Patents of Invention

– Patent Law of December 16, 1980, last amended on June 23, 2021.
– Patent Regulations of September 1, 2003, last amended on December 12, 2018.
– International Patent Convention Law of June 21, 1976.
– Community Patent Law of July 26, 1979.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since February 13, 1966.
– Convention Establishing the World Intellectual Property Organization (WIPO), since September 19, 1970.
– Strasbourg Agreement Concerning the International Patent Classification, since October 7, 1975.
– European Patent Convention, since October 7, 1977.
– Patent Cooperation Treaty (PCT), since January 24, 1978.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since January 20, 1981.
– WTO’s TRIPS Agreement, since January 1, 1995.

Filing

Applicant: the inventor or the legal successor (individual, firm, company, etc.). 

Foreigners and nationals not living in the country: must appoint a representative living in Germany. 

Naming of the inventor(s): a designation of the inventors has to be filed within fifteen months of the application date / first priority date, naming the inventor(s) and declaring how the right on the invention has been transferred from the inventor to the applicant. Upon timely request, the name of the inventor is not published.

Types of patents: patents of invention, patents of addition. A patent of addition is to be filed, however, within eighteen months after filing date (or priority date respectively) of the main patent.

Categories: patents covering a method, a process, a machine or a device, a product. A product produced directly by a method or process is covered by the method or process claim. 

Plant varieties cannot be covered by patents, but only by an application in the Federal Species Register of the Federal Species Office (“Bundessortenamt”). (See Chapter IX “New Plant Varieties“). 

Microbiological processes and microorganisms: can be covered by patents. If proper identification by a description is not possible, such description can be replaced by a deposition of the microorganism at an admitted institute (not necessarily a German institute). 

Patentability: patents are granted for inventions susceptible of industrial application, which are new and which involve an inventive activity.

Novelty: to be new, an invention must not have been disclosed to the public by means of written or oral description, by use nor in any other way and must not be the content of a German patent application or of a European patent application or a PCT application extended to Germany, having an older filing date and published (or filed) on or after its own filing date. Whereas utility model protection (see Chapter V) remains available, a publication or public prior use within six months prior to a German application is normally a bar to patentability. Such publication or prior application is only exceptionally not destroying novelty, if and only if it is based on evident abuse detrimental to the applicant or if the publication has been carried out by the applicant himself or his predecessor by showing the invention at an officially recognized international exhibition. Corresponding notice has to be given to the Patent and Trademark Office upon filing and a certificate has to be filed within four months. There is no novelty grace period for patents (see however Chapter V on utility models).

Exceptions to protection: inventions contrary to the law or morality; discoveries, theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business; programs for computers and presentations of information, each of the latter are only excluded as such (per se). In addition, patents are not granted for methods for treatment of the human or animal body by surgery or therapy, and for diagnostic methods practiced on the human or animal body (products, substances and compositions to be used in any of these methods can be patented, however). Certain restrictions also apply to inventions relating to (human) genetics.

Priorities: one or more or partial priorities may be claimed. Priority can be claimed within the twelve-month Paris Convention period from foreign applications and from older German patent or utility model applications if such older application is not based itself on the priority of another older application. The second German application is replacing then the older German application, which is to be regarded as withdrawn by legal fiction.

Filing requirements for an application (to be sent to resident agent):
1. Specification (applications can be filed in any language, but if not German, then a German translation must be filed within a period of three months or in case of a translation of an English or French language application within twelve months from the application date or within fifteen months from the priority date) (not applicable when nationalizing a PCT application in Germany);
2. An abstract comprising the title and an extract of the disclosure, but not exceeding 150 words; if reference is made to a drawing, such drawing is to be added;
3. Patent claims;
4. Drawings (if designated);
5. Power of attorney for the representative (can be filed later on), no legalization required; in case the representative is a patent attorney or a lawyer, the Office normally refrains from asking for the power of attorney;
6. Declaration of inventorship (to be filed within fifteen months from filing date or priority date respectively of application), containing full name, profession and address of the inventor or inventors and the date of assignment. The declaration of inventorship can be signed by the representative;
7. Copy of priority application (certification not required), to be filed within sixteen months from the priority date;
8. A priority is to be claimed within sixteen months of the priority date (indicating country, filing date and file number of first application).

Minimum requirements to obtain a filing date: (1) designation of the name of the applicant; (2) request for granting a patent; (3) at least one patent claim; (4) specification (including drawings, if designated). 

Term for filing any missing documents: for filing missing documents the German Patent Office will set a certain deadline in an Office action, however, documents referring to the minimum requirements can only be filed later under establishment of a new application date (i.e. filing date of the missing documents). 

Electronic filing: is available with 33% reduction of the filing fee of EUR 60 and of the claim fees (claim fee of EUR 30 for the 11th and further claims).

Electronic signatures: qualified electronic signatures are accepted.

Examination Procedure

Examination (formal): is made in every case to detect obvious deficiencies, including lack of unity.

Examination (substantive): substantial examination, e.g. directed to the questions of novelty and non-obviousness is carried out upon a specific request for examination only. The request for examination can be lodged by the applicant or by any other person. If no examination request has been filed within seven years after filing date, the application will become void. The request can be split into a first request for a search for relevant publications and a subsequent second request for examination as to patentability.

Accelerated examination: as such not provided for, however, the GPTO is member of the Global Patent Prosecution Highway Pilot Program (GPPH) with, for instance, the Patent Offices of Japan, United States, South Korea, Canada, United Kingdom, Finland, Austria, Singapore, Australia, New Zealand, Colombia, Denmark, Estonia, Finland, Russia, Iceland, Israel, Chile, Peru, Portugal, the Nordic Patent Institute, Poland, Sweden, Spain, Hungary, the Visegrad Patent Institute, and wherein a bilateral PPH project with CNIPA is established.

Amendments: are possible at any time within the limits of original disclosure of the specification and claims. 

Divisions: divisional applications can be filed at any time before issuance or refusal of a decision to grant (and still during the time limit for lodging an appeal, according to a Federal High Court decision). In the divisional application any fees have to be paid which have been due in the basic application. After filing the declaration for dividing the present application, three months is given for filing the application documents and for paying the official fees in the divisional application.

Objections of the Office: objections of the Office referring to formal deficiencies or to substantial deficiencies referring to novelty or inventiveness have to be responded to within a period of time as stated in the Office action; extensions of time are possible without additional fees.

Secrecy and inspection of the file: any person shall be free to inspect the files of patent applications as soon as eighteen months have passed since the filing date or priority date and a notice has been published in the Patent Journal. At the same time the Patent and Trademark Office will issue a print for each patent application, called “Offenlegungsschrift” (OS), which is a true copy of the originally filed application documents. As soon as a request for examination has been filed, the competent Examiner will begin the examination as to patentability and issue official letters. Finally, the Examiner will issue either the decree of grant or the decree of rejection. The documents, as amended or restricted during the examination procedure, will be published then as a patent specification (PS). The issue of the aforesaid PS is communicated by the Patent and Trademark Office Journal “Patentblatt”. Special restrictions concerning secrecy apply to applications that are considered to relate to matters of national defense/State secret (see “Secret patents” below). 

Prior user disputes: public prior use, as a matter of disclosure, may be subject matter of opposition proceedings at the PTO or of nullity actions at the Federal Patent Court. (Non-public) prior use, as a matter of defense, may only be invoked during infringement proceedings.

Registration, Protection

Publication: the grant of the patent is published in the Official Bulletin. 

Beginning of protection: protection begins with publication of grant of the patent in the Official Bulletin.

Delivery of document: the patent certificate is issued in paper format.

Duration of patents: twenty years from the day following the filing date; extension is not possible (exception: Supplementary Protection Certificate, see “Extension”). Patents of addition terminate with principal patent; if, however, the principal patent becomes void by declaration of nullity, by revocation or by renouncement, the patent of addition becomes an independent patent, the duration of which is determined by the filing date of the void principal patent.

Extension: an extension of the duration of a patent, the subject matter of which being a drug or a process of manufacturing a drug or a use of a drug which has to undergo an administrative authorization procedure required by law before it can be put on the market, may be requested by a

Supplementary Protection Certificate. The duration of the Supplementary Protection Certificate, in addition to the twenty-year period of the (basic) patent, is equal to the time period between the filing date of the (basic) patent and the first authorization of the drug in a member State of the European Union minus five years, but cannot exceed five years. The same applies to a patent, the subject matter of which being a plant protective or a process for manufacturing a plant protective, or a use of a plant protective, which has to undergo an administrative authorization procedure required by law before it can be put on the market. 

Paediatric extension: possible. 

Annuities: for each application and each patent, an annuity will become due for the third and each following year, on the last day of the month comprising the filing date. The annuities can be paid without fine within two months of the due date and can be paid with fine within six months of the due date. The Patent and Trademark Office gives the patentee a notice that the application or the patent will become void, but merely as a service for the applicant (no rights may be derived from the omission of the notice). For patents of addition, no annuities are to be paid. 

Annuity grace period: six months with payment of a late filing fee.

Further processing: possible. The legal consequence of the failure to observe a time limit shall be deemed not to have ensued if, within a (non-extendible) period of one month after notification, further processing is requested by payment of the prescribed official fee.

Restoration: a person who did not observe a period for taking some action before the Patent and Trademark Office or the Patent Court and suffers a legal disadvantage therefrom, can file a petition for restoration (restitutio in integrum) under certain circumstances. Such a petition is to be filed within a period of two months after the said circumstances cease to exist, and the action which was omitted has to be carried out. Restoration cannot be applied for when one year has passed from the expiry of non-observed time limit, e.g. the last period of payment of an annuity.

Marking of patented goods: not compulsory, but usual. Any person marking goods as patented is obliged upon request of any other person who can show a justified interest, to communicate the number of the patent or the patent application to which he has referred. 

Text of marking: “D.B.P.” for patents or “D.B.P. angem.” for patent applications laid open by the Patent Office. Other non-misleading markings may be acceptable.

Working – compulsory licenses: working of a patent is not compulsory. Lack of working does not lead to the cancellation of the patent or the obtaining of a compulsory license. Anytime after the grant of a patent, a compulsory license can be granted upon request, if the patentee refuses to grant a license to a person who has sought a license and who agrees to reasonable compensation and security, if such a compulsory license is of public interest.

Assignment: the application, the patent and the rights arising from the patent pass to the heirs and can be transferred to others: assignment should be registered. 

Licenses: exclusive or ordinary licenses can be granted by a licensing contract and can be limited as to the territory, the time or the subject of the invention. An exclusive license can be registered at the Patent Office. 

Licenses of right: the annual taxes are reduced to one half of the prescribed value if the patentee or the person registered as the owner of the patent sends a written statement to the Patent and Trademark Office to the effect that anyone can use the invention on payment of a suitable royalty; the said declaration cannot be revoked. If such a declaration is registered, no exclusive license can be granted or registered later on, and vice versa; if a request to record an exclusive license has been filed, any declaration of license of right is inadmissible and ineffective.

Secret patents: if the Examiner is of the opinion that an invention is to be regarded as a State Secret, he decides, after having consulted the competent Federal Authorities, not to lay open the examined application papers to public inspection. If the applicant does not receive such a decision from the Patent and Trademark Office in due course, he may assume (as regards German Law) that his invention is not secret. In case of ordered secrecy the applicant is entitled, under certain circumstances, to claim for compensation.

Modification of Protection after Registration

Rights of prior user: can be acknowledged in case the prior user has made substantive efforts to use the subject matter of the patent before the application date/priority date of the patent in Germany. The right of the prior user can only be transferred together with the entire business.

Opposition to granted patents: within nine months after grant, which cannot be extended, an opposition against the patent can be filed by anybody before the German Patent Office. 

Reasons for opposition: (a) no patentable invention; (b) no complete and comprehensible disclosure; (c) the invention has been usurped from another person (in this case, however, the injured person only is entitled to raise opposition). If the opposition is successful, the patent will be revoked and all legal effects originating from the filing date or from the date of grant are to be regarded as never been (except in case (c) the entitled person may file a new application or become patent proprietor).

Appeals: in principle, the decisions of the Patent and Trademark Office can be appealed. Appeals against a decision must be lodged at the Patent and Trademark Office within one month of delivery of the decree. These appeals will be transferred to the Federal Patent Court if no relief is given. 

Nullification action: a granted patent can be annulled at any time of, or in special cases even after, the duration of the patent by a nullification action. Such nullification action can be lodged against the owner of a patent for the same reasons as oppositions, but not during the nine-month period within which an opposition can be filed and not as long as a filed opposition has not been decided. A nullification action must be filed at the Federal Patent Court. An appeal against the decision of the Federal Patent Court can be filed at the Federal High Court (BGH).

Amendment of issued patents (post-grant limitation): is possible by amendments of the claims, limiting the scope of the patent ex tunc. The Patent Division will issue a decision on the request for restricting the patent.

Infringement and penalties: in case of an infringement of a patent, penalties are due on basis of reasonable license fees, lost profit of the patentee or on the basis of profit of the infringer, wherein the patentee can choose the respective calculation basis. In case the penalty is calculated on the profit made by the infringer, the profit is not to be reduced by general costs of the infringer for producing the infringing goods.