If the same applicant has been granted a European patent with the same scope as a national German patent, the latter loses its effect because of the prohibition on double protection in the International Patent Convention Act (IntPatÜG). This has made sense so far, since patent infringement suits and nullity suits - even regarding European patents - had to be filed with the national courts, which meant that the same German courts had jurisdiction, whether the suit was based on a European patent or a German patent.
The situation is changing fundamentally, however, as a result of the establishment of the Unified Patent Court. That will in future have sole jurisdiction for the new European patents with unitary effect and, after a transitional period, also for the familiar European bundled patents, whereas the national courts will retain jurisdiction for national patents.
The necessary legislative amendments to the German laws concerning the Agreement on a Unified Patent Court in order to ratify it are currently being drafted in the Federal Ministry of Justice and Consumer Protection (BMJV). So that it is possible to choose the most suitable form of protection for inventions by means of European and national patents, the BMJV’s recently published draft envisages that the prohibition on double protection should be abolished. If, however, an opt-out is declared for a European bundled patent during the transitional period provided for in the Agreement, i.e. the patent does not move to the jurisdiction of the new Unified Patent Court, the existing arrangement continues to apply.
In order to prevent two courts from being seised of cases concerning the same subject matter and covering at least overlapping jurisdictions even without the prohibition on double protection, a prohibition on double seisure has been introduced into the draft bill. This means that a German court would dismiss a suit as inadmissible if proceedings were already pending before the European Unified Patent Court regarding the same case, or if they subsequently became pending.
The abolition of the prohibition on double protection, which practitioners have been calling for for a long time enables the patent proprietor to choose whether he would rather sue an infringer before a German court under a national German patent, or whether he wishes to bring the case before the new Unified Patent Court for the entire European territory falling within the jurisdiction of the Unified Patent Court. Wherever Germany is a core market for the patent proprietor and the invention, national prosecution will be a less expensive option and one which is easier to assess, in view of the familiar case law of the German courts. The value of a national German patent is thus being enhanced, and many applicants will seize the opportunity to keep the national legal process open in future.