In principle, the same subject matter shall not be claimed by two patents. Nevertheless, this does not happen so rarely in practice. This is because patent applicants who claim both national protection and protection by a European patent often file a patent application for the same subject matter before two patent offices to increase their chances of being granted.
There is therefore the so-called prohibition of double protection against double patenting in the case of parallel applications before different offices. The German “Law on International Patent Conventions” (IntPatÜG) provides for this case – for example, a parallel patent application before the German Patent Office and the EPO – that the German patent loses its effects sometime after the grant of the European patent.
Also for the coming European Unitary Patent and Unified Patent Court, there are regulations in the IntPatÜbkG with regard to double patenting. From the day the UPCA enters into force under Article 89, the prohibition of double protection will only apply to European patents that are not subject to the exclusive jurisdiction of the Unified Patent Court.
The so-called ‘Opt-Out’ is decisive in this context. After the Unified Patent Court comes into force, European patents will no longer be subject to the jurisdiction of the national courts, but to the Unified Patent Court – depending on the opt-out declaration.
This is because, with an opt-out declaration, the jurisdiction of the Unified Patent Court for European patents is withdrawn (according to Art. 83(3) of the Agreement on a Unified Patent Court).
Double protection and ‘Opt-Out’
The patent applicant declares ‘Opt-Out’ -> a national patent with the same subject matter loses its effect in the case of double patenting with the European patent.
The patent applicant does not declare an ‘Opt-Out’ -> if 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.
Nevertheless, refraining from depositing an opt-out declaration is not a free pass for double patenting. For this case there will be the possibility of a defense of double claiming (a new paragraph to be included in Article II § 18 of Art. II IntPatÜbkG).
DPMA offers transitional measure
To keep all options open for applicants, the German Patent Office (Deutsches Patent- und Markenamt (DPMA)) provides transitional measures according to the Notice of the President of the DPMA No. 6/22 of May 2022.
For a specific case constellation, these measures offer an advantage for applicants of German patents. This is the case,
i) if a parallel European patent with the same priority has already been granted,
ii) if the grant of the German patent is imminent and
iii) if Option 2 is chosen: no declaration of ‘Opt-Out’
In such a case, the DPMA measures offer the possibility to postpone grant of the German patent until after the entry into force of the UPC. Because if no ‘Opt-Out’ is declared, the national patent still has effect after the UPC enters into force.
The DPMA offers – for a limited time – extension and deferment for German patent applications, for which a parallel European patent with the same priority has already been granted. According to the DPMA, 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 Section 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 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.
For more details, see HERE
About the Blogpost Authors
Dr. Malte Köllner, from Köllner & Partner, is a German and European Patent Attorney as well as Trademark and Design Attorney. In 2022 he was named Germany’s Attorney of the Year by the German business newspaper “Handelsblatt”. He was also recognized as Germany’s most influential patent attorney. With a vast experience in the field of Intellectual Property, Dr. Malte Köllner is also the editor-in-chief of the German journal for patent law “Mitteilungen der Deutschen Patentanwälte” and a lecturer at various conferences and universities. Dr. Malte Köllner has authored a handbook on the Patent Cooperation Treaty as well as numerous publications on the economic and legal side of the IP system. Dr. Malte Köllner regularly presents current trends and developments in the IP industry in his lectures “IP Update“. Dr. Malte Köllner developed several legal services such as Flat Fee Prosecution and made a fundamental contribution to the area of patent valuation. Most recently, he initiated the worldwide DABUS project, clarifying the patentability of inventions made by artificial intelligence.
Katja Wulff, from Köllner & Partner, is Patent engineer (Germany). Areas of her expertise are patent law, the German Employees’ Invention Act (ArbnErfG), software, and biology. Katja Wulff holds a diploma in Biology from the University of Gießen and holds a degree in “Industrial Property Protection” from the Berliner Hochschule für Technik (BHT), the former Beuth University of Applied Sciences. She is active since 2017 in the area of IP law.