Dipl.-Ing. Josef Bockhorni
Doubtlessly, the European patent which is granted by the European Patent Office gains attractiveness with the creation of the unitary patent, respectively community patent. This is mainly effected by two measurements compared with the classic European patent, i.e. on the one hand, the abolition of the nationalization of the European patent in all those countries where the European patent is to be valid, and on the other hand the removal of the national translation criteria, which certainly leads to a significant reduction of costs.
Therefore, the question comes up whether the national German patent, which is granted by the German Patent and Trademark Office after a detailed substantive examination, still has its merits. We think that this is definitely the case for the reasons as described in the following:
The German patent is naturally the better way when – as it is often the case – a patent in Europe is only required for 2 to 4 countries. In many European countries, there is no independent substantial examination procedure, patents are rather only registered. In Germany, however, there is a well structured German Patent and Trademark Office with about 830 Examiners with all kinds of specialities and a respective background of experience as well as with a search tool which is comparable with that of the European Patent Office. That means that a reliable, internationally acknowledged examination as to novelty and inventive step is carried out. Thus, the German patent is a valuable and internationally acknowledged patent.
Hence, if the protection in Europe is sufficient in three to four countries, which is by the way very often the case as e.g. competitors only reside in certain countries and/or markets are concentrated there, the national way compared with the way via the European patent pays off.
We may describe this by using an example: Assuming that a patent is necessary in Europe only for the countries Germany, Switzerland, France and England. Clients from the USA or Japan usually already have an application text in English, i.e. a German translation is only necessary for Germany and Switzerland and a French translation for France. A substantial examination is only carried out in Germany and the UK, more or less registered patents are obtained in Switzerland and France. Here, the granted German patent is an indicator for the scope of protection of all these four national patents as within the scope of the claims of the German patent, the legal validity is confirmed by the GPTO after a thorough substantial examination.
The costs for that are insignificantly higher than with the European way where in the end the claims also have to be present in three languages. This is also true for the European unitary or community patent, respectively, which calls for an additional translation of the specification and claims into the English, German or French language.
A further advantage is that a central attack is not possible contrary the European patent. A successful appeal against the European patent or an invalidity action against the unitary patent inevitably leads to a cancellation of the whole patent.
In our example with four national patents in the countries Germany, Switzerland, France and Great Britain, the situation is different. A central attack is not possible. An invalidity action could be taken against the German patent, however, if this led to a limitation of the German patent or even to a cancellation, that does by no means mean that this would also be a prejudice for the national patents in the other countries. That means that the attack is more difficult for the infringer as far as both costs and chances of success are concerned. In other words, the position of the patent owner is stronger than that of the owner of the European patent.
The German patent is moreover also an interesting alternative in addition to the European patent. Here, it has to be taken into account that Germany represents the biggest market in Europe and is, in terms of Europe, of highest importance for home industry as well as for foreign industry. If the way of the European patent towards the community patent is taken, it is quite sensible to file a parallel German patent application, too. Thus it is possible to come to different claims for getting a broader scope of protection.
One advantage of the German patent application towards the European patent application is that the applicant can decide himself when the examination procedure starts. The deadline is a term of 7 years from the date of application. That means that one can easily wait for the granting procedure at the European Patent Office and can then file the request for application in Germany later on and formulate the claims in a way that a flanking protection in Germany parallel to the European patent is achieved with claims being advantageously different to those of the European patent. In the end, there is indeed a bigger scope of protection in Germany due to two patents, something that is inevitably disadvantageous for possible infringers.
Furthermore, there is the possibility of branching off a utility model which is possible from both the European patent application as well from the German patent application, however, if a patent in Europe is granted relatively quickly – which is not uncommon – the possibility of branching-off a utility model is constrained due to the fact that the branching-off of a utility model has to be effected within a short term from the grant of the patent. However, in this case, one or more utility models can still be branched off from a pending German patent application. Thus, it is possible to draft claims which are made in view of the actual infringement.
With regard to the scope of protection, too, the German examination procedure definitely has advantages compared with the European procedure. One big advantage of the German examination procedure is that it is easier to choose features from the overall context and incorporate them into the claim than it is possible in the European procedure. In the European examination procedure, it is more difficult to isolatedly choose one feature as the overall context is always decisive. In the European examination procedure, it is normally necessary to consider the overall context of the features which normally does not allow an isolated choosing or generalizing. It is rather the case that all features of the overall context must then be incorporated into the claim.
Furthermore, there are also advantages of the German examination procedure with respect to claims where defined areas are decisive which are determined by a lower and an upper limiting value. According to German practice, all values within this area are thereby disclosed and can therefore be used randomly for limitation, something that is not possible in this way in the European procedure.
A further decisive advantage of the national patents is also the jurisdiction in case of an infringement. One thing that has to be considered here is, that the infringement courts can be assigned foreign judges for the unitary European patent, too. When taking the proportional representation system into account, i.e. that every country assigns judges even if the country is a very small country and in Europe, we have many countries with a population of less than five million residents, it is clear that particularly in the first few years, judges are called for the Unified Court who lack sufficient experience in infringement litigations. As a result, the decisions by these infringement courts, particularly in the first few years, will not be predictable, a further considerable indication to continue with the national way.
Therefore, we are of the opinion that the national way, depending on the individual case, should still often be preferred to the European way, in particular when protection is only desired in a few countries.
Author: Dipl.-Ing. Josef Bockhorni (Patent Attorney), Update 1/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
