With the start of the Unitary Patent system on June 1, 2023, a practical question arises for many applicants: can I hold a national German patent for the same invention alongside a European patent with unitary effect (the “Unitary Patent”) – or does the prohibition of double protection stand in the way? The answer is clear: for the Unitary Patent there is no prohibition of double protection. That is precisely what distinguishes it from the former position regarding a classic European patent validated in Germany. This article explains the reform, the decisive opt-out boundary, and the strategic consequences.
The prohibition of double protection until May 31, 2023
Until the patent reform, Article II § 8 IntPatÜbkG imposed a strict prohibition of double protection. Where a European patent of the same priority and the same scope had been granted to the same inventor or successor in title with effect for Germany, the same invention could not at the same time be protected by a national patent. The national patent became ineffective to that extent as soon as the European patent could no longer be revoked in opposition proceedings. Anyone taking the European route effectively had to give up their parallel German right.
The redesign as of June 1, 2023
With the entry into force of the Agreement on a Unified Patent Court (UPCA), Article II § 8 IntPatÜbkG was fundamentally recast. Since then it is, in principle, possible to hold a national German patent alongside a European patent or a Unitary Patent. The prohibition of double protection has not disappeared entirely, but it has been cut back to a narrow scope of application.
The decisive factor is now jurisdiction: the prohibition applies only to European patents for which an opt-out under Article 83(3) UPCA has been declared – that is, patents which are not (or no longer) subject to the exclusive jurisdiction of the Unified Patent Court (UPC). Only in that case does a national patent for the same subject matter lose its effect. If, by contrast, no opt-out is declared and the European patent remains within the UPC’s jurisdiction, the national patent retains full effect alongside it.
Why the Unitary Patent is never affected
For the Unitary Patent, the answer is therefore unambiguous. The European patent with unitary effect is necessarily subject to the jurisdiction of the UPC; an opt-out is excluded for the Unitary Patent from the outset. The only constellation in which the prohibition of double protection can still apply – the opted-out patent – can therefore never arise for the Unitary Patent. A parallel national German patent remains fully effective alongside the Unitary Patent.
The position can be summarised as follows:
- Unitary Patent alongside a national patent: double protection permitted – always.
- Classic EP without opt-out alongside a national patent: double protection permitted (UPC jurisdiction).
- Classic EP with opt-out alongside a national patent: the prohibition applies – the national patent loses its effect to that extent.
Double protection and double patenting – two different questions
In practice, two terms are often conflated. The prohibition of double protection (Article II § 8 IntPatÜbkG) concerns the effect of parallel rights after grant. This must be distinguished from a prohibition of double patenting at the granting stage – that is, the question of whether the same invention may be brought to grant twice at all.
Between a German patent and a Unitary Patent there is no bar in this respect either: the same application can be brought to grant both as a national patent at the DPMA and, via the European route, as a Unitary Patent. No prohibition of double patenting exists here. The position is different only internally at the EPO, for two identical European applications by the same applicant – for instance where the same invention is to be granted both as a classic bundle patent and as a Unitary Patent; such a double grant within the European procedure is not possible. The relationship between the EP and the DE patent, however, is not covered by this.
The limit: the objection of double enforcement
The fact that double protection is permitted does not mean that a proprietor could proceed without limit from both rights in parallel. The corrective is the objection of double enforcement under Article II § 18 IntPatÜbkG. It is a protective mechanism for defendants: a party already sued from the Unitary Patent before the UPC over the same act of infringement can prevent being pursued again, in addition, from the national patent for the same subject matter before the German courts – and vice versa. Double protection thus opens up additional options for the proprietor, but does not lead to double liability of the infringer.
Strategic significance
The new legal position makes a parallel national patent an attractive flanking right alongside the Unitary Patent. The principal reason is that the Unitary Patent stands or falls centrally. A successful revocation action before the UPC brings it down with effect for all participating Member States. A parallel German patent, subject to the national courts, is unaffected by this and can safeguard protection in Germany. There is also the choice of forum – the UPC on the one hand, and the German courts with their established practice on the other.
These advantages must be weighed against the additional costs and administrative effort of a second right. As before, there also remains the option of additionally filing a German utility model or branching one off from a European application.
Conclusion
Since June 1, 2023, the prohibition of double protection is no longer an obstacle to combining a Unitary Patent with a national German patent: because the Unitary Patent is necessarily subject to the UPC’s jurisdiction and cannot be opted out, the prohibition can never apply here. The national patent remains fully effective and can be used deliberately as a hedge against central revocation or for forum choice. The old prohibition of double protection lives on only for the opted-out classic European patent. Anyone considering a parallel rights strategy should factor in the objection of double enforcement and the cost implications from the outset.
