From 01 September 2022, the EPO will initiate a systematic supplementary search to find "earlier national rights" and assess their relevance. This new service will be provided free of charge to all applicants.
Unlike European applications and PCT applications, national applications are referred to as earlier national rights and are not considered prior art in the substantive examination of patentability in Europe (Article 54 EPC). These earlier national rights can only be invoked as grounds for revocation in national procedures after the European patent has been granted (Article 139(2) EPC). Therefore, the applicant may decide to file a separate set of Claim for an earlier national right before substantive examination is completed (Rule 138 EPC).
Applicants may be interested in this option in the context of a unitary patent, as only European patents granted under the same set of Claim in all participating EU member states are eligible for unitary patent protection (Article 3(1) Regulation (EU) 1257/2012).
After a successful trial period, the EPO will offer applicants an additional service to help them decide whether to file separate Claim. The EPO Examining Unit will look for earlier national rights, assess their apparent relevance, and communicate any references to national rights that may be relevant (Rule(3) EPC) in the grant notice. On this basis, the applicant is then able to conduct an in-depth assessment of any previously cited national rights.
