Under current German patent law, it is not possible to maintain a German national patent for the same invention for which a European patent has also been granted with the same priority. Under the applicable prohibition of double patenting, the German national patent would have no effect, even if the European patent were to fall away.

On the date that the UPC Agreement comes into force, the German prohibition on double patenting will be amended so that it only applies to European patents that have been “opted out” of the exclusive jurisdiction of the Unified Patent Court (“UPC“). For European patents that have not been opted out of the UPC and for the new unitary patents, patentees will be allowed to maintain a German national patent in parallel to the European patent and infringement litigation before the German courts will be possible in relation to the national patent.

This amendment of the prohibition on double patenting is intended to give the right holder the choice to litigate such European patents before the German national courts or the UPC, or to do both (against different defendants). National patents are not subject to the jurisdiction of the UPC and so can only be litigated in the national courts.

However, it should be noted that an infringement action before the German court asserting infringement or imminent infringement of the German national patent will be either dismissed as inadmissible or stayed until conclusion of the UPC proceedings insofar as

(i) the subject matter of the German national patent is an invention for which the same inventor or his successor in rights has been granted a European patent or unitary patent;

(ii) a proceeding is pending asserting infringement or imminent infringement of the European patent or unitary patent before the UPC between the same parties and with regard to the same embodiment or a decision with final effect has been issued by the UPC in such proceeding; and

(iii) the defendant raises the objection of inadmissibility.

Double protection and parallel enforcement will only be possible if the German national patent is granted after the UPC Agreement comes into force as otherwise it will already (irrevocably) have lost effectiveness due to the current rules on double patenting.

Against this background, the German Patent and Trade Mark Office is currently permitting applicants to delay the granting procedure for German national patents (even if a request for examination has already been made) in order to delay grant until after the UPC comes into force by:

  • extending deadlines to respond to office communications, or
  • requesting a deferment of the decision on the application (if this done before the decision to grant issues).

For further details see Notice No. 6/2022 from the German Patent and Trade Mark Office (2 May 2022).

The introduction of double protection in Germany provides patentees concerned about the potential uncertainty of litigation in the UPC an option to ‘hedge their bets’ for the German market by maintaining a national patent in parallel to their European patents (assuming they have not been opted out) and unitary patents.