EPO now offering an additional search service on allowance of a European application
On 1 September 2022, the EPO started offering a search service additional to standard search and examination. The additional service will focus on searching for national patent applications that need not be taken into account during prosecution at the EPO, but could affect validity of national parts of a granted European patent or a Unitary Patent.
National patent applications in European countries, published after the earliest relevant priority date, do not need to be taken into account by the EPO during prosecution of a European patent application. Such applications can, however, be used in a national court procedure, potentially limiting the patent claims in that country.
The new search service offered by the EPO will allow applicants to assess the relevance of any such national applications before grant, permitting the filing of a different set of claims in one or more countries, if needed. The claims then need only be limited in the country in which the national application is relevant, and the applicant can retain the broader claims in all other European countries.
This new search service has particular relevance to the forthcoming Unitary Patent. A Unitary Patent can only be granted where the claims are the same for all countries taking part in the Unitary Patent system. Similarly, if any limitation is needed after the grant of a Unitary Patent, that limitation will apply in all those countries. Hence, the scope of a Unitary Patent might be unnecessarily limited by a prior national application in a single country.
Assessing national applications before grant will let the applicant determine whether a Unitary Patent is appropriate, and how to maximise patent protection within Europe.
New search service
The new service provided by the EPO will be free of charge to all applicants, and will be carried out once the application has been found allowable by the EPO. The EPO will search for national patent rights which were filed before the earliest priority date but published after that date. The results of the new search will be communicated to applicants together with a notice of allowance (a Rule 71(3) EPC communication).
We consider this new search to be a useful addition to the service provided by the EPO, and a welcome tool to help manage risk in requesting grant of a Unitary Patent.