Go German Patents! – Special rules allowing double patenting and parallel enforcement for the Unitary Patent System and national patents in Germany

With the rise of the Unitary Patent Court (UPC) and the Unitary Patent – a single European Patent for the European Union – the German implementing regulations of international patent law were recently amended. If the UPC system will come into force at the end of 2017 or at the beginning of 2018, the new German patent system will offer new strategic options for patent proprietors to protect and enforce their patent rights in Europe and Germany in parallel.

In Germany, the relationship between the German Patent Act (Patentgesetz, PatG) and the European Patent Convention (EPC), the Patent Cooperation Treaty (PCT), and (then) also the Unitary Patent System (UP) is controlled by the „Gesetz über internationale Patentübereinkommen vom 21. Juni 1976 (BGBl. 1976 II S. 649), das zuletzt durch Artikel 19 der Verordnung vom 31. August 2015 (BGBl. I S. 1474) geändert worden ist“ (IntPatÜG).

In preparation of the German ratification of the Unitary Patent Court Agreement (UPCA) – a system for EU wide patent litigation – the UP is implemented into German law by two new bills (see Drucksache 18/11137  and Drucksache 18/8827 ) which recently passed the German Federal Counsel after previously being approved by the parliament. One of the bills will substantially amend the IntPatÜG.

Currently, the IntPatÜG explicitly excludes double protection of the same invention by a German and European Patent of the same priority (Art. II, § 8 IntPatÜG). The German part of the European patent upon expiry of the opposition period or opposition proceedings dominates the granted German national patent, and renders the latter permanently lapsed in scope of the granted European patent.

Regarding enforcement of European patents, the EPC refers to national law (Art. 64(3) EPC). Of note, the German Patent Act further requires to combine infringement proceedings based on the same infringing action(s), if different patents are infringed (§ 145 PatG).

With the Unitary Patent System on the rise, the amendments to the IntPatÜG and the German Patent Act seem to create new and quite interesting strategic options for patentees in Europe and Germany.

According to the new rule double protection of a European patent and a German national patent will be possible if the UPC system comes into force, unless the applicant or proprietor of the European patent has opted out from UPC jurisdiction (Article 83(3) UPCA). If opted-out, the previous rules prohibiting double protection continue to apply. If the German patent application is not yet granted, the exclusion of double protection can be avoided by withdrawal of the opt-out, thus entry into the UPC system with the European patent (“opt-in” – Article 83(4) UPCA).

Thus, if the patentee does not opt out, he has the choice to either enforce his German national patent or his European patent or both (although not against the same defendant). It will therefore become attractive to file both a European patent application and a national German patent application in parallel, for example by entering in parallel the European and national German phase from an international application under the PCT.

Even if patentees intend to initially opt-out their European patents in the first years of the UPC, for example to first observe the operation of the new court system, it may be advantageous to have a parallel German patent application pending. The grant of a German patent application can be efficiently delayed because examination of German patent applications must not be requested up to 7 years after filing. If at a later time the European patentee then decides to opt-in the UPC system with the European patent, a subsequently granted German patent will not fall under the exclusion of double patenting. Having a parallel German patent application pending therefore maintains at least the option for the patentee to have later parallel European and German patents.

Furthermore, new §18 IntPatÜG installs a double litigation estoppel. The defendant of an infringement action based on a German patent granted for an invention, for which the same inventor has already been granted a European or Unitary patent can object to the filing of the infringement action based on the German patent if he has already been sued based on the parallel European / Unitary patent. Just like with the “old” double-protection rules of the German and “classical” European patent, a broader German scope would still be enforceable. According to new §18(2) IntPatÜG the German court may then decide to reject the German lawsuit as inadmissible or to stay the proceedings until conclusion of the UPC proceedings.

A significant change is that a true parallel enforcement is possible in Germany, even if the European or Unitary patent has been lost (and this actually relates to one of the main threats of the Unitary System for a patentee), the proprietor of the German patent will still be able to enforce the patent in Germany. Moreover, the estoppel objection only applies in regard to the same parties, i.e. not for proprietor and licensee. A strawman could be contrary to good faith.

Importantly, the above rules do not apply to preliminary injunction proceedings. If the Unitary System would be slow or not patentee friendly, the parallel German patent could be used in Germany as a quick relieve of infringement situations, e.g. against generic competitors. Therefore, parallel German and UPC enforcement is possible for interim proceedings.

Interestingly, §16 IntPatÜG regulates that Unitary patents are like national patents when it comes to compulsory licenses, which in turn will only be effective in Germany.

In summary, if the Unitary Patent System will come into force, it seems strongly advisable to consider filing both European and parallel German national patents, in particular since the costs for a national German patent – when compared with the size and importance of the German market in the EU – are comparatively low.