At present, German law prohibits the double patenting of an invention under a German and a corresponding European (traditional) bundle patent. However, this regulation will be relaxed once the agreements for the unitary patent and the Unified Patent Court (UPC) have been implemented into German law.
The draft regulation to amend the German law proposes that Article II, Section 8 of the Act on International Patent Agreements, which prohibits double patenting in Germany, no longer apply to European patents for which the UPC does not have exclusive competence. In other words, if the UPC has exclusive competence for a European patent also valid in Germany (whether a traditional European bundle patent or a unitary patent), a corresponding national German patent issued by the German Patent and Trademark Office (GPTO) remains fully valid.
However, in order to protect an accused infringer from being sued twice by the owner of a European patent and a corresponding German patent, the draft regulation proposes a new Article II, Section 18 of the act. This provision would provide that a motion filed before a national German court based on a national German patent would become inadmissible if a corresponding motion based on a corresponding European patent were filed before the UPC if the defendant rebuked being sued twice.
The proposed relaxation of the prohibition on double patenting applies only to those European patents for which the UPC has no exclusive competence. Therefore, where the owner of a traditional European bundle patent has opted out of the UPC, double patenting will still be prohibited.
In summary, an inventor may consider filing both a European patent application before the European Patent Office and a national German patent application before the GPTO in order to choose later which system it prefers to use to protect the patent.
Detlef von Ahsen
This article first appeared in IAM. For further information please visit www.iam-media.com.