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LimeGreenIP News

Germany: Recent Amendments of Patent Prosecution and Opposition Proceedings for German National Patents

In order to optimize the prosecution and opposition proceedings for German national patents before the German Patent and Trademark Office (GPTO), the German Patent Act was amended with effect as of 1 April 2014.

Goal of New Rules

Each year, approximately 60,000 patent applications are filed with the GPTO and over 120,000 national patents are currently in force. The new rules serve the aim to make the prosecution and opposition proceedings for these national patents and patent applications more transparent, efficient and flexible. Further, they shall adjust them to the respective proceedings before the European Patent Office (EPO). Besides, the adapted proceedings are intended to be more user-friendly.

Patent Opposition (New Deadline)

One of the most important amendments is the extension of the period for filing oppositions from (previously) three to (now) nine months (Sec. 59 para 1 Patent Act). The extended opposition period applies to all German national patents published after 1 January 2014. It now corresponds to the opposition period for European Patents (Art. 99 EPC) and gives potential opponents more time to decide on their opposition and to carry out the required research and assessments.

Patent Prosecution

Online File Inspection

To simplify electronic communication, users can now inspect prosecution files of published patent applications online via the web portal “DPMAregister” (cf. Sec. 31 para. 3a, 3b, Sec. 32 para 1 Patent Act). Should the requested file not be publicly available yet, the file can be requested (anonymously) through a link. Additional information about online file inspection is provided on:

 https://register.dpma.de/register/htdocs/prod/en/hilfe/akteneinsicht/index.html

Preliminary Validity Assessment

In future, the search report will encompass a preliminary assessment regarding the validity of the patent application (Sec. 43 para. 1 PatG). This provides a better basis for the applicant to decide on the continuance of the prosecution proceedings. The search fee was increased by 50 Euro to 300 Euro.

Translations into German

If a patent application is filed (fully or partly) in a language other than German with the GPTO, the applicant has to provide a German translation thereof. The standard period for providing such translations is three months from the filing date (Sec. 35a para 1 Patent Act). The amendments now provide a special provision for applications in English or French language, extending the general period of three months to twelve months from the filing date (Sec. 35a para 2 Patent Act).

Mentioning of Inventor

From now on, a national German patent will not be granted unless the inventors are explicitly mentioned in the application (Sec. 37 Patent Act). It is no longer possible to mention the inventors after the patent has been granted.