What about double patenting between a patent prosecuted through a national patent office and an UP?

National patent law has been drawn up to deal with double patenting issues between national validations of a “traditional” European patent and a patent prosecuted through a national patent office. Unsurprisingly the manner in which double patenting is addressed differs between countries for this reason.

Provisions in the UK:

At present the Comptroller of the UK Intellectual Property Office is required by section 73(2) of the UK Patent Act to revoke a UK patent if it is found to protect the same invention as a UK validation of a traditional European patent as long as the two patents were filed by the same applicant or a successor in title and have the same priority date.

Part of the ratification of the UPC agreement requires UK patent law to be amended. The relevant amendments have been agreed by parliament in the form of The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 No. 388, which states in Schedule A3 that section 73(2) applies to European patents with unitary effect. Double patenting between a UP and a UK patent is consequently to be dealt with in the same manner as double patenting between a UK validation of a traditional European patent and a UK national patent. This means that the Comptroller will be required to revoke a national UK patent if there is double patenting with a UP.

Provisions in Germany:

In Germany double patenting problems between a German validation of a traditional European patent and a German national patent are resolved by the German national patent automatically losing its effect to the extent that it protects the same invention as the German validation of the European patent.  To avoid this effect applicants have previously withdrawn the designation of Germany in European patent applications if a German patent.

German patent law also requires amendment in light of the UPCA and the relevant amendment have been passed by both of the German houses of parliament in spring of this year.  Note, however, that at the time of writing a constitutional challenge to this law is currently pending.

The manner in which double patenting between a UP and a German national patent is resolved is markedly different from the above in that double patenting of this nature is now explicitly allowed.  However, to avoid a situation in which a defendant can be sued under both such patents the courts are required to deem an infringement lawsuit brought under the German national patent inadmissible if a corresponding lawsuit is pending at or has been finally disposed of by the UPC.

It is worthwhile to note that, those European patent applications for which the German designation has already been withdrawn cannot mature into a Unitary Patent as UPs require that the European patent is granted for all UP member states.

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