior right in France can oppose the French portion of a European Patent under Article L611-11 of the Intellectual Property Code, 3rd paragraph.

There exist various well-established remedies to mitigate the risk of revocation at the national level in cases where a national prior right is identified during the European grant proceedings. These include:

• File reasoned amendments or corrections to the text in response to the intention to grant and Form 2906, as provided by Rule 71(6) EPC. If the Examining Division gives its consent, the EPO shall issue a new communication informing the applicant of its intention to grant a European Patent including these amendments.
• File a further request for amendments after approving the text communicated by the Examining Division, as provided by Rule 137(3) EPC. The Examining Division may admit further amendments at its own discretion, with the presence of a national prior right having the potential to be a valid reason.
• Provide the EPO with a set of specific claims for the state where the national prior right has been filed in a procedure corresponding to post-grant limitation. After a grant by the EPO, it is also possible to proceed with a national limitation of the European part validated in that country.

These options play a fundamental role because, as explained below, things prove to be equally challenging when a European Patent with unitary effect is sought.

Impact on the Unitary Patent route

Since June 1, 2023, the entry into force of the UPC Agreement (UPCA) has allowed applicants to request unitary effect following the grant of a patent. There are numerous strategic elements involved in this choice, such as costs and annuities, territories of interest and even the strength of the patent.

A widely recognized consequence of Article 65(2) UPCA is that a single national prior right identified in a participating state of the UPC could serve as a basis for the centralized revocation of a patent granted with unitary effect.

However, the mere existence of national prior rights does not preclude a request for unitary effect for a European Patent as such. For instance, a known exception arises when the relevant national prior right originates from an EPC contracting state that is not a participant in the UPC, such as the United Kingdom or Spain. In this particular case, a national prior right does not necessarily imply foregoing a request for unitary effect since the aforementioned legal basis does not apply.

Otherwise, i.e., should the national prior right come from a UPC participating state, there is a risk of partial or even total nullity being declared for all participating states of the UPC. Additionally, Article 3(1) of Regulation (EU) No 1257/2012 stipulates that: "A European patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect." Therefore, the extent to which the validity of a European Patent with unitary effect can be affected is particularly severe and should not be neglected.

To alleviate these risks, patentees may:

• Choose the unitary route while filing a limitation of the claims to the EPO for the entire unitary block, thereby limiting protection in all participating countries simultaneously, or
• Choose not to request unitary effect; instead, validating the European Patent nationally so that the claims would only have to be limited in the specific country of the national prior right.

Though sometimes overlooked, it is important to remember that the second option is not devoid of risks either.

Impact on validations in EPC member states

As discussed above, it is not possible to provide a different set of claims beforehand for the state in question if one wishes to have unitary effect. Only a blanket limitation would be possible, needlessly reducing the scope compared to a classically validated European Patent.

However, even to the extent that unitary effect is not desired, it remains essential to verify the content of the Form 2906 annex to the communication of intention to grant a European Patent. Although the Form does not indicate any national prior right in the majority of instances, this scenario is likely to become less and less frequent over time.

A recent example illustrates the consequences of various types of national prior rights identified at the grant stage. For European Patent application 17159256.1, the EPO register indicated on February 21, 2023, that an international patent application and an Italian national application were potential national prior rights.

The applicant and their representative should carefully review the cited national prior rights in view of defining a possible strategy with respect to requesting unitary effect and / or validating the European Patent in any selection of the 39 member states of the EPC. Such a review should firstly verify the admissibility of the cited documents as actual national prior rights under Article 139 EPC and, secondly, compare the relevancy of the disclosures of these same documents with respect to the scope of protection as defined by the granted claims of the European Patent.

In the event that the cited documents are both admissible and relevant and the applicant wishes to have rights in countries such as France, Italy or Belgium despite the dangers indicated by Form 2906, one way of reducing the risks of an invalidity or nullity action filed by a third party in these countries would be to start, as soon as possible after the European validations, a voluntary limitation procedure before the national courts to retroactively limit the scope of the granted claims. For the mentioned countries, provisions are set out in the fourth paragraph of Article L613-24 of the French "Code de la propriété intellectuelle," Article 79 of the Italian "Codice della proprietà industriale" and Article XI.56 of the Belgian "Code de droit économique." These provide the national part of a European Patent to be limited at the request of the proprietor, leading to a partial renunciation of the scope of the granted protection.

At any rate, in the event of an identified national prior right from an EPC contracting state, it is essential to examine it thoroughly before deciding to request unitary effect or initiating the necessary actions for validation. And even in cases where unitary effect is not desired, it remains crucial to check the content of all annexes of the notification of intention of grant to ensure that the rights of the European Patent persist smoothly throughout its lifespan.