Yet More on the Unitary Patent - is there too much prior art?

This moggy had cause to scratch his head about the status of earlier filed but later published national patent applications as prior art against a unitary patent.  He had been alerted by Katfriends Phillips and Leigh that a novelty-destroying prior national right in one country could invalidate the entire unitary patent.  The unitary patent regulation has no conversion provisions.

This is nothing new.  The Community Designs Regulation also has no conversion provisions (perhaps surprisingly, since the Community Trade Mark Regulation does - Articles 108-110), and it is not only possible, it has actually happened that a Registered Community Design has been invalidated on the basis of a prior right in one country only, or less than the whole EU.  So far this has (to the IPKat's knowledge) only been in the case of published trade mark rights (see for example here) and design rights (see for example Decision of Invalidity Division File number: ICD 000000396 here), but it would have been equally possible in the case of an unpublished application for a registered design (as might have been the case in the seminal Pepsico v Grupo Promer case, had the dates been only slightly different).

To expand on the issue, according to Art 54(3) EPC, prior filed but post-published patent applications count as prior art for the purposes of novelty only against a European patent application or European patent.  However, before the EPO, an equivalent national patent application does not count as prior art.  An Examining Division cannot refuse a European patent application , nor an Opposition Division revoke it, on the basis of lack of novelty over an earlier unpublished national patent application.  However, the proprietor may amend the application or patent, if necessary with different claims for that state, to ensure that the patent will be valid for that state.

The problem is that a unitary patent has to have the same claims for all states.  The Regulation states at Article 3:
A European patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect.

So it seems that a prior right in even one country could invalidate the unitary patent in its entirety.  This view is confirmed by Article 65 of the Unified Patents Court Agreement which says:
The Court may revoke a patent, either entirely or partly, only on the grounds referred to in Articles 138(1) and 139(2) of the EPC.
Article 138 mirrors the grounds of opposition, plus extension of protection and lack of entitlement, but Art 139 is the crux - this is the one that allows national rights to be taken into account:
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. 

The IPKat is wondering how big a concern this is.  How frequent are prior national rights (as opposed to unpublished prior European applications)?  He also wonders whether anything can be done about it.  He notes that EU member states are required by Article 4 of the Regulation to remove the national effect of a European patent once it has become a unitary patent:
The participating Member States shall take the necessary measures to ensure that, where the unitary effect of a European patent has been registered and extends to their territory, that European patent is deemed not to have taken effect as a national patent in their territory on the date of publication of the mention of the grant in the European Patent Bulletin.
Would it be possible to restore the national effect if the unitary patent was revoked because of prior art that did not exist in a particular country?  Or will the patent proprietor just have to take this risk as part of the cost of the unitary patent?  Merpel in the meantime is still wondering just what the cost of a unitary patent will turn out to be.

As usual, dear readers, over to you.  Is this too much of a risk for patent owners?

Yet More on the Unitary Patent - is there too much prior art? Yet More on the Unitary Patent - is there too much prior art? Reviewed by Darren Smyth on Wednesday, March 13, 2013 Rating: 5


  1. Seldom does the EPO search bring to light a late-published A publication of an EU Member State Patent Office that prejudices your independent novelty. Not much to worry about there, I should have thought.

    But recall the AIA and its provision, that late-published patent applications in the Patent Office of China are not only novelty-destroying but also available for obviousness attacks on the claims of your US patent application or patent, never mind that they never enter the national phase in the USA. Now if you ask me, that's a mega train wreck waiting to happen.

  2. Thanks MaxDrei - not sure whether the EPO search does not bring them to light because they do not exist or because the EPO is not looking for them as they are not prior art that the EPO is entitled to use.

  3. Darren, it happens these days very frequently, that a claim under examination is not entitled to priority. In that case, anything published in the Paris year (including GB, FR, DE A publications) becomes available as full prior art for Art 56 assaults.

    So they have to search and cite all those.

    All that is left is stuff published in the last 6 of the 18 month black hole.

    And anyway, I'm not sure how much time EPO Examiners spend thinking about whether a good doc should or should not be cited. I imagine they search up to the EPO filing date in the subject case, and then just unthinkingly cite anything they find with an earlier priority date.

    But perhaps Myshkin or the Fly will give us here the inside story?

  4. Presumably if a national prior right is citable against the 'entire' unitary patent then the EPO might allow an applicant to introduce a disclaimer which did not need to have basis in the application to exclude the cited subject matter (as it would do with a prior unpublished pre-filed European application). So although it is unfortunate that one cannot have a different set of claims for the country of the national prior right, a more lenient disclaimer policy for unitary patents would alleviate some of the pain.

  5. Actually I don't think it is going to be a massive problem. If the issue arises during prosecution then the solution as I see it is simple. Art 12 (1) punultimate paragraph states that the request for unitary protection must be filed within one month of mention of grant and we know from Art 3 that there must be a single set of claims.

    The issue will therefore only arise in revocation proceedings and that is the decision that the proprietor will need to take into account - is there a risk that an earlier (unpublished) patent application valid only in one or more countries might be harmful to the fate of the unitary application. Theoretically this could happen, but it is unlikely to do so. In particular since the EPO implemented the "all states designated" default, it has become very rare for different sets of claims for different countries.

    MaxDrei's point is pertinent given the EPO's narrow-minded and very fomalistic approach to priorty claims. And indeed this point could easily only come out in a revocation suit.

    At the end of the day we'll have to accept this point. A single patent for the EU clearly implies that its fate will be all-European and not - as the Germans would say - "kleinstaatlich" (= small state like).

  6. And anyway, I'm not sure how much time EPO Examiners spend thinking about whether a good doc should or should not be cited. I imagine they search up to the EPO filing date in the subject case, and then just unthinkingly cite anything they find with an earlier priority date.

    As a former examiner, I do confirm that they search up to the EPO filing date. If intervening documents are found (which does not happen very often, except perhaps in some contentious areas), then they actually carefully determine how to cite it, because they must give it the correct category (E or P).

    Personally, I don't think this will involve much upheaval at the EPO level except for a small update in the Guidelines. The changes in the EPC 2000, extending the effect of 54(3) prior art to all Member States, and not just to those Member States designated in the prior art document, were much more significant in practical terms.
    It is also a logical consequence of having a patent with unitary effect, IMHO.

  7. There is an old saying that, if something can happen, then it will happen, and when it does happen, it will happen to something important.

    I had such a situation some years ago when my client's new product was threatened with potential infringement of a patent that, if upheld, would have put them out of business. The patent had different sets of claims to reflect prior national rights in an EP state in which the client had no business, and it was pretty clear that there was no infringement of the claims for that state. Had the EP patent been granted as a unitary patent, then my client would not have had a problem with the narrower claims that would have been allowed.

  8. Rob Harrison 's comment made my thinking: what will happen if during opposition or during central limitation (of a patent that has unitary effect) an amended patent with two sets of claims results, whether this is caused by an earlier national prior right or not. Would then this EP-B2 patent not be eligible anymore for unitary effect?

  9. Art. 3(2) of the Regulation for the Unitary Patent stipulates that the European Patent with unitary effect "may only be limited, transferred, revoked or lapse in respect of all the participating Member States". So I would guess this provision would limit the applicability of R139 EPC during opposition proceedings in case of national prior rights arising in one of the participating states.


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