Exclusion of double patenting: What will change due to the UPC?
In patent law, it is generally undesirable for the same subject matter to be claimed and protected by two patents for which the same court has jurisdiction. Therefore, there is not only the exclusion of double patenting, according to which the grant of a second patent on the same subject matter by the same office is excluded, but also the inadmissible double protection (according to Article II § 8 of the Law on International Patent Conventions (IntPatÜbkG)), which concerns the case of parallel applications before different offices.
In practice, however, the risk of inadmissible double protection within the meaning of Article II (8) of the IntPatÜbkG of a double patenting exists in particular when a German and a European patent are granted for the same invention in parallel proceedings before the DPMA (German Patent and Trade Mark Office) and the EPO (European Patent Office). This happens more often than one might think because patent applicants often initiate both procedures.
The "Law on International Patent Conventions" (IntPatÜbkG) therefore provides for this case of a double application that the German patent no longer has any effect if the legal existence of the European patent can no longer be challenged with an opposition (Art. II § 8(1) No. 1 IntPatÜbkG). The loss of effect is irreversible and remains in force, for example, even if the European patent lapses (Art. II § 8(2) IntPatÜbkG).
However, a patent that has become ineffective continues to exist in contrast to a patent that has lapsed; unlike a lapse, ineffectiveness is not noticed in the patent register. Moreover, the question of ineffectiveness is not easy to answer in many cases but requires a sometimes difficult examination of the facts, which cannot be answered properly in the context of an examination of admissibility, as the German Federal Supreme Court stated in the decision X ZB 18/06 - Kornfeinung.
Therefore, the BGH concluded:
"There is no special need for legal protection for an opposition against a German patent even if the patent no longer has any effect due to the prohibition of double protection with regard to the final grant of a European patent", the BGH ruled in 2007 as a leading decision (BGH, X ZB 18/06 - Kornfeinung).
This decision is quite relevant in practice: Before filing an opposition against a German patent, it is therefore not necessary to check whether there is a European patent with - possibly different claim wording - but the identical subject matter.
What will change with the introduction of the unitary patent and the UPC?
And how will the exclusion of double protection be handled with the introduction of the Unitary Patent and the Unified Patent Court (UPC)? After all, European patents will no longer be subject to the jurisdiction of national courts, but to the UPC - at least as long as the UPC is not deprived of this jurisdiction according to Art. 83(3) of the Agreement on a Unified Patent Court (so-called "opt-out").
According to the Law on the Adaptation of Patent Law Provisions, Article II § 8 IntPatÜbkG will be adapted accordingly to the new unitary patent. The amendments will enter into force on the date on which the UPCA enters into force according to Article 89 UPCA. And the UPC will enter into force on the first day of the fourth month after the deposit of the instrument of ratification by the Federal Republic of Germany.
From then on, the prohibition of double protection will only apply to European patents which are not subject to the exclusive jurisdiction of the Unified Patent Court according to Art. 83(3) UPCA (so-called opt-out). In the case of a combination of a bundle and unitary patent, the bundle patent loses its effect in the states in which the unitary patent has an effect.
Thus, if no opt-out is declared and the European patent continues to fall under the exclusive jurisdiction of the Unified Patent Court, the national patent continues to have effect alongside the European patent.
However, the latter will be subject to double cladefensesces, which will be provided for in a (new) paragraph, Article II § 18 of Art. II IntPatÜbkG). A potential infringer can thus challenge the admissibility of an ion if he has already been claimed with reference to the European patent before the Unified Patent Court.
DPMA offers extension and deferment as a transitional measure
Accordingly, in the future, a German patent does not have to lose its effect if the applicant acts accordingly. Therefore, to keep the option open for applicants, the DPMA provides the following transitional measures, according to DPMA President's Notice No. 6/22 of May 2022:
If the subject matter of a patent application is an invention within the meaning of double protection for which a European patent with the same priority has already been granted and for which an effective request for examination under § 44 of the Patent Act has already been filed, the DPMA offers - time-limited - extension and deferment for these patent applications. According to the DPMA communication, patent applicants have the following options:
i) Request for extension of time limits still running to reply to an examination communication (§§ 44, 45 Patent Act): If a time limit set by the examining division for replying to an examination communication under §§ 44, 45 Patent Act has not yet expired, this time limit may be extended upon request.
ii) Request for deferment of the decision on the application: If a time limit set by the Examining division has been observed by replying to an examination communication under §§ 44, 45 Patent Law, the decision on the application may be deferred upon request. If such a request is received by the DPMA only after the decision to grant has been issued, the request can no longer be considered.
According to the DPMA, the extension of the time limit and the deferment shall not exceed eight months initially and four months after the deposit of the instrument of ratification of the Federal Republic of Germany under Article 84 UPCA; the possibility to file a corresponding request ends with the entry into force of the UPCA.
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