The term of a patent is essentially harmonized among WTO member countries as being 20 years from the date of filing of a patent application (Article 33 TRIPS).
In certain cases, it is possible to extend the duration of protection of a patented product beyond the 20 years term. For instance, in the European Economic Area, it is possible to obtain a supplementary protection certificate (SPC) which provides a protection during five additional years after patent expires, in particular for pharmaceuticals and plant protection products. Furthermore, there are also other IP rights through which a certain scope of protection for an invention can be achieved. For example, the European and German design law provides a design protection which grants the owner a maximum 25 years protection. Moreover, the trademark law offers a virtually unlimited duration of protection, however both trademark and design only for non-technical subject matters. Moreover, the German Federal Court of Justice (BGH) has recently ruled that, under certain circumstances, a protection based on unfair competition law (UWG) for a product previously protected by a patent which has subsequently expired, can still be possible, see e.g. BGH Decisions “Exzenterzähne” (Jan 22, 2015) and “Bodendübel” (Dec 15, 2016).
However, even apart from the specific cases of SPC, UWG, trademark or design protection, there still can be substantial differences regarding the duration of patent protection, as we will see below on an example comparing the European and German patent systems.
1. Effect of Priority
According to both German and European patent systems, claiming priority does not affect the 20 years term of a patent, i.e. for determining the term of a patent, the actual date of the patent filing – and not the priority date – is the relevant date. For European patents, this can be deduced form the fact that Art. 89 EPC related to the effect of a priority does not mention Art. 63 EPC which defines the term of a patent. For German national patents, this can be deduced from the wording of § 16 PatG which also makes no reference to priority date.
Hence, by filing a first patent application and by filing a subsequent patent application under claiming the priority of the first patent application, the last day of the patent protection can be shifted to the end of a 21 years period, calculated from the filing date of the first patent application.
2. Special Case of Usurpation (Non-Entitlement)
In the case when a person other than the applicant is entitled to the grant of the patent, the entitled person may, under certain circumstances, file a new patent application in respect of the same invention. In particular, in the case of a European patent application, if (by a final decision of a responsible authority) it is adjudged that a person other than the applicant is entitled to the grant of the European patent, the entitled person can file the new patent application for the same invention, Art. 61(1)(b) EPC.
Different from the European Patent Convention, in the German patent system, the usurpation (in German: “widerrechtliche Entnahme”) represents a ground for opposition. Further, according to § 7(2) PatG, if a patent is revoked on account of opposition filed on the ground of usurpation or if opposition results in the surrender of the patent, the opponent can himself file an application in respect of the invention within one month of the official communication thereof.
In both, European and German systems, the new patent application filed by the entitled person in the case of usurpation can claim the original priority of the previous patent application which was filed by the non-entitled applicant. In other words, the new patent applicant inherits the priority of the previous patent application.
In the case of a new European patent application filed by the entitled person, the provisions governing European divisional applications are applicable, cf. Art. 61(2) EPC. Hence the new European patent application shall be deemed to have been filed on the date of filing of the earlier application, cf. Art. 76 (1) EPC. Accordingly, the filing of the new European patent application does not influence the overall duration of the European patent. In the case of a new German patent application filed under § 7(2) PatG, however, the filing date is still the actual filing date of the new German patent application. Therefore, the patent term is calculated from the actual filing date of the new German application, resulting in a re-calculation of the patent termination date.
This can lead to substantial differences between the German and European systems in determining the duration of patent protection based on a new patent application filed by the entitled applicant.
The graph below illustrates this effect of prolongation of the patent protection of a German national patent in the case of a new patent filing as described above.
In this hypothetical example, it is assumed that the non-entitled applicant files the patent application by the end of the priority year and that the grant procedure takes, for example, 8 years. The entitled applicant files the notice of opposition at the end of the opposition period of 9 months and the opposition proceedings take, for example, 3 years and two months. At the end of the one-month period of § 7(2) PatG, and hence after 13 years from the priority date, the entitled applicant files a new patent application for the same invention, whereby the term of the patent is to be calculated anew, from the new filing date.
Therefore, the term of the patent protection conferred by the German patent based on the new patent application will be terminated, in this example, in 33 years from the priority date of the previous patent application filed by the non-entitled person. Taking into consideration how long sometimes patent prosecution and opposition proceedings take, the termination date of the patent can be shifted in total up to 40 years or even more from the priority date of the previous patent application.
3. Scope of protection
The differences between the European and German patent systems, discussed above, can lead to some interesting consequences, in particular, in the case of parallel European and German patents. According to Art. II § 8 (1) IntPatÜG (German Law on International Patent Treaties), in the case when a German and a European patent effective for Germany, claiming the same priority, are granted to the inventor or his legal successor, the scope in which the invention is protected by a European patent, the German patent has no effect. Moreover, the protection of the German Patent once lost due to the prohibition of double patenting based on § 8(1) IntPatÜG, will never be healed again, cf. § 8(2) IntPatÜG.
Especially because of this unhealable damage the German patent may suffer and in view of the above-mentioned possibility of extention of the patent protection, care should be taken while deciding about taking actions against the non-entitled applicant in the case of parallel German and European patents.
Although the term of patent for both European and German patents are defined as twenty years from the date of filing, the actual duration of patent protection can differ significantly.
In the case of usurpation (widerrechtliche Entnahme) the “effective term” or the actual duration of patent protection for German patents can be extended significantly beyond 21 years from the priority of the previous application filed by a non-entitled applicant.
The possibility of “term extension” for German patents should be kept in mind and can serve as an additional argument in favour of patent monitoring not only on the European level, but also covering national German patent grants.
You are encouraged to give your feedback, especially to the following points:
What about your national jurisdiction? Are the provisions related to the filing date of divisional applications, applicable for new applications filed by the entitled person, in the case of usurpation?
What about the balance of interests? Does the possibility of maintaining the patent protection up to 40 years or longer (at least theoretically) undermine the public interest to have an unlimited access to the invention after a reasonable time period?