CHANGES IN GERMAN IP LAWS
The German parliament has adopted some major changes in the German IP laws. The most important changes will be explained here-below:
1) German Patent Law
a) Filing of patent applications in foreign languages
It has been already possible to file national patent applications in foreign languages. The periods for filing the German translation have been amended. Generally, three months after the filing date, a translation has to be filed. For French and English applications, the translation may be filed up to 12 months after the application date, latest 15 months after the priority date. However, for special cases, the Examiner may request prior to that date a translation.
Further, the legal consequence in case of not filing of the translation has been amended. If no translation is filed, the application is now deemed to be withdrawn. Thus, it is now possible to keep the priority right of the German patent application, even without filing of a translation.
Unless the Examiner requests a German translation, it should now be possible to obtain from the German Patent and Trademark Office a first opinion with respect to patentability based on an English application text, with relatively low official fees (300 EUR for a search request and 350 EUR for an examination request). The applicant may then decide whether it is worth to file a German translation to further prosecute the application in Germany.
Please note that these changes are not applicable for the PCT national phase in Germany. For PCT national phases, the translation has still to be filed with the end of the 30 months period.
b) Search Request/Examination Request
The search report will now include a written opinion. Further, in case of non-unitary inventions, the Examiner is only obliged to search for the invention or groups of invention first mentioned in the clams. Please note that no additional search fees can be paid.
The written opinion should give the applicant a more detailed view whether the Examiner considers the application as patentable. The applicant can then, based on the written opinion, decide whether he is interested to proceed further with the application in Germany by filing an examination request.
As you may know, according to German Patent Law, a search request has not to be filed prior to the examination request. Further, the examination request can be filed up to seven years after the filing of the patent application.
c) Oral Proceedings during prosecution
Oral proceedings have to be held before the examining section, in case the applicant has requested them. Previously, the examiner could reject the request in case he considered the oral proceedings as being not necessary.
This gives the applicant a further opportunity to bring forward his arguments. As you may know, the oral proceedings in prosecution before the German Patent and Trademark Office are in Germany more informal compared to the European Patent Office as only the Examiner in charge of the file and the Applicant or his attorney are present in the oral proceedings.
d) Opposition period
The opposition period is extended to 9 months. Further, the oral proceedings of opposition proceedings will now be public.
This will give to the opponents a longer period for the search for prior art. On the other side, the Applicant knows later whether a third person intends to raise an opposition against a granted patent.
The calculation of the national fee has been clarified.
The number of claims relevant for the calculation of the claim fee when entering the national German phase is based on the original application documents of the international patent application. Presently, each claim above the tenth costs 30 EUR.
In case that during the international phase the number of claims has been increased, the claims fee for that number of claims has to be paid. If the difference between the increased number of claims and the number of original claims is not paid, the amendments are ignored.
f) Exceptions to patentability
The exceptions to patentability have been further clarified in view of the decisions of the EPO in the Broccoli and Tomato cases (G2/07 and G1/08), with respect to essentially biological processes.
Please find here-below the amended section of the patent law:
Patents shall not be granted in respect of:
1. plant or animal varieties or essentially biological processes for the production of plants or animals and plants or animals which were exclusively obtained through such processes (The amended portion is underlined).
g) Entry into force
Most of the new regulations will enter into force in the beginning of 2014.
2) German design law
The German design law has been amended to include separate nullity proceedings before the German Patent and Trademark Office. The request for nullity will cost 300 EUR. This amendment should reduce the costs for the proceedings and provide more quality in the decisions.
The request has to be filed with the German Patent and Trademark Office. The appeal against decisions of the German Patent and Trademark Office is treated by the Federal Patent Court.
It is still possible to raise a counterclaim with respect to the nullity of a design during infringement proceedings.
The new regulations will enter into force in the beginning of 2014.
3) Online File inspection (for all IP rights)
The German Patent and Trademark Office will, from promulgation of the law ongoing, provide online file inspection for patents, utility models, trademarks, and designs. Please note that old files, which have not already been scanned, may be preferentially scanned on demand.
This is only a short overview over the patent law changes. If you have any questions regarding this matter, feel welcome to contact Jacob Klinkisch (German Patent Attorney).
Publication date : August 2013