Double Patenting in Germany and the UPC

The imminent entry into force of the Unified Patent Court (UPC) and availability of the unitary patent together represent one of the most significant developments in European IP infrastructure in recent memory.  Businesses and IP stakeholders, especially those who have large patent portfolios, will be keen to understand the merits of the new system in relation to traditional alternatives.

Here we explore the specific question of whether the opportunity for an EPO-granted patent to fall under UPC jurisdiction and/or acquire unitary effect changes anything with regard to “double patenting”, the co-existence of two patents to the same invention granted or validated in the same country to the same applicant.

The preamble of the EU Regulation[1] creating the unitary patent states that “[w]here unitary patent protection takes effect, the participating Member States should ensure that the European patent is deemed not to have taken effect on their territory as a national patent, so as to avoid any duplication of patent protection”[2], ruling out requesting unitary effect for a European patent and validating it in any of the UPC participating states simultaneously at EPO grant stage.

But what about double patenting between a nationally granted patent and a European patent with unitary effect?  The Regulation provides that it “should be without prejudice to the right of the participating Member States to grant national patents and should not replace the participating Member States’ laws on patents”[3]; the answer thus depends on the national law of each of those states.

In this article we focus on Germany, the largest among EPC signatory states in terms of the size of the economy and the volume of patent applications filed, and recap how it has prepared for the arrival of the UPC in this regard.

In 2017, the Bundestag approved amendments[4] to the Gesetz über internationale Patentübereinkommen (IntPatÜG) that modified some aspects of the prohibition on double patenting, in expectation of the UPC coming into force.

The first of two key changes was to amend an existing provision (Art II, § 8) regarding double patenting, to limit its application to those European patents that are opted out of UPC jurisdiction. 

Whilst a national German (DE) patent and a corresponding EP-DE patent have been able to co-exist if the former is maintained by ongoing payment of payment fees, for instance, the provision has allowed a defendant against an enforcement action to object that the national DE patent has no effect in view of its European counterpart.  The value of maintaining both has thus been questionable, since the defendant is of course likely to raise that objection and invalidate the plaintiff’s legal claim if it does come to court.  Nevertheless, German courts do not introduce such an objection on their own initiative, and even if a court finds this DE patent to be without effect, it will not be removed from the official patent register.

After amendment, this “no effect” limitation only applies to an EP-DE patent if it is opted out of the jurisdiction of the UPC.  One is therefore allowed under German law to own and enforce (1) a DE national patent that is under German legal jurisdiction, and (2) an EP-DE or unitary patent under UPC jurisdiction, to the same invention, in parallel.

The second key amendment to the IntPatÜG was the introduction of Art II § 18, which prevents a putative infringer from being sued twice under such parallel patents.  (Corollary: it is possible to sue different defendants using different patents at their respective courts).

Specifically, an action for infringement filed before a German court based on a DE national patent may be dismissed, if there is a corresponding action pending before the UPC or a final decision from the UPC in relation to a parallel European patent covering Germany, whether the latter is unitary or not, for the same embodiment[5].

This is on condition that the defendant has, on their own motion, raised the objection at the earliest opportunity, and in any case before oral proceedings on the main issues begin.  The German court may also order a stay of proceedings until the UPC proceedings have ended.  Filing a declaratory of non-infringement action before the UPC may lead to such an order.

These provisions under § 18 do not apply to provisional or protective measures such as preliminary injunctions, and donot cover invalidity actions.

The law as amended continues to give primacy to European patents over national DE patents when double patenting is an issue.  What is new is a patent proprietor is now allowed, by virtue of having filed parallel applications at the EPO and the German Patent and Trade Mark Office, or entered a PCT application into both the EP regional phase and DE national phase, to leave open the choice of legal system under which to enforce their patent rights[6], until a later date – by which time one may have moved beyond the infancy of the UPC, as yet untested in practice – in view of the circumstances of the case, preferred legal strategy and cost considerations at that time.

Dr Matthew Yip is a European and UK Chartered Patent Attorney and Senior Associate at Maucher Jenkins

Dr Cornelius Mertzlufft-Paufler is a European and German Patent Attorney and Partner at Maucher Jenkins

[1] Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection

[2] ibid, Recital 8

[3] ibid, Recital 26

[4] As seen in Entwurf eines Gesetzes zur Anpassung patentrechtlicher Vorschriften auf Grund der europäischen Patentreform, Drucksache 18/8827

[5] “durch die gleiche Ausführungsform” in the original German.

[6] It remains possible to enjoy dual protection by a patent (DE national or EP-DE) and a utility model, which may coexist and be enforced as the proprietor sees fit.