The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Thursday, 18 February 2016

The unitary patent: a reason to allow double patenting?

Double cat
"Dual protection" or "double patenting" refers to two patents with the same effective filing date for the same invention having effect in the same territory. The problem of dual protection first arose under the European Patent Convention in relation to EPC "bundle" patents and national patents. Article 139(3) EPC allows the Contracting States to prescribe whether and on what terms an invention disclosed in both a European patent and a national patent having the same date of filing or priority may be protected simultaneously by both applications or patents. Most Contracting States opted to disallow dual protection using different mechanisms (i.e., in Germany the national patent looses its effect automatically, while in the UK the national patent can be revoked by the Comptroller, see  Section 73(2) UK Patents Act 1977). There are, however, some Contracting States that allow double patenting under the EPC, notably Austria, Denmark, Finland, Hungary and Sweden (see p. 290 sqq. of National Law Relating to the EPC, 16th ed. 2013, for an overview of the legal regimes regarding double patenting in EPC Contracting States).

With regards to the unitary patent, a number of questions regarding dual protection arises. First, do the national provisions regarding double patenting under the EPC extend to unitary patents? In Germany, there is a controversial discusion in the doctrine, but a consensus seems to emerge that Article II § 8 IntPatGÜ does not apply to unitary patents, because unitary patents are not "European patents" in the sense of said article. In the UK, similar arguments would seemingly apply to Section 70(2) Patents Act, which also speaks of "European patent" - does this extend to a "European patent with unitary effect"?

Secondly, how should the relationship between "duplicate" unitary and national patents be regulated? The European legislator has not explicitly addressed the issue in Regulation 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, However, Recital 26 of Regulation 1257/2012 suggests that
Patent applicants should remain free to obtain either a national patent, a European patent with unitary effect, a European patent taking effect in one or more of the Contracting States to the EPC or a European patent with unitary effect validated in addition in one or more other Contracting States to the EPC which are not among the participating Member States.

While the language is not crystal clear, it seems evident that the legislator believes the unitary patent, the EPC "bundle" patent and national patent are alternatives ("either ... or"), i.e., they should not be obtained for the same invention. Recital 26 does not explain anything, but rather orders ("should") that the applicant should chose at the earliest possible time whether to obtain a European "bundle" patent, a European patent with unitary effect or a national patent. It has been argued that such Recitals should have binding effect on the Member States, which seems questionable to me (see also Chudziak in GRUR 2015, 839, 843).
If Regulation 1257/2012 is silent on double patenting, how should the participating Member States address the issue? Nieder argues that double patenting should be allowed vis-a-vis unitary patents because the new unified patent court brings too much legal uncertainty regarding the effectiveness, cost and timeframe of enforcement. Chudziak agrees that at least temporarily, until it is established whether the new enforcement regime functions properly, double patenting should be allowed. Traditional arguments against double patenting are that there is no interest worthy of protection in having two patents for the same invention and that it creates an unecessary burden on competitors trying to clear the path.

In its proposal for the legislation implementing the Unified Patent Package in Germany, the German Ministry of Justice suggests a compromise: double patenting vis-a-vis unitary patents is not prohibited, but if an action regarding a unitary patent for the same invention is pending before the Unified Patent Court or is made pending during the national proceeding or has been finally adjudicated by the UPC, then the German court will dismiss the action brought based on the national patent insofar as the patents concern the same invention, provided that the defendant raises the objection before the beginning of the oral hearing (see proposed Article 18 Gesetz über internationale Patentübereinkommen, p. 6 of the linked PDF).


Kant said...

Maybe for important inventions, two parallel applications should be filed (with different applicant's names of course) with the intention that one is opted out when granted and the other has unitary effect.

Vicki salmon said...

Thank you for raising this issue - it is important to track what is happening across Europe on this and other implementation topics. Without clear requirements to harmonise, we are likely to end up with a more complicated system.

The question of keeping a national UK patent for the same invention as one protected by a Unitary patent was discussed during the UK consultation process. The point of "creating unnecessary burden on competitors clearing the path" won out. The intention is for the Comptroller to revoke the UK national patent if a unitary patent is granted for the same invention. The provisions to implement this are in the draft legislation which is currently before Parliament. (

If you want to keep the national UK patent, then, as now, you must make sure that the claims are sufficiently different to avoid the provisions. (By the way, I think you meant to refer to s73(2) UK Patents Act 1977, not s70 which relates to unjustified threats.)

Mark Schweizer said...

Vicki, you are of course right regarding Section 73(2) Patents Act. I have corrected the post accordingly.

Meldrew said...

Of course the issue of double patenting will make for some interesting decision making. The implementation set out in the SI gives the nervous nellies who are concerned about Article 27(k) UPC the choice of whether:
• to just go for a UK national patent without an exemption of uncertain effect;
• to go for a European bundle omitting the UK, so they can keep a parallel national patent without an exemption of uncertain effect, and thereby potentially have to run two actions rather than one just UPC action;
• to forego the UK national patent without an exemption of uncertain effect once the European is granted if the claims are of commensurate scope, and thereby run the risk of UK nation declaration of non-infringement actions attempting to forestall the expanded scope of contributory infringement;
• to have different claims in a European and a national (Which one do you want to have broader protection? Do you patent different parts of a system with national and European patents?);
• to opt-in, opt-out, shake it all about;
• to go unitary for the expanded contributory infringement scope;
• to bury one’s head in one's hands and cry “it’s too difficult”;
• etcetera.

In contrast, those in other jurisdictions that have read the EPC will have a much simpler decision making process, and those who have preserved or indeed introduce double protection have given themselves a safeguard against UPC failure.

What a mess.

Anonymous said...

It is indeed a mess.
Who ever said that UPC is something long awaited for as it will achieve simplification and eventually boost innovation in Europe, especially for SMEs?
Answer: the politicians who decided without having a clear idea of what they have actually decided and the consequences thereof.

As far as SMEs are concerned, there is question of a litigation insurance for SMEs.....

Another source of problem with the UP and the UPC are national prior rights. They have been forgotten. Unitary means the same claims for all contracting states, whereas under the EPC claims can be different if the applicant wants the EPO to take into account national prior rights. It means that in presence of a national prior right in one of the contracting states, the applicant/proprietor will have no choice than to limit all his UP with respect to said one national prior right. Was this really wanted?

Proof of the pudding said...

How is it that implementation of the Unitary Patent Package, which comprises two EU Regulations (nos. 1215 and 1257/2012) and an international treaty (the UPCA), can generate differences in laws between different countries?

The answer is of course that the UPP only affects EPs and EPUEs, and not national patents (though, as several commentators have pointed out beforehand, that distinction is questionable, as the EPC requires EPs and national patents to have the same effect).

Because of this, the signatories to the UPCA are merrily working away at implementing solutions that (e.g. due to new differences in the laws applying to national patents) may end up having a significant effect upon partitioning / fragmentation of the internal market. I may be mistaken, but I was under the impression that the European Commission takes a dim view of that kind of effect.

So how can the UPP be justified if it introduces disharmony? The answer, of course, is supposed to be a more than counterbalancing increase in harmonisation for the law applying to patents granted by the EPO. However, the CJEU has confirmed that, for a EPUE, the "harmonisation" for EPs need only be achieved via the application of a single (national) law across the Participating Member States for that patent. Full harmonisation of different national laws is apparently not required - and certainly will not be achieved via the amendments currently proposed / implemented in various UPCA countries.

I can fully understand the reasons why we have reached the point where a "unitary" patent can only be achieved via this kind of messy compromise. However, I am shocked that the political momentum behind the UPP is such that very little attention has been paid to the questions of whether it will all be worth it in the end, and whether the new system will achieve the intended goals.

Maybe I worry too much about these points, but it appears to me that too much is being left to chance. Even a recent article in a special UPC supplement to CIPA magazine concluded that it will take many years for the courts to iron out the wrinkles (and significant uncertainty) caused by questionable divergences between different national laws on infringement. Whilst I am confident that these divergences will be resolved eventually, I still find it amazing that almost no effort is being made to resolve such fundamental issues before the UPP comes into force. To me, that represents the biggest missed opportunity of all.

With this in mind, I shall sign off with one final thought. How does applying different national laws to different EPUEs conform with the ECHR, and in particular the prohibition of discrimination on the grounds of nationality? Remember that residence as defined in Article 7 of Reg. 1257/2012 could, at least in some circumstances, be the same as nationality. For me, this observation represents a good reason why, in the end, complete harmonisation of national laws of the UPCA member states will be the only practical way forward.

I'm a robot said...

To make things easier, according to the EPO (comments on Rule 5 UPP):

Unitary effect can also be requested where a European patent was granted to multiple proprietors in respect of the same or different participating member states as long as said European patent has been granted with the same set of claims in respect of all the participating member states.

Meldrew said...

"Unitary effect can also be requested where a European patent was granted to multiple proprietors in respect of the same or different participating member states as long as said European patent has been granted with the same set of claims in respect of all the participating member states. "

I should cocoa. That means a request for unitary effect had the effect of an assignment. Poppycock.

Anonymous said...

In practice the EPO can refuse to grant a European patent under the double patenting principle by applying general principles of law of the EPC member states under Art.125 EPC, but can only do so before the patent is granted - i.e. it can refuse to grant the patent (Art.125 only mentions the application and not the granted patent).

Once the European patent is granted, however, double patenting does not form one of the grounds for opposition before the EPO under Art.100 EPC nor does it form one of the grounds for revocation under Art.65 UPCA which is only possible on the grounds given in Art.138 EPC and Art.139(2) EPC (Art.138 EPC does not deal with the issue of double patenting nor does Art.139(2) EPC). It does not mention Art.139(3) EPC as a grounds for revocation.

That is to say, the UPCA does not allow the UPC to address the issue of double patenting regardless of whether the duplicated rights exist in another EP patent, unitary patent, or national patent. Consequently, once the European patent is granted and then converted into a unitary patent, it will not be possible to revoke it on the grounds of double patenting - this can only happen by the EPO refusing to grant a patent.

Furthermore, the only route open to national law to deal with double patenting is to revoke the corresponding national patent valid for the same invention in the same state, made possible by Art.139(3) EPC. This was, in fact, the arrangement in the UK. However, this is not open to the UPC, because it has no jurisdiction over national patents (Art.3 UPCA).

Anonymous said...

If Article II § 8 IntPatGÜ would not apply to unitary patents, because unitary patents would not be "European patents" in the sense of said article, then why does that article mention opposition or opposition proceedings involving them. The words are the same.
The unitary patent is a European patent having effect and a unitary character in 13 to 26 EU member states.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':