1d) Germany Flashcards
Types of patent
Standard patent – 20 year term
Utility patents – 10 year term
Patent of addition - may no longer be obtained as of 1 April 2014
Secret Patent under Government control
SPC: can extend protection of standard patent for maximum additional 5 years if available
Patentable inventions
- Novelty/Inventive step
Absolute novelty
Pre-filed post published German national patent, PCT(Germany) and EP(Germany) is novelty only prior art - Grace Periods
6 month grace period from filing for:
o abusive disclosure
o disclosure at officially recognized international exhibition - Exclusion to patentability
The exceptions as mentioned in Rule 39 PCT apply; also not patentable are processes for cloning human
beings; processes for modifying of the germ line genetic identity of human beings; uses of human embryos for
industrial or commercial purposes; processes for modifying the genetic identity of animals which are likely to
cause them suffering without any substantial medical benefit to man or animal, and also animals resulting
from such processes; the human body, at any stage of its formation and development, and the simple
discovery of one of its elements, including sequences or partial sequences of genes.
However, the following may be patentable:
o computer programs and business methods, which directly produce a technical effect which goes
beyond the interaction with a computer (example: anti-lock brake system);
o isolated parts of the human body or parts otherwise obtained by a technical method, including
sequences or partial sequences of genes if specific function of the sequence is described.
Process for Obtaining a National Patent - filing and fees
- filing and fees
Fees/other: Non-resident must appoint local agent
Payment of the application fee must be made on filing or within 3 months after the filing date
Obligation to file first with national office: No
Excess claim fees: claims over 10
Renewal Fees: due 2 years from filing
Process for Obtaining a National Patent - language
- language
German
May be filed in another language provided that a German translation is filed within 12 months of the
application date and within 15 months of the earliest priority date. The German translation must be certified
by an attorney, a patent attorney or must be made by an official translator whose signature must be certified
by a Notary Public
Process for Obtaining a National Patent - search and exam
Search before grant: Prior to the filing of a request for examination, a request may optionally be made for the
issuance of a search report. If such a report is requested, there will be a reduced fee for examination.
Type of examination: formal and substantive examination
Time limit to request exam: 7 years from filing
Multiply dependent claims allowed: Yes
Prior Art Disclosure requirements: on request
Examination Process: The requested examination as to novelty and inventiveness comprises several official
actions with fixed periods for reply. Usually several extensions for one or two months may be obtained on
simple request
Process for Obtaining a National Patent - grant
If the application is allowed, it will immediately proceed to grant. The patent takes full effect from publication
Process for Obtaining a National Patent - 3rd party challenge
3rd party challenge options
There is an opposition-after-grant system.
During the nine months (non-extendible) after the publication of the grant any person may file opposition on
the grounds of lack of novelty, un-patentable (e.g. lack of novelty and/or lack of inventive steps), insufficiency,
added matter, lack of consent.
Revocation of a patent resulting from opposition proceedings works retroactively. If the patent is maintained
with restrictions, the patent specification will be amended and the amendment published.
Nullity actions may be brought during the life-time of the patent or even after the life-time if damages are
claimed based on the patent. However no nullity during the opposition period or if an opposition is pending.
Nullification is requested with the Patents Court
Cancelation actions may be bought during the life time of a utility model before the GPTO
Process for Obtaining a National Patent - claiming priority
Priority may be claimed from an application under an international treaty (e.g. Paris Convention ) or from a
country with regard to which reciprocity is acknowledged by Germany
Within 16 months of the priority date, the date, country and application number of the application whose
priority is claimed must be given and a copy of that application be filed.
If the priority is claimed under an international treaty, translations only have to be provided upon request
National Phase Entry From a PCT Application - time limits and translation requirements
- time limits (and any extensions of time) for national/regional phase entry and filing formal documents
30 months. Actions due:
o file a Request form, pay the national filing fee and file a translation of the application into German.
o It is necessary to appoint an agent if the applicant does not reside in Germany - translation requirements
Translation into German required on filing
National Phase Entry From a PCT Application - EPC/National law
- EPC / national law
Applications for the grant of an EP patent may be filed with the EPO although applicants residing or
established in Germany may also file such applications with the German Patent Office.
An EP Patent is automatically validated in Germany upon publication of the grant of EP in the European
Patent Bulletin.
No simultaneous protection is possible for both a national and an EP patent when the wording of the
claims is identical
Utility Models / Other Patents
Term: 10 years
What can be protected: All patentable inventions not being biotechnological inventions or a method or
process may be protected as a utility model (also medical use claims).
Available from PCT: Yes
Conversion to/from patent:
Examination: In respect of utility models, the state of the art comprises all know-how, which prior to the
application date has been made available to the public by written description anywhere or by use in Germany.
A description or use made within 6 months prior to the application date is not considered if it is based on the
elaboration of the applicant.
Optionally one can request a search report
There is no examination as to novelty, inventiveness or application in industry. The usual lapse of time
between filing and registration is usually just 8 weeks.
New trade secrets Act passed December 2018 defines the term ‘trade secrets’ has been legally for the first
time. The new law also regulates actions that are allowed in order to lawfully obtain a trade secret. These rules will not apply to whistleblowers, journalists and employees if a trade secret has been acquired to
uncover an illegal act.
In the new Trade Secrets Act, a trade secret is information:
o which is not generally known or readily accessible, either in its entirety or in the precise arrangement
and composition of its components, to the persons in the circles who normally deal with this type of
information and is therefore of economic value,
o which is not generally known or readily accessible, either in its entirety or in the precise arrangement
and composition of its components, to the persons in the circles who normally deal with this type of
information and is therefore of economic value,
o in whose confidentiality the holder has a legitimate interest.
Accordingly, the owner of a trade secret now has to apply “appropriate” measures to ensure non-disclosure of
trade secrets and – in case of any dispute – prove that such measures have been in place.
German Constitutional Court voids Act of Approval to UPC Agreement
On 14 January 2020, the German Ministry of Justice and Consumer Protection published the draft of a
Second Act for simplifying and modernising patent law (“Modernisation Draft”).
o Limitation of the cease-and-desist claim for patent infringement: the cease-and-desist claim is
“excluded as far as the enforcement of the cease-and-desist claim is disproportionate because, due to
special circumstances taking into account the interests of the patentee vis-à-vis the infringer and the
principles of good faith, it constitutes undue hardship not justified by the exclusive right.”
o Closing the “injunction gap” that arises due to the bifurcation of infringement and invalidity
proceedings. The new proposed section 82(3) PatG provides for a period of two months from service
of the nullity action for the defendant to substantiate the opposition. The preliminary assessment of
validity of the patent “should” be rendered within sixth months from the service of complaint.
