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Important notice of 9 November 2023

Entry into force of the Act Adjusting Patent Law Provisions Due to the European Patent Reform of 20 August 2021

On 1 June 2023, the substantial provisions of the Act Adjusting Patent Law Provisions Due to the European Patent Reform (Gesetz zur Anpassung patentrechtlicher Vorschriften auf Grund der europäischen Patentreform) of 20 August 2021 (externer Link Federal Law Gazette I 2021, p. 3914) entered into force along with the Unitary Patent system (see announcement of the Federal Ministry of Justice of 27 June 2023, externer Link Federal Law Gazette I 2023, no. 175). As a result, a number of important amendments have been made to the Act on International Patent Conventions (Gesetz über internationale Patentübereinkommen) and the Patent Act (Patentgesetz). Please find below information on the amendments the DPMA considers to be of particular importance:

1. Adjustment of the Act on International Patent Conventions to the Unitary Patent system
a. Amendment to the prohibition on double protection as of 1 June 2023

Until 31 May 2023, German law prohibited double protection (referred to as “prohibition on double protection”) for national patents and European patents. Accordingly, it was not possible to obtain protection under a national patent for an invention in respect of which a European patent with the same priority and the same scope had been granted to the same inventor with effect in the Federal Republic of Germany. The national patent became ineffective if the inventor had been granted a European patent for the same invention that could not be revoked in opposition proceedings any more.

On 1 June 2023, fundamental amendments to the prohibition on double protection became effective.

Basically, since 1 June 2023, it has been possible to hold a national patent in addition to either a European patent or a European patent with unitary effect (referred to as "Unitary Patent") (see Article II section 8 of the Act on International Patent Conventions). Since then, the prohibition on double protection has applied only to European patents that are not subject to the exclusive competence of the Unified Patent Court due to an opt-out pursuant to Article 83(3) of the Agreement on a Unified Patent Court. The combination of a national patent and a European patent for which an opt-out has been declared is the only situation in which a national patent with an identical subject matter still loses its effect, that is, double protection cannot be obtained. However, if no opt-out declaration is made and the European patent is still subject to the competence of the Unified Patent Court, the national patent continues to have effect alongside the European patent.

However, under certain conditions, such double protection is subject to the objection to double demands (Article II section 18 of the Act on International Patent Conventions), which is a "protective mechanism for defendants". Defendants in infringement proceedings thus cannot be sued both under a national patent before national courts and under a European patent or a Unitary Patent before the Unified Patent Court.

In addition, there is still the option to apply for a German utility model at the same time or split off a German utility model from a European patent application effective in the Federal Republic of Germany.

b. Further important amendments to law

Furthermore, sections 15 to 20 have been incorporated into Article II of the Act on International Patent Conventions. They stipulate which of the existing provisions of the Act on International Patent Conventions apply to the Unitary Patent and they contain new provisions. These new provisions concern, for example, the relationship of European patents and Unitary Patents, a measure referred to as the "safety net for patent proprietors" in cases in which unitary effect is denied, the legal framework for compulsory licences and the waiver of the Unitary Patent:

  • Article II section 15 (2) of the Act on International Patent Conventions contains an essential provision that excludes a coexistence of European patents and Unitary Patents in the Federal Republic of Germany. Accordingly, upon the date of publication by the European Patent Office (EPO) of the mention of the grant of the European patent in the European Patent Bulletin, the effect of the European patent in the Federal Republic of Germany is deemed not to have occurred if the unitary effect of the European patent is registered in the Register for unitary patent protection.
  • Article II section 15 (3) of the Act on International Patent Conventions provides for what is referred to as a "safety net for patent proprietors" in the event of a refusal of the request for unitary effect. In this case, the proprietor usually has an interest in maintaining their patent in the form of a European patent. This special provision concerning the determination of the due date of the national annual renewal fees ensures that a timely payment of these fees for the European patent effective in the Federal Republic of Germany is still possible.
  • Article II section 16 of the Act on International Patent Conventions clarifies that, with regard to the national provisions concerning compulsory licences (section 24 of the Patent Act), Unitary Patents have to be treated like national patents.
  • Article II section 17 of the Act on International Patent Conventions clarifies that German law (section 20 (1) no. 1 of the Patent Act) does not apply if the Unitary Patent is waived and that, accordingly, such a waiver cannot be declared to the DPMA.

2. Adjustment of the Patent Act to the Unitary Patent system

In addition, the Act Adjusting Patent Law Provisions Due to the European Patent Reform results in an amendment to the Patent Act. Since 1 June 2023, the following information on the Unitary Patent (section 30 (1) sentence 3 of the Patent Act) has also been entered in the register maintained by the DPMA (DPMAregister):

  • the date of registration of the unitary effect of a European patent in the Register for unitary patent protection (see Article 3(1) of Regulation (EU) No 1257/2012); and
  • the date of effect of the Unitary Patent, that is, the date of publication by the EPO of the mention of the grant of the European patent in the European Patent Bulletin (Article 4(1) of Regulation (EU) No 1257/2012).

Furthermore, in order to provide the public with this information, the DPMA has decided to also enter in the register the date on which the request for unitary effect has been filed.

The DPMA receives this information from the EPO; the information is displayed in the procedural data section in the register. Practical information on how to search the register is available on the homepage of DPMAregister.

Last updated: 6 December 2023