Systematic, final search for older national rights by the EPO

Further quality improvement of unitary patents

According to Art. 54(3) EPC, the content of post-published European patent applications also belongs to the state of the art, but not corresponding national rights.
However, the situation is different after patent grant and validation in the national states. According to Art. 139(2) EPC, older post-published national rights can be asserted as grounds for invalidity in national proceedings after the grant of the European patent. Therefore, patent applicants may file a separate set of claims for a country where an earlier national right exists (Rule 138 EPC).

To enable patent applicants to make a more informed decision on filing separate sets of claims in the future, the EPO is offering a new service. 

As of September 1, 2022, the EPO will conduct systematic final searches free of charge to identify prior national rights and assess their prima facie relevance. The advantage for patent applicants is that on this basis, it will be possible to assess whether there are risks regarding post-published prior art in individual contracting states. Especially regarding unitary patents and their resulting vulnerability, this search qualitatively enhances unitary patents.

Information on unitary patents

What are unitary patents, and what are the advantages of unitary effect?

Unitary patents provide inventors with uniform protection in the participating EU member states. This means that for all participating states, the scope of rights under the unitary patent is the same for all participating member states. Compared to European patents, a unitary patent eliminates the need for national validation procedures, which can usually be very complex and associated with high costs.

What are the requirements for a unitary patent?

In the first step, a European patent must first be obtained under the EPC. Only then can the unitary effect, i.e., the unitary patent, be applied for in relation to the EPO.

A prerequisite for registration as a unitary patent by the EPO is the grant of the same patent claims in all participating member states. After the grant of the European patent, the patentee must file a written request for "unitary effect" within one month after publication of the grant notice in the European Patent Bulletin, so that a unitary patent can be granted. 

How can we at Richardt Patentanwälte assist you with the issue of unitary patents?

Our law firm advises you after reviewing the search results of the final search. We check whether a unitary patent is possible for your patent or whether, alternatively, the classical validation with nationally different sets of claims is recommended. 

For a unitary patent, only European patents granted with the same set of claims for all participating EU member states are eligible for unitary patent protection (see Article 3 (1) of Regulation (EU) No. 1257/2012). In this respect, the additional search and analysis in the individual case provides a further basis for deciding for or against the unitary patent. The additional search of the EPO and the advice from us based on it is particularly important for you if you are considering a unitary patent in the future.

Contact us for further information:

Phone: +49 (0)611 / 341568-0
Telefax: +49 (0)611 / 341568-11
E-Mail: Send mail

Author: Dr. Michael Schmid