Monday, 22 February 2016

German Draft Legislation for the UPC

The German Ministry of Justice and Consumer Protection (BMJV) has now published the draft ratification instrument and draft amendments to the Law on international patent conventions (IntPatÜG).

This blogger had been eager to learn how double protection would be dealt with.  Here it is: It will be possible to hold a national patent in parallel to a European Patent with Unitary Effect because, according to §15(1) of the draft amended IntPatÜG, the prohibition of double protection according to §8 IntPatÜG does not apply to European Patents with unitary effect. However, an infringement action based on such a national patent will be inadmissible if the EPC counterpart thereof is or was the subject of a procedure at the UPC (§18 of the draft legislation). This does not apply to nullity actions nor to utility models but does apply to cases where the UPC action is filed later than the national action.  The defendant may render any pending national infringement action inadmissible at any time by filing a parallel action for declaration of non-infringement.

This "prohibition of double-enforcement" is applicable for patents claiming the same priority (priority date or priority application?) and originating from the same inventor and insofar as the patents protect the same invention. In cases of doubt, the national court may stay the procedure.

The draft legislation is supposed to pass the parliamentary chambers (Bundestag and Bundesrat) in Summer 2016.

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