AMENDMENTS TO THE GERMAN PATENT ACT
We had already reported last year that the German Parliament had approved a number of changes to the Patent Act. The majority of the changes act will enter into force on 1 April 2014. The most important of these changes are as follows:
– The time frame for filing a German patent application in English or French has been extended. A full translation will have to be filed within twelve months (rather than three months as previously), or fifteen months if priority from another application is claimed. Should no translation be filed, then the application will be considered to be withdrawn. However, the withdrawn application can still serve as the basis for a priority claim for European or other patent application. The Patent Office will also carry out an initial search on the foreign-language application.
– The German search support will be adapted to the European standard and will include an initial evaluation of the novelty and inventive step of the application. The Examiner will also indicate whether the application has more than one invention and will limit the search to the first invention or group of inventions. The search fee will be raised from Euros 250 to 300.
– Oral proceedings will always take place if they have been requested by the applicant and the matter cannot be resolved in writing.
– The deadline for filing an opposition against a granted patent will be raised from three to nine months. Any hearings in opposition proceedings will be generally public.
The opportunity to file German applications in English or French with an extended time frame for the German translation will be welcomed by many applicants. It should also be possible to obtain an initial evaluation of the application by the German PTO prior to filing any international applications. This will give English-language applicants more choices in addition to filing with the UK or Luxemburg Patent Offices.
The changes in the opposition procedure bring it into line with that in the European Patent Office and is another step in harmonizing patent law in Europe. The additional time before an opposition needs to be filed will give more time to prepare the opposition and to allow negotiations with the patent holder to take place prior to filing an opposition.
If you have any questions, please feel free to contact us: