Double Trouble or Twice the Fun…

Catherine M. Jewell | June 2016

The new European Unitary Patent Package has been increasingly discussed in recent weeks, as the ramifications of its entry into effect loom ever larger on the patents horizon. 

The package consists of the European Patent with Unitary Effect (EPUE or “Unitary Patent”) and the Unified Patent Court (UPC).  The key point about the Unitary Patent is that it is a single, indivisible right covering all of the participating EU member states.  For a summary of the new system see our earlier article here, with links to the most relevant legislation here.

Before the package can come into effect, thirteen countries, including France, the UK and Germany, must ratify the UPC Agreement (UPCA).  Thus these three countries are key stake-holders in the new system, and while France has already ratified, the UK and Germany are still in the process of doing so.

The German Federal Ministry of Justice has now released draft acts implementing the UPC Agreement (UPCA) into German laws – these are a draft ratification act and a draft act amending the German Act on International Patent Treaties.

The draft ratification act implements the UPC Agreement into German law.  The draft act amending the German Act on International Patent Treaties integrates the UPCA as well as the provisions on the Unitary Patent into that act.

The most interesting feature of the draft legislation is that it proposes a major amendment with respect to the prohibition on obtaining “double protection”, i.e. holding more than one patent for the same invention. 

Until now, “double protection” or “double patenting” in a patents context has referred to obtaining both a European patent and a national patent with the same content.  With the coming of the Unitary Patent package however, this term now also encompasses the holding of both a Unitary Patent and a national patent with the same content.

Under the current law in Germany, a national patent loses its effect when a European patent directed to the same subject-matter is granted (i.e. after the opposition period or after a final and binding decision on such an opposition).  

However, in the draft legislation proposed, this provision has been amended so that it will only apply to classical (i.e. non-unitary) European patents that are “opted-out” from the exclusive jurisdiction of the UPC.  

“Opt-out” is available during the transitional period of the UPC and essentially means that a European patent remains a bundle of individual national rights which must be renewed, enforced or attacked individually, country by country, through the individual national courts.  “Opted-out” patents are outside the jurisdiction of the UPC, and therefore cannot be centrally attacked or enforced.  More information on “opt-out” is available in our summary article here.

In other words, the German laws have been amended so that it will not be possible to hold a German national patent and an "opted-out" European patent with the same content, but it will be permissible to hold a German national patent in parallel with a classical European patent that has not been “opted-out”, or a Unitary Patent. 

It is also worth noting that under the amended German laws, if the “opt-out” is withdrawn, the status of the national patent is unchanged – i.e. the national patent will not regain force.

Since the German national courts will have jurisdiction both for classical European patents that are “opted-out” of the UPC and for German national patents, this approach effectively removes the possibility of the German courts having to deal twice with the same case.  However, it seems that it will be possible for the same subject-matter to be litigated via both the German national courts and the UPC.

In contrast, the corresponding UK legislation does not allow a proprietor to hold both a unitary patent and a corresponding UK national patent, or to hold both a classical European patent and a corresponding UK national patent, thus removing any possibility of the UK courts and the UPC hearing the same case.

This variable approach to double protection is another factor to be taken into account by patent proprietors when considering their future filing strategies and whether/which of their existing European patents and applications to “opt-out” of the UPC.

If you would like further information or advice with regard to the unitary patent or the UPC, or more detailed guidance in relation to your individual circumstances, please feel free to contact us.