The imminent entry into force[1] of the Agreement on a Unitary Patent Court (UPCA), and the concomitant application[2] of the Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection (Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012), herald a new era for national prior rights. These rights, which are currently governed by the European Patent Convention[3] (EPC), will now have to be studied with the utmost care when considering a request for unitary effect for a European patent.
After a brief historical review (Part I) of the principle associated with these national prior rights, the possible impact of national prior rights on the possibility of requesting unitary effect for a European patent will be discussed (Part II). We will then discuss the risks that may be caused by national prior rights on the validity of a European patent with unitary effect (Part III).
I- Background to the principle in relation to national prior rights
The EPC currently governs the principle3 of national prior rights. According to Article 139(2) EPC, a national patent application and a national patent in a Contracting State shall have with regard to a European patent designating that Contracting State the same prior right effect as if the European patent were a national patent.
Thus, a national patent application (or a national patent) with a priority date prior to that of a European patent, but whose publication date is later than the priority date of that European patent, will not be considered as prior art enforceable under Article 54(3) EPC, but as a national prior right under Article 139(2) EPC. The effects of this national prior right are determined for each State by the relevant national legislative provisions.
If the national patent application is relevant in the above example, the validity of the national part of the European patent, in the State of the national patent application, may be affected in case of a revocation action before a competent national court in the State concerned. On the other hand, again in this example, the national patent application is not enforceable against the national parts of the European patent in Contracting States other than that of the national patent application.
This right therefore represents an exception to the uniformity of European substantive patent law..
In order to anticipate problems with the validity of the national part of the European patent in the State concerned, the EPC has included provisions[4] allowing the applicant / proprietor to adopt a set of claims different from that of the application / patent for the other designated Contracting States.
In practice, if a national prior right is identified, for example in Germany, the applicant can bring this national prior right to the attention of the European Patent Office (EPO), and provide a specific set of claims for that State, with a limited scope. The risks of partial or total invalidity of the German part of the European patent, on the basis of the identified national prior right, thus remain reduced in the event of an action before the competent German court.
This historic principle, introduced into the EPC from the outset, takes on a whole new resonance with the advent of the European patent with unitary effect and the entry into force of the UPCA, as detailed in Parts II and III below.
Until August 2022, at the end of the examination of a European patent application, the EPO did not take any particular steps to identify potential national prior rights, this action remaining the responsibility of the applicant/owner.
However, aware of the new challenges in this area, the EPO has introduced a new search system for the benefit of applicants as of 1er September 2022. The Examining Division is now extending the scope of the supplementary search[5] carried out at the grant stage (results communicated with the Communication under Rule 71(3) EPC), in order to also identify national applications and national patents from Contracting States. This supplementary search remains free of charge for the applicant, and is in addition to the supplementary search which was already in place at this stage of the end of the examination, with the aim of identifying European prior rights (prior art enforceable under Article 54(3) EPC).
By informing the applicant of any national prior rights, the EPO seeks to ensure that the information available to the applicant is complete in order to develop his strategy for validating his future European patent, in particular in order to guide him as best as possible in his choice of whether or not to request for unitary effect.
II- Do national prior rights prevent a request for unitary effect?
The answer to this question is no.
The mere existence of national prior rights does not, as such, preclude a request for unitary effect for a European patent. On the other hand, as indicated in Part I above, knowledge of national prior rights may lead the applicant to consider filing separate sets of claims in different Contracting States. By filing one or more different sets of claims, the applicant exposes himself to the risk of no longer being able to request unitary effect for his European patent, due to non-compliance with certain legal conditions discussed below.
Regulation (EU) No 1257/2012 specifies[6] that a unitary effect can only be registered if the European patent has been granted for all the participating Member States[7], and if the European patent has the same set of claims for all these States. These provisions are also reiterated[8] in the Rules relating to Unitary Patent Protection.
When analysing and applying this double condition, the question arises as to which participating Member States are actually concerned. As a reminder, there are currently 25 participating Member States, corresponding to the 27 States of the European Union with the exception of Spain and Croatia.
A literal interpretation of the double condition listed above leads to the conclusion that the European patent must contain the same set of claims for all 25 participating Member States. However, this first interpretation could legitimately be called into question, since Regulation (EU) No 1257/2012 provides[9] that the unitary effect occurs only in the participating Member States in which the Unitary Patent Court has exclusive jurisdiction in respect of European patents with unitary effect, at the date of registration of that effect.
However, when the UPCA comes into force on 1er June 2023, a priori only 17 of the 25 participating Member States will have ratified this Agreement (also mentioned as contracting Member States[10]), with the result that the Unitary Patent Court will have exclusive jurisdiction, as regards European patents with unitary effect, only in these same 17[11] participating Member States. Consequently, as long as other participating Member States have not ratified this Agreement, the request for unitary effect for a European patent will have territorial scope only in these 17 participating Member States.
Consequently, the double condition under consideration could also reasonably be interpreted as meaning that the European patent must present the same set of claims only for those participating Member States which have ratified the UPCA on the date of registration of the unitary effect, i.e. the 17 aforementioned States. Under such a hypothesis, the option of requesting unitary effect would in no way be prohibited by the existence of one or more distinct sets of claims for the 8[12] other participating Member States.
However, it is the first literal interpretation that seems to have been retained, i.e. that the European patent must present the same set of claims for all 25 participating Member States, whether or not these States have ratified the UPCA.
At least that is what emerges from the Decision of the Select Committee of the Administrative Council of 15 December 2015 adopting the Rules relating to Unitary Patent Protection, since the explanatory remarks[13] in connection with Rule 5 of that Decision, explicitly states:
" unitary effect is registered only where the European patent has been granted with the same set of claims for all the participating member states, irrespective of whether these states have ratified the UPC Agreement or not”.
Some practical consequences of this teaching are described below, in the event that a relevant national prior right is identified, depending on the State concerned by that right:
A- The relevant national prior right concerns one of the 8 participating Member States that have not yet ratified the UPCA, for example Ireland, Hungary or Poland [14]
- a) it is possible, in such circumstances and as before, to withdraw the designation of the State from the relevant national prior right, but in this situation, unitary effect cannot be claimed for the European patent in view of the conclusions drawn above;
- b) it is also possible to file a different set of claims for the State of the relevant national prior right, but here again, unitary effect cannot be requested for the European patent either, again in the light of the conclusions drawn above;
- c) in cases where unitary effect is desired, it is necessary to have a set of claims which is identical for all 25 participating Member States, including the State of the national prior right. Consequently, the proprietor will certainly prefer to retain a single set of claims with the broadest scope, but he will then have to expect that the validity of the national part of the European patent, in that same State, may be challenged on the basis of the national prior right (assuming, of course, that the European patent is also validated, through the "classic" way, in that State, in addition to the request for unitary effect).
B- The relevant national prior right concerns one of the 17 participating Member States that have already ratified the UPCA, for example France or Germany
The practical consequences a) and b) of point A above apply a fortiori for cases where the relevant national prior right relates to one of the 17 participating Member States which have already ratified the UPCA. For these same cases, if unitary effect is desired, either the same distinct set of claims[15] is filed for all 25 participating Member States in order to moderate the relevance of the national prior right, or this reduced scope set of claims is adopted for all the designated States (and not only for the 25 participating Member States, where other States are also designated), or the applicant / proprietor must expect that the validity of the European patent with unitary effect may be challenged before the Unified Patent Court, on the basis of the national prior right (Cf. Part III below).
C- The relevant national prior right concerns a Contracting State which is not a participating Member State, for example the United Kingdom or Spain.
Finally, if the relevant national prior right relates to a Contracting State[16] which is not a participating Member State, the withdrawal of the designation of that State or the provision of a different set of claims for that same State remain possible actions which do not hinder the possibility of subsequently requesting unitary effect for the European patent.
Some of the problems outlined above stem from the fact that when the UPCA comes into force, European patents with unitary effect will not cover all the participating Member States, as some of them will not yet have ratified the Agreement. The missing ratifications will come later, implying the existence of several generations of European patents with unitary effect, with distinct territorial coverage. Nevertheless, it is noted that the territorial coverage of a given generation of unitary-effect European patents will remain the same throughout their term, regardless of subsequent ratifications of the UPCA after the date of registration of unitary effect. In other words, the territorial coverage of unitary-effect European patents will not extend to other participating Member States that ratify the UPCA after the unitary effect has been registered by the EPO, resulting in the future coexistence of unitary-effect European patents of different generations.
This suggests that for the final generation of European patents with unitary effect, which will occur after the final ratification of the UPCA, the system will become clearer, with in particular the merging of cases A and B identified above (even if the situation of Poland remains particularly obscure).
III- Can national prior right affect the validity of a European patent with unitary effect?
The answer to this question is yes.
Above all, the extent to which the validity of a European patent with unitary effect can be affected is particularly severe.
In Part I above, it was recalled that in the event of relevance of a national prior right, in the form of a national patent application or a national patent with a priority date prior to the priority date of the European patent, and a publication date subsequent to the priority date of the European patent, the validity of the national part of the European patent, in the State of the application or of the national patent, may be affected in the course of a revocation action before a competent national court of the State concerned.
In the case of a European patent with unitary effect, it is now very likely that such a national prior right will have far greater consequences, since the entire European patent with unitary effect will be undermined.
Regulation (EU) No 1257/2012 specifies[17] that a European patent with unitary effect may only be limited, transferred, revoked or lapse in respect of all participating Member States.
At the same time, the UPCA states[18] that the Unified Patent Court may revoke a patent[19], either entirely or partly, only on the grounds referred to in Articles 138(1) and 139(2) EPC. The last underlined reference in fact suggests that the total or partial revocation of a European patent with unitary effect may result from an attack on the basis of an national prior right.
However, the aforementioned provisions17 of Regulation (EU) No 1257/2012 confirm the strict unitary nature of the unitary effect, i.e. the prohibition on limiting or revoking a European patent with unitary effect other than for all the participating Member States (here, contrary to what was considered in the discussions in Part II, we must certainly understand all the participating Member States in which the unitary effect applies, i.e. the 17 States mentioned above for the first generation of European patents with unitary effect, and not the 25).
The conclusion to be drawn is that a relevant national prior right (attached to one of the participating Member States in which the unitary effect applies) is likely to result in the limitation or revocation of a European patent with unitary effect in the same way for all the participating Member States actually concerned by that unitary effect.
In practice, where such a relevant national prior right is identified before the expiry of the period for requesting unitary effect, it may be advisable to adopt a "classic" validation of the European patent rather than to opt for unitary effect, in order to avoid the far-reaching adverse consequences mentioned above, as far as the validity of the European patent is concerned.
If, however, the applicant still wishes to have unitary effect, for example for reasons of reduced costs of maintaining the European patent in force in a large number of States, the applicant should :
-be prepared for the validity of its future European patent with unitary effect to be challenged on the basis of national prior right, in a revocationaction before the Unified Patent Court;
- or anticipate the above situation, by filing a separate set of claims of reduced scope for all 25 participating Member States, in order to moderate the relevance of the national prior right (see Footnote 15 on this subject);
- or adopt a reduced set of claims for all the designated States (and not just for the 25 participating Member States, when other States are also designated).
This situation can lead to a significant reduction in the scope of the invention in the participating Member States, while the national prior right is attached to only one of these States. This is why a "classic" validation of the European patent, State by State, will be more recommended in many cases, so that the identified national prior right represents a potential danger only for the validity of the national part of the European patent, in the State concerned by this right.
In this respect, there is still a risk that a revocation action before the Unified Patent Court, relating to the European patent validated in the "classic" way and against which the national prior rights would be invoked, could lead to a situation as dangerous as that described for the European patent with unitary effect.
This comment stems from the provisions[20] of the UPCA, which stipulate that the decisions of the Unified Patent Court, in the case of a European patent (validated in the "classic" way, without the request for unitary effect), cover the territory of all the contracting Member States for which the European patent produces its effects.
Even if the risk mentioned above remains low, it can be completely avoided by filing a request for a derogation[21] (the "Opt-Out"), so that the "classic" European patent escapes the exclusive competence of the Unified Patent Court. Thanks to this exemption request, the validity of the national parts of the European patent will be judged solely by the competent national courts, which will hand down decisions independently of each other, unlike a centralised revocation action before the Unified Patent Court. Any adverse consequences of an national prior right will then apply only to the national part of the European patent, in the State of that right.
Santarelli Group is at your disposal to advise you on your strategies for validating your European patents, as well as on all other aspects of the UPCA and the European patent system with unitary effect.
By Philiippe AHNER - May 2023
[1] Article 89(1) UPCA, implying an entry into force of the Agreement on 1er June 2023.
[2] Article 18(2) of Regulation (EU) n°1257/2012
[3] Article 139(2) EPC
[4] Rule 138 EPC
[5] EPO Examination Guidelines, March 2023, C-IV-7.2
[6] Article 3(1) and recital (7) of Regulation (EU) No 1257/2012
[7] The participating Member States are the Member States of the European Union which participate in enhanced cooperation in the field of the creation of unitary patent protection (corresponding to the signatory States of the two Regulations (EU) No 1257/2012 and No 1260/12 implementing enhanced cooperation).
[8] Rule 5(2) of the Rules relating to Unitary Patent Protection as adopted by decision of the Select Committee of the Administrative Council of the European Patent Organisation of 15 December 2015, and as last amended by decision of the Select Committee of the Administrative Council of 23 March 2022.
[9] Article 18(2), second paragraph of Regulation (EU) No 1257/2012
[10] The contracting Member States are the Member States of the European Union that are party to the UPCA. There are 24 Member States of the European Union, corresponding to the 27 Member States with the exception of Spain, Croatia and Poland.
[11] Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden.
[12] Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia, Poland.
[13] Explanatory remark 5(2), in connection with Rule 5 of the Decision of the Select Committee of the Administrative Council of 15 December 2015 adopting the Rules relating to Unitary Patent Protection (SC/D 1/15).
[14] Although Poland is a participating Member State, it has not signed the UPCA and therefore does not yet have the status of a contracting Member State: consequently, in practice, the unitary effect will not apply in Poland until it has signed and then ratified the Agreement.
[15] The question of the EPO's acceptance of this "multi-State" amendment remains unanswered with regard to the provisions of Rule 138 EPC, given that the identified national prior right concerns only one of the participating Member States, and not all of them.
[16] The Contracting States are also referred to as the Member States of the European Patent Organisation, of which there are 39 since 1rst October 2022.
[17] Article 3(2), second paragraph and recital (7) of Regulation (EU) No 1257/2012
[18] Article 65(2) UPCA
[19] In the UPCA, "patent" should be understood to mean a European patent and/or a European patent with unitary effect: Article 2g) UPCA
[20] Article 34 UPCA
[21] Article 83(3) UPCA
