German patents in the light of the UPC

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In addition to the European patent with unitary effect (unitary patent), which also develops protection in Germany, the existence of a national German property right remains, which will presumably play an even more important, flanking role in the future.

Partial elimination of the double protection prohibition

According to the previous regulation of the IntPatÜG concerning the European bundle patent, if the subject matter of a German patent is an invention for which a European bundle patent with the same priority has been granted to the same inventor or his legal successor with effect for the Federal Republic of Germany, then the German patent, to the extent that it protects the same invention as the European bundle patent, no longer has any effect from a certain point in time after the grant of the bundle patent (double protection prohibition).

According to the new regulation of the IntPatÜG of 2021, the double protection prohibition only applies to those European bundle patents for which an exclusion from the Unified Patent Court system has been validly declared (so-called “opt-out”), since the unitary patent does not itself provide for double protection in relation to national patents. However, if the declaration of exclusion is withdrawn (so-called “opt-in”), the double protection prohibition remains in force and the German national property right remains ineffective in the overlap of the scope of protection.

As a result, for all unitary patents and all European bundle patents for which no explicit exclusion from the new unitary patent court system has been declared, a national German patent granted after the start of the new system can also have effect in the overlap of the scope of protection alongside the European patent.

This opens up strategic advantages for owners.

Strategic advantages

At present, the new Unified Patent Court system for nullity actions and for infringement actions is associated with a great deal of uncertainty. For example, it is difficult to estimate the expected case law and the conduct of proceedings in the new Unified Patent Court system. In contrast, there is a proven national German system consisting of the Federal Patent Court and the District Courts, which have developed a solid and predictable case law over many years. For plaintiffs, this means an increased level of security. In addition, Germany has the largest market within Europe and the participating states of the Unitary Patent System.

Owners of a German national patent and a European patent can thus choose the system for an action and, especially at the beginning of the new unitary patent system, can fall back on a proven action system which covers the most economically relevant area of Europe.

In addition, a German national patent provides a valuable fall-back position in the event that the unitary patent is not upheld. If the worst comes to the worst, a German national patent thus offers the possibility for a German court to judge patentability (differently) than the UPC for the market in Germany on the basis of previous proven case law.

Advantages of parallel German application

In addition, the German patent system has two other special features.

First, a German patent application can be filed in parallel with a European patent application from an international patent application (PCT).

Furthermore, after filing a German patent application, a request for examination can be deferred for a maximum of 7 years after the filing date.

Thus, there is the possibility to let a German patent application rest at comparatively low office fees and to pursue a unitary patent in parallel. In case of failure of the European patent application or loss of the unitary patent or new findings justifying an amended scope of protection, an examination request for the German patent application could then be filed at a later date, thus continuing to cover a substantial part of Europe to a relevant extent.

Looking into the future, it should be added that after the discontinuation of the option of opting out after a transitional period of currently 7 years, it is intended that all European patents with or without unitary effect for the participating EU states will fall under the exclusive jurisdiction of the UPC and thus, at the latest, a German property right application will then be the only way to bring the invention under the proven jurisdiction of the German courts.

Thus, in view of the new unitary patent system, the German national patent is already gaining a strategic importance that should not be underestimated when deciding where to file an application, and applicants should be aware of this.

We will be happy to provide you with customized advice on the strategic options.

 

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The Unitary Patent in contractual practice

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New aspects requiring regulation for existing and future contracts

A topic that does not immediately come to mind in relation to the unitary patent system is whether the introduction of the unitary patent is to be taken into account in the context of negotiating patent-related contracts. This includes classical license agreements as well as R&D agreements, consortium agreements and other agreements comprising provisions on the creation or use of patents.

In fact, the introduction of the unitary patent system brings up new aspects in the context of such contracts that need to be regulated and which are often not yet sufficiently taken into account in existing contracts. In particular the following aspects need to be considered when negotiation future contracts and revising existing contracts.

Choice of law by application

Pursuant to Art. 7 of Regulation 1257/2012, the law applicable to a unitary patent as an object of property in all participating member states is determined by where the patent applicant is domiciled or has his principal place of business at the time of filing an application for a unitary patent. Where two or more persons are entered in the European Patent Register as joint applicants for a patent, the domicile or place of businsess of the first-mentioned applicant shall be decisive. Accordingly, in the case of a joint patent application, the question of which applicant is to be designated first may gain considerable importance in the future and should be considered contractually with respect to unitary patents.

Opt-out requests

A quite complex aspect arises in relation to the possibility to file opt-out requests with respect to European patents granted or applied for prior to the expiration of the transitional period.

The right to opt out generally belongs to the owner or applicant of the patent, which can lead to conflicting interests, particularly in the context of exclusive license agreements. Thus licensors and licensee may well come to differing conclusions when weighing the advantages of a uniform enforcement of rights against the disadvantages of the risk of a central attack against the European Patent. The competences regarding the filing and timing of an opt-out request should therefore be contractually regulated.

In this context, it is also significant that, for example, the holder of an exclusive license is in principle independently entitled to file an action under the Agreement on a Unified Patent Court. If the (exclusive) licensee brings an action before the Unified Patent Court before an opt-out has been declared, the patent proprietor loses the possibility for an opt-out. Thus, there may also be a need for new contractual provisions regarding the enforcement of patents. Conversely, this also applies to the possibility of withdrawing from an opt-out once it has been declared, which is only possible as long as no action has been brought before a national court.

As regards granted EP patents, it should also be noted that an opt-out request can only be filed uniformly for all validated parts, which always leads to a need for regulation if the different parts are not held by the same proprietor. In the case of joint ownership, it should also be noted that the opt-out must in principle be declared jointly for all applicants or owners, which requires prior clarification between joint-owners.

Summary

The introduction of the unitary patent gives rise to a whole series of new aspects, which should be taken into account when negotiating patent-related contracts. On the one hand, this applies to future contracts. On the other hand, since this topic will generally not sufficiently be taken into account in existing contracts, existing contracts should also be reviewed in order to discuss open issues requiring regulation between the contracting parties at an early stage. Since opt-out requests should preferably be filed during the sunrise period in order to avoid the risk of losing the option through a lawsuit before the Unified Patent Court, this topic should be addressed as early as possible.

 

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