In particular, there are significant changes to the prohibition of double protection (Article II § 8 IntPatÜbkG). According to its new version, the prohibition of double protection will in future only apply to European patents for which an opt-out has been validly declared (Sec. 8 (1) IntPatÜbkG new version). A parallel German patent loses its effect on the day on which the opt-out has become effective. However, if the opt-out is subsequently withdrawn under Article 83(4) EPC (so-called opt-in), the German patent which ceased to have effect will not be restaured. European patents with unitary effect (EPUE) can also be accompagnied by a German national patent without the latter losing its effect.
The new rules regarding the prohibition of double protection make it much more attractive not to declare an opt-out, but instead to pursue the national application proceedings, in parallel to the European patent. It is also worth considering claiming priority for a German subsequent application if an EP application was filed first. In this way, one can preserve the possibility of proceeding against acts of infringement before the Unified Patent Court on a Europe-wide basis without giving up the option of suing before the national courts from the German patent. The strengthening of the European patent with unitary effect should also be emphasised. For the EPUE, the prohibition of double protection falls. On the one hand, the risk that an EPUE will be revoked, for all countries, within one single proceeding before the Unified Patent Court, becomes less fearful. On the other hand, this strategy enables a flexible reaction in the event of a patent infringement. The Explanatory Memorandum to the Act states: “It is therefore proposed to reorganise the relationship between a national patent and a European patent with unitary effect as well as between a national patent and a European patent. The proposed system results from a synopsis of Secs. 8, 15 (1) and 18 IntPatÜbkG. As a rule, it shall be possible to hold a national patent in addition to a European patent or an EPeW.
The provision only applies to national patents granted after the entry into force of the UPCA. Thus, it does not depend on the application date, but only on the date of grant. German national patents that are about to be granted should therefore be checked to see whether the grant could be delayed in order to benefit from this possibility. It is excluded, however, to proceed before the Unified Patent Court and simultaneously before a national court based on one and the same infringement case from a European patent and a German patent with the same content (Article II Sec. 18 IntPatÜbkG amended, so-called defence of double attack). This does not affect the possibility to apply for preliminary relief before both courts in parallel (Article II Sec. 18 (4) IntPatÜbkG).
The law also regulates the relationship between the German part of the EP and the European patent with unitary effect (EPUE). According to Article II Sec. 15 (2) IntPatÜbkG the German part of the EP ceases to exist as soon as the unitary patent is validly granted. However, if the request for unitary effect is rejected, the German part of the EP can be restaured according to Article II, Sec. 15 (3), IntPatÜbkG, the renewal fee for the German part of the EP can still be paid after the decision on the refusal of the registration of the unitary effect has become final; this prevents dangerous gaps, because it cannot be excluded that a final decision on the validity of the registration of the unitary effect is made only after the renewal fee in Germany for the European bundle patent has already become due. However, Rule 97 of the Rules of Procedure of the UPCA provides for an accelerated procedure for this purpose, which is to be decided in less than four months at second and final instance.
Caution is required with regard to the claim for compensation in the case of the unitary patent. This is because before the unitary effect is registered, it is treated like an ordinary European patent (article II § 15 (1) IntPatÜbkG with reference to article II §§ 1, 2 IntPatÜbkG). Here, too, the requirement to file a translation of the patent claims into German remains. This, once againm, speaks in favour of a strategy of parallel national and European applications.
The newly inserted articles II §§ 19 and 20 IntPatÜbkG regulate the enforcement of judgments of the Unified Patent Court: Compulsory and summary proceedings may be instituted before the German Patent Litigation Division in whose district the defendant has his seat or in which enforcement is sought (Article II § 19 IntPatÜbkG); a separate grant of a clause is not required, see Article 82 (1) p. 2 UPCA. Sections 802a et seq. of the Code of Civil Procedure (for enforcement of pecuniary claims) apply to enforcement, as do Sections 887, 888 and 890 for enforcement of fungible acts, unjustifiable acts and obligations to tolerate or to refrain from acts. A translation of the underlying judgment into German by an authorised translator is required for enforcement (Article II § 19 (2) IntPatÜbkG).
In addition, the UPCA also opens the possibility of applying to the court of first instance for administrative and/or penalty fines, which are then imposed in accordance with Article II, Article 20 of the UPCA, and enforced by means of the Judicial Recovery Order. At least for the enforcement of periodic penalty payments and periodic penalty payments, this appears to be the more sensible way, since then – comparable to the current situation in Germany – the Division of the Unified Patent Court that has issued the judgment will interpret it.
Finally, the Explanatory Memorandum to the Amending Act deals with the (highly controversial) question of which law national courts must apply when a European patent is the basis of an infringement dispute for which an opt-out has been declared or in the context of the parallel jurisdiction of the Unified Patent Court and national courts. With reference to the “Interpretative Note” of the Preparatory Committee for the Establishment of the Unified Patent Court of 29 January 2014 (available on the internet at https://www.unified-patent-court.org/news/interpretative-note—consequences-application-article-83-upca), the German legislator takes the position that then IntPatÜbkG and PatG are directly applicable.
In the meantime, further preparations for the start of the Unified Patent Court and in particular for the phase of provisional applicability of institutional provisions are underway. At the end of September, Germany ratified the so-called PPA Protocol. With this protocol, the provisions on the institutions of the UPC will be applied in advance so that the bodies of the UPC can be constituted and, in particular, judges can be elected, the Rules of Procedure adopted and court buildings logistically set up. The IT system will also be operational by then and, in particular, will be able to receive opt-out declarations even before the UPCA enters into force as a court.
On 15 October 2021, Slovenia ratified not only the UPCA but also the PAP Protocol. Only one more state needs to ratify so that the preparatory phase can starticle The most promising candidate is Austria. There, the legislative procedure to ratify the PAP Protocol was initiated in July and is expected to be completed in December 2021 or January 2022. The PAP Protocol will enter into force on the day after the required number of ratifications is reached.
