IP Quick Tip: Double patenting in Europe

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For a deep dive into the Unitary Patent and Unified Patent Court, please visit: https://www.bardehle.com/en/upc-special

Most European jurisdictions, including Germany, have prohibited double patenting for a long time. This means granting one applicant two patents with identical claims. Also, the EPO’s Enlarged Board of Appeal held in its decision G 4/19 that an applicant has no legitimate interest in obtaining two European patents for identical subject-matter.

However, this does not mean that an applicant cannot be granted two patents for one invention in Europe. Also, with the upcoming UPC, it is time to revisit strategies on double patenting:

Firstly, the EPO’s ban on double patenting only applies to applications that have identical claims.

There is no obstacle that prevents an applicant from seeking two claim sets for one invention. A typical example might be obtaining a first patent with narrow claims, and then following up with a divisional application with broader claims.

There are good reasons to pursue both claim sets and to maintain both patents. If a narrow patent still covers a product that is difficult or impossible to re-design, such as a patent that reads on a standard, this patent might be a highly valuable asset, since it will be very difficult for third parties to attack its validity. At the same time, the broad patent has value, since it might cover more products or future implementations.

Secondly, with the UPC on the near horizon, the law in the national jurisdictions on double patenting may change.

For example, in Germany, an applicant will be allowed to have a European patent – be it a bundle patent or a unitary patent – and a German national patent with identical claims if the European patent has not been opted out.

This is well spent money because later, when it comes to enforcement, you will have the choice: Enforcement of the European patent is subject to the jurisdiction of the UPC, while the German patent is enforced before national courts.

Thus, if you would like to add flexibility to your portfolio of European patents, think about this approach for selected cases.