IP Quick Tip: National prior rights

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Visit our dedicated UPC webpage.

To dive into the mentioned and alluded legal texts, please refer to: https://new.epo.org/en/legal/epc/2020/a54.html https://new.epo.org/en/legal/epc/2020/a56.html https://new.epo.org/en/legal/epc/2020/a139.html https://new.epo.org/en/legal/epc/2020/a153.html https://new.epo.org/en/legal/epc/2020/r165.html https://new.epo.org/en/legal/epc/2020/r159.html https://new.epo.org/en/legal/guidelines-epc/2023/giv5_2.html

As a general principle, any document published after the filing date of a patent or patent application is not prior art.

One exception are so-called prior rights. A prior right is a patent application filed earlier but published later than the patent or application-in-suit. For European patent applications, an earlier European patent application, or an earlier PCT application that has validly entered the European phase may qualify as a prior right. A national prior right, on the other hand, for example a national German patent application, is not prior art for a European patent application.

However, once a European patent has been granted, a national prior right becomes prior art in the jurisdiction of the prior right.

For example, for a traditional European bundle patent validated in Germany and France, a German prior right becomes prior art only for the German part of the bundle patent but not for the French part.

For a European patent with unitary effect, a national prior right in any member state of the UPC is prior art to the unitary patent as a whole. Therefore, a national prior right in a single member state of the UPC could lead to the invalidation of the unitary patent for all UPC member states. However, the effect of any prior right is limited insofar that the claimed subject-matter only needs to be novel over the prior right; an inventive step is not required.

Applicants should bear this in mind for their strategic decision whether to file a request for unitary effect.