Notice No. 6/2022
of the President of the German Patent and Trade Mark Office concerning the temporary option to defer the grant of a patent in connection with the entry into force of the Agreement on a Unified Patent Court (UPCA)
2. May 2022
The prohibition on double protection, as it is referred to in Article II section 8 of the Act on International Patent Conventions (Gesetz über internationale Patentübereinkommen), is amended by Article 1 No. 1 lit. c) 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 (Federal Law Gazette I p. 3914). The amendment to Article II section 8 of the Act on International Patent Conventions shall enter into force on the date on which the UPCA enters into force in accordance with Article 89 thereof.
After the entry into force of the amendment to Article II section 8 of the Act on International Patent Conventions, the prohibition on double protection only applies to European patents which are not subject to the exclusive jurisdiction of the Unified Patent Court by making use of the exception of Article 83 (3) of the UPCA (known as opt-out). In this case, a national patent with the same subject-matter ceases to have effect. If, on the other hand, no opt-out has been declared and the European patent continues to fall under the exclusive jurisdiction of the Unified Patent Court, the national patent continues to have effect in addition to the European patent. However, under certain conditions, such double protection is subject to an objection to double demands (Article II section 18 of the Act on International Patent Conventions). European patents with unitary effect can also co-exist with a national patent without the latter ceasing to have effect.
If a European patent has already been granted, it is only possible to obtain double protection for national patents granted after the entry into force of the UPCA. In order to keep the option of such double protection open for applicants, the DPMA provides the following transitional measures:
If the subject-matter of a patent application is an invention in respect of which a European patent with the same priority has been granted to the same inventor or his/her successor in title with effect in the Federal Republic of Germany, and a request for examination under section 44 of the Patent Act has already been validly filed in the procedure before the DPMA, the patent applicant has the following options:
- Request for extension of time limits, which have not yet expired, for replying to a communication in the examination procedure (sections 44, 45 of the Patent Act): If a time limit set by the examining section for replying to a communication in the examination procedure under sections 44, 45 of the Patent Act has not yet expired, this time limit may be extended upon request.
- Request for deferment of the decision on the application: If a time limit set by the examining section has been observed by replying to a communication in the examination procedure under sections 44, 45 of the Patent Act, the decision on the application may be deferred upon request. If such a request is received by the DPMA only after the decision to grant has been issued, it is no longer possible to consider the request.
The extension of the time limit and the period of deferment shall be not more than eight months initially and not more than four months after deposit of the instrument of ratification by the Federal Republic of Germany under Article 84 of the UPCA.
The option to file these requests ends upon entry into force of the UPCA. The UPCA will enter into force on the first day of the fourth month after the deposit of the instrument of ratification by the Federal Republic of Germany (Article 89 (1) of the UPCA).
In order to speed up processing of requests, applicants are requested to indicate the publication number of their European patent when filing the request.
The President of the German Patent and Trade Mark Office
Last updated: 16 May 2022