The EPO will conduct additional searches to determine earlier national rights and further determine their prima facie relevance starting September 1, 2022.
The EPO already carries out a search for prior European patent applications, which are filed before, and published after, the filing date of a European patent application in question. Such earlier European patent applications are relevant for novelty in the sense of Art. 54(3) EPC.
As of September 1, 2022, the EPO will further conduct systematic searches to further identify prior national rights and assess their prima facie relevance free of charge.
An earlier national right is a national application filed before, and published after, the filing date of a European patent application in question.
Earlier national rights are not considered prior art in the context of a European substantive examination, but may be invoked in national proceedings to revoke the European patent in the country in which the earlier national right was filed, according to Art. 139(2) EPC. To address an existing earlier national right in a particular country, applicants may file separate sets of claims for said country before the European examination is complete, as stipulated in R. 138 EPC.
The examining division will forward any relevant national rights together with a communication under R. 71(3) EPC informing on the EPO’s intention to grant a European patent.
This newly offered service of the EPO intends to help applicants to make informed decisions when considering applying for a Unitary Patent, which allows only one set of claims for all participating EU Member States.
More details on the additional search may be found under https://www.epo.org/news-events/news/2022/20220725.html.