< Back to latest news & events


Why the EPO’s top-up search for earlier national rights matters for the UP and UPC

January 2023

Before unitary effect can be registered by the EPO, an applicant must first obtain a European patent via the EPO as it does in the current way. In order to be eligible for registration as a Unitary Patent (“UP”), the European patent must have been granted with the same set of claims in respect of all the 25 participating Member States. This condition must be met irrespective of whether all these states will in fact be covered by the UP. This means that (i) withdrawing the designation of any of the 25 participating Member States rules out obtaining a UP and (ii) having a different set of claims for any of the participating Member States, would also prevent the EPO from registering a UP.

Earlier national rights (i.e. patent documents from the EPC contracting states that would potentially present a “novelty only” patentability problem) are not included in the state of the art for the purposes of the EPO’s examination for patentability (Article 54(3) EPC). This refers to national applications of which the filing dates are prior to the filing or priority date of the European application and which were published as national applications or patents on or after that date. However, under Article 139(2) EPC, after the European patent has been granted, earlier national rights can be invoked as a ground for revocation in national proceedings.

From 1 September 2022, the EPO has been carrying out systematic top-up searches to find such earlier national rights – this is usually reported as part of the EPO’s R71(3) communication (notice of intention to grant). The EPO already carries out a top-up search for European rights at the end of examination.

When it opens, the UPC may revoke a UP, either entirely or partly (Article 65 UPCA), only on the grounds referred to in Articles 138(1) and 139(2) of the EPC. As such, an earlier national right could become prior art against a UP before the UPC.

To avoid these earlier national rights, applicants can file separate sets of claims for countries in which earlier national rights are found (Rule 138 EPC). However, doing so would rule out a UP.

Applicants may therefore need to consider the finding of a national prior right carefully, as it will play into the decision on their validation strategy and whether a UP is the right approach.

This article was prepared by HGF Partners & Patent Attorneys Andy Camenisch and Dr Jennifer Uno

Latest updates

Event - 28th June 2023

IAM Live: Trade Secrets Strategy Europe 2023

HGF are gold sponsors of IAM Live: Trade Secrets Strategy Europe 2023 on the 28th of June at Butchers’ Hall, London. The rapidly growing importance of trade secrets is throwing …

Event details

Exam Success!

HGF are delighted to announce success for many of our colleagues in the recent exams on becoming qualified attorneys and would like to congratulate them on this fantastic achievement. Martyn …

Read article

In2ScienceUK continues to promote diversity and inclusion in STEM and IP with its award winning programme

HGF are proud sponsors of In2ScienceUK, a charity that gives young people from low-income backgrounds the opportunity to gain essential insights into science, technology, engineering, and mathematics (STEM) careers with …

Read article

Spotting innovation in digital health – and can you patent it?

Intellectual Property (IP) can add significant value to your business, providing a competitive edge over the market, as well as demonstrating sound business planning to help secure investment. There are …

Read article