Tuesday, 20 May 2014

National prior rights against a unitary patent

One of the known problems with the unitary patent is its relation to national prior rights. We will explain this situation with an example.

For example, suppose company A files a national patent application NL1 disclosing an invention A only in the Netherlands. Later, company B files a European patent application EP1 at the EPO claiming A and A+B; no priority is claimed. NL1 is validly published by the Dutch patent office after B's filing.

Application NL1 is a national prior right against EP1. It is only valid for novelty.

What will happen to the European application of company B?

We consider three situations: first two non-problematic cases for comparison, then the one problem case.

Prior right NL1 is discovered before EP1 is granted
If B wishes to maximize his scope of protection he should file a new claim set with EPO, having different claims for the Netherlands:  claiming only B in the Netherlands and claiming A+B in the rest of Europe.

After grant, company B cannot obtain a unitary patent; the regulations require that the unitary patent is granted with the same claims in all the participating Member States. However, company B can use the normal route of validating in the countries that interests him.  He can obtain a patent in the Netherlands for A+B, and a patent for A, and A+B in all other EPO countries.

Alternatively, he can restrict his claims to A+B for all countries. In this case he can apply for unitary effect and obtain a unitary patent. Of course, in this scenario he also has the option to use traditional validation.

Prior right NL1 is discovered after EP1 is granted; EP1 is not a unitary patent.
Company B's application EP1 is granted by EPO with two claims: A and A+B.

The prior right can be cited as prior art against EP1 only for its validation in the Netherlands. The proprietor of EP1 for the Netherlands can only enforce a claim for A+B. A claim on A is invalid there, since it is not novel.

For any other EPO country, prior right NL1 is not prior art and cannot be cited. Company B can enforce a claim to A in most of Europe.

Prior right NL1 is discovered after EP1 is granted; EP1 is a unitary patent.
Company B has obtained a unitary patent with two claims: A and A+B. The proprietor is now confronted with prior right NL1.

Substantive law for the unitary patent is governed by the EPC, so prior right NL1 may be cited against the unitary patent. Unitary patent EP1 cannot remain in force with a claim A, as it would be invalid in the Netherlands.

Company B cannot restrict his claim for the Netherlands only. After grant, the unitary patent may only be limited for all the participating Member States together. (Article 3, Regulation 1257/2012).

It thus appears that the proprietor has only the option to restrict his claims to A+B, for all participating countries. He will lose protection for A for all of Europe, not just for the Netherlands.

Thus a national prior right, which would ordinarily only be valid a prior art in one country, appears to gain the power of a European prior right.

Tomorrow, we will consider possible ways how the legislator could try to resolve this conundrum.

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