Germany considers relaxing double patenting rules

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

The German Federal Ministry of Justice and Consumer Protection published a new draft bill on 5 February 2016 to amend the Act on International Patent Agreements in view of the UPC Agreement. The Ministry’s first draft is at a very early stage of the legislative process and it has not been approved by the federal government, much less passed by the legislative branch, yet. The most interesting part of these complex amendments is the planned changes to the existing rules of double patenting.

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I. Present situation:

If the subject matter of a granted national German patent (“DE patent”) is an invention for which a European patent (with effect for Germany) has been granted to the same inventor with the same priority date, the DE patent loses its effect to the extent the scope of protection is identical (i.e. DE remains effective to the extent scope of protection is broader than EP). The DE patent cannot be revived if the EP patent is nullified at a later stage.

II. Proposed Amendments:

The draft bill proposes that double protection is generally possible for a DE patent and an EP patent (bundle or “new” European patent with unitary effect), unless the EP patent was opted out from the UPC jurisdiction. If an EP is opted-out then the consequences as described above (in Section I.) still apply.

This means, in reverse, that if the applicant or proprietor does not opt-out and thus accepts the UPC jurisdiction, he has potentially two valid patents that he can enforce. According to this, it is generally possible to have parallel infringement proceedings at a German District Court based on a DE patent and at the UPC based on a traditional EP patent or Unitary Patent.

In case such parallel infringement proceedings involve the same defendant(s) and the same (or similar) attacked products, the defendant can raise an estoppel defence to prevent him from being sued twice at the same time out of the same invention. If such defence is raised the national action will be dismissed. It is of no relevance which proceeding was initiated first, the UPC or the national one.

III. Outlook and advantages:

The new proposed liberalization of double patenting provides the proprietor with a greater scope of possibilities to assert his IPRs and it gives him the opportunity to keep an enforceable national patent even if his Unitary Patent gets nullified by the UPC.

The proprietor could also try to obtain a fast PI out of the national DE patent while starting parallel proceedings on the merits at the UPC.

In a nutshell, it gives a patent holder, maintaining national patents in addition to the not-opted-out EPs and Unitary Patents, further possibilities and securities to assert his intellectual property rights.