German patent law update

06 January 2014

Changes to German patent law: 

New enhanced filing and prosecution opportunities for German and International applicants

Upcoming changes to German patent law due to take effect in early 2014 will provide new filing and prosecution opportunities for both German and International applicants. The key features of these changes are: 

  • Extended Search Opinion: If a search is requested for a German patent application, the German Patent and Trademark Office (DPMA) will prepare an extended search opinion including detailed remarks about the patentability of the claimed invention (similar in content to the extended European search report). The extended DPMA search opinion should be received within the priority year and allow better assessment of patentability.
  • Use of English or French application documents: It will be possible to receive the extended DPMA search opinion or an examination report based on English or French language application documents. The filing of German translations of English or French language applications may be deferred for up to 12 months from the filing date (assuming a first filing), i.e. until after receipt of the extended search opinion/examination report.
Example new filing and prosecution strategy

With the new search opinion and translation regulations, the following example filing strategy may offer significant advantages for German and International applicants (the underlined features highlight the differences over the “traditional” prosecution strategy before the DPMA as often pursued at present):

  • Drafting a patent application in English, 
  • First filing in Germany with English-language application documents, thereby obtaining a valid priority date in Germany on the basis of the English-language application documents (irrespective of whether a translation into German is later filed),
  • Requesting search upon filing (official fees: 40 € filing fee + approx. 300 € for search),
  • Receipt of an extended DPMA search opinion within the priority year (ideally within 8-9 months), 
  • Decision on subsequent filings (e.g. EP, PCT or national applications) on that basis: 

If the extended DPMA search opinion is positive:

- more certainty when deciding about subsequent EP, PCT,     or national applications 

- positive search results can be provided to the EPO

If the extended DPMA search opinion is negative:

- amending claims of the German first filing, and potentially     any subsequent filings as well in order to avoid the same    prior-art objections. 

Optional

One possibility is not to file the required translation into German within the 12-month translation term, e.g. if further pursuing subsequent filings (such as PCT or EP filings). As above, the priority date will be valid even if the translation is not filed. Specifically, the German application would be “deemed withdrawn” rather than “deemed not filed” if no German translation is filed. Also, the deemed withdrawal avoids the A1 publication of the application together with its search report. Protection in Germany might instead be obtained via a direct EP application, a Euro-PCT application, or a German national phase of a PCT application (claiming priority from the deemed withdrawn German application). Costs for a full German translation, as well as a potential loss in quality due to translation, could thereby be avoided if the EPO route (direct or via PCT) were used.

The following further changes to German patent law will contribute to its harmonisation with European patent practice under the EPC:

  • Examination: Mandatory oral proceedings during examination upon request. Oral proceedings during the grant procedure will be mandatory if requested. Thus, the grant procedure should provide more certainty for the applicant.
  • Opposition: 9-month term for filing opposition; public hearings. The opposition period will be extended from three to nine months. This reflects the fact that preparing an opposition against a patent usually requires a thorough prior art search and assessment of multiple attacks. Further, opposition proceedings under the new law will be more transparent by allowing the public to be present at opposition hearings.
  • Online file inspection of patents and published applications. An explicit legal basis for online access to the register of patents and patent applications will be created. The DPMA will gradually introduce online file inspection for patent applications and utility models.
  • Provision of patent information by the DPMA to the EPO. The DPMA will be  authorised to provide information such as search reports & search opinions, prior art documents, priority documents etc. to the EPO.

Please contact one of our experts on the right hand side should you have any questions or require further information.



 


 


 

 


 


 

 

 

 

 

 

Our Experts
Philipp Reichl
Philipp Reichl
Location: Munich (Germany)
Robert Margue
Robert Margue
Location: Munich (Germany)

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