National Prior Rights and the UPC

The Unitary Patent System introduces changes in how national patent prior rights are treated in Europe.

Background

Earlier-dated patent applications which are published are full prior art under Art. 54(2) EPC and treated the same as any other published disclosure in that both novelty and inventive step must be established over them. Whether these earlier publications derive from the Applicant or from a third party is irrelevant.

Earlier-dated but later published European patent applications are treated under the EPC (Art. 54(3) EPC) as prior art in respect of novelty only.

The pre-UPC situation

An earlier-dated but later published national prior right, for example, a national UK or German patent, does not qualify as prior art under the EPC and the EPO will not issue objections over it.

So, for example, if a European patent application (irrespective of ownership) was filed on 1 January 2021 and published on 6 July 2022, it will be novelty-only prior art against a later European patent application filed on 1 February 2022 and, as such, will be citable by the EPO against the later application.

If a German national patent application was filed on 1 January 2021 and published on 6 July 2022, it will not qualify under the EPC. However, once the later European patent application is granted, it becomes a patent in each country in which protection is sought. As such, it becomes equivalent to a national patent in each country (Art. 139(2) EPC). That means that the earlier German national right becomes prior art against the Germany part of the European patent only and it may therefore be subject to national revocation proceedings.

If an Applicant anticipates that national rights are likely to impact on national validity of their European patent, they can request that the EPO grant a separate, narrower, set of claims in the state in question.

UPC changes

The Unified Patent Court Agreement (Art. 65(2) UPCA) provides that the Unified Patent Court may revoke a patent in its entirety based on a prior national right.

Because a European patent application with unitary effect lives or dies as a whole (Art 3.2 UPR), there seems little doubt that European patents for which unitary effect has been requested, will be vulnerable to revocation in all UPC-participating states over a national prior right in a UPC-participating state.

We would therefore advise that, if a patent proprietor finds themselves in that position, they do not request unitary effect but rather validate the patent “classically” in both UPC-participating and non-UPC-participating states.

Whist this approach would significantly reduce the risk of revocation by the UPC, I believe that the risk is not eliminated and would therefore recommend that the patent also be opted-out from the jurisdiction of the UPC.

Additional information

The EPO has started listing, as a courtesy, as part of its notice of allowance (Rule 71(3) EPC Communication), a list of prior national rights of which it is aware. If any are listed on one of your cases or you are otherwise aware of them, I recommend that you have a discussion with your European Attorney before making your validation decisions.

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