Can a Departing Employee Sign Away Their Invention Compensation? What German Law Actually Says

Posted on June 23, 2026 by Dr. Dirk Franke

When a key employee leaves a company, a familiar request often lands on the legal team’s desk: “Let’s have them sign something confirming they have no further claims to compensation for their inventions.” It sounds tidy. It feels safe. And under German law, in the blanket form it is usually drafted, it frequently does not work.

Germany regulates employee inventions through a dedicated statute, the Gesetz über Arbeitnehmererfindungen (Act on Employees’ Inventions, or ArbnErfG), substantially modernised in 2009. It is one of the few areas where the law deliberately overrides freedom of contract to protect the employee. Understanding why a simple waiver fails — and what does work instead — is essential for any company that develops patentable technology with German staff.

The starting point: not every workplace invention belongs to the employer automatically

A common assumption is that anything an employee invents on the job is simply the company’s property. German law takes a more structured route.

The Act distinguishes between service inventions (Diensterfindungen) and free inventions (freie Erfindungen) in § 4 ArbnErfG. An invention made during the employment relationship is a service invention if it either:

  1. arose out of the employee’s assigned duties within the company, or
  2. is essentially based on the experience or work of the company (§ 4(2) No. 2 ArbnErfG).

Everything else is a free invention (§ 4(3)).

This second limb is where job titles become misleading. Suppose an employee’s contract describes their role as “business development,” yet in practice they carry out research that leads to patented formulations. The contractual label does not convert those inventions into free inventions. Because the work draws on the company’s know-how, materials, and environment, it will typically qualify as a service invention under § 4(2) No. 2 regardless of what the job description says. The actual activity, not the title, controls the classification.

How the employer acquires the rights — including by doing nothing

For a service invention, the Act sets out a procedural sequence:

  • The employee must report the invention to the employer in text form (Meldung, § 5 ArbnErfG).
  • The employer then claims it (Inanspruchnahme, §§ 6, 7), which transfers the rights to the employer.

The 2009 reform added a quietly powerful rule. Under § 6(2) ArbnErfG, if the employer does not expressly release the invention within four months of a proper report, the invention is deemed to have been claimed. Silence now favours the employer. In practice, where a company has filed patent applications naming its employee as inventor, this is strong evidence that the inventions were reported and claimed — and therefore that the full compensation regime applies.

The right that survives everything: reasonable compensation

Once an invention has been claimed, § 9 ArbnErfG grants the employee a statutory right to reasonable compensation (angemessene Vergütung). Three features of this right surprise employers most often:

  • It is independent of salary. The employee’s ordinary wages do not, by themselves, satisfy it.
  • It survives the end of employment. An inventor who resigns, retires, or is dismissed keeps the claim for inventions already claimed by the employer.
  • It can last as long as the patent generates value. Compensation is tied to the commercial benefit the employer derives over time.

This is precisely why the “departure waiver” is so tempting — and why the law resists it.

Why the blanket waiver fails: § 22 ArbnErfG

The decisive provision is § 22 ArbnErfG. The Act’s rules cannot be contracted away to the employee’s disadvantage. An agreement in which an employee simply confirms, in advance and in general terms, that they “cannot claim compensation” for their inventions is, in that form, very likely void.

The rationale is protective: the legislature treats the inventing employee as the structurally weaker party and refuses to let them bargain away a core statutory entitlement before its value is even known.

What does work: the post-reporting settlement

Section 22 is not, however, an absolute ban on agreements. It draws a sharp line in time. Agreements about a service invention are permissible once the invention has been reported (or otherwise made and disclosed). Before that point, the employee cannot meaningfully assess what they are giving up; afterwards, they can.

This opens the realistic path for a departing inventor. Where the inventions already exist and have been disclosed, the company and the employee can validly conclude a settlement or discharge agreement (Abgeltungsvereinbarung) covering compensation for those specific inventions. Such an agreement can include a lump-sum payment and a clean “no further claims” clause — and it will hold up, because it concerns identified, already-reported inventions rather than a blanket future surrender.

In short: the instrument is a negotiated settlement, not a unilateral waiver.

Even a valid settlement must be fair: § 23 ArbnErfG

Concluding the agreement at the right time is necessary but not sufficient. Under § 23 ArbnErfG, an otherwise admissible agreement is unenforceable if it is substantially inequitable (in erheblichem Maße unbillig). And the employee may raise that inequity for up to six months after the employment ends (§ 23(2)).

A token payment dressed up as a settlement is therefore fragile. To be robust, the figure should rest on a genuine valuation.

How compensation is actually calculated

German practice values employee inventions primarily through the licence-analogy method (Lizenzanalogie), guided by the official Richtlinien für die Vergütung von Arbeitnehmererfindungen im privaten Dienst. The core formula is:

Compensation = Invention Value × Share Factor (Erfindungswert × Anteilsfaktor)

  • The invention value is typically derived from a reasonable royalty on the relevant turnover — what a third party would have paid to licence the technology.
  • The share factor (Anteilsfaktor) reflects the employee’s actual contribution, combining three elements: how the problem was identified, how the solution was found, and the employee’s duties and position within the company.

Here lies a trap for employers. The share factor is lower when inventing is central to the employee’s job (a head of R&D is paid to invent) and higher when the invention falls outside the employee’s assigned role. So an invention produced by someone formally employed in “business development” may attract a larger employee share — meaning the very job-title argument companies hope will reduce exposure can increase it.

The other scenario: what if the invention was genuinely “free”?

Occasionally an invention really does fall outside § 4(2) — it neither arose from the employee’s duties nor essentially relied on the company’s work. Then no § 9 compensation claim arises. But this is rarely the convenient answer it appears to be, because it raises a different question: does the company actually own the invention at all?

For free inventions, the employer’s entitlement is limited (the employee must offer a non-exclusive right of use under §§ 18–19), and the company would need a valid assignment to hold full rights. Insisting an invention is “free” to avoid compensation can therefore expose a gap in the company’s chain of title to its own patents — a worse problem than the one it was meant to solve.

Resolving disputes: the Schiedsstelle

German law also provides a low-threshold forum before the courts. Under § 26 ArbnErfG, either party can bring the matter to the arbitration board (Schiedsstelle) at the German Patent and Trade Mark Office (DPMA). Its proposals are non-binding but influential, and in many disputes it is the natural first stop before litigation.

Practical takeaways

For employers:

  • Classify each invention under § 4 by reference to the actual R&D activity, not the contractual job title.
  • Keep clean records of the report (§ 5) and the claim (§§ 6, 7), including any deemed claim under § 6(2).
  • Do not rely on a blanket advance waiver — it is likely void under § 22.
  • Use a post-reporting settlement agreement instead, with a defensible valuation (licence analogy) that can survive the § 23 equity test and the six-month challenge window.
  • If you treat an invention as “free,” separately confirm you hold a valid assignment of title.

For employees and inventors:

  • Your compensation right does not disappear when you leave.
  • You cannot be made to sign it away in advance, but you can agree a settlement once your inventions have been reported.
  • You have up to six months after departure to challenge a settlement that is substantially unfair, and the Schiedsstelle offers an accessible route to do so.

The bottom line

A departing inventor cannot simply be asked to sign away compensation they are statutorily owed; § 22 ArbnErfG stands in the way. But the law is not a dead end for employers. A properly timed, fairly valued settlement — concluded after the inventions are reported and built on a real licence-analogy calculation — achieves the clean break companies want, in a form that actually holds.

The mistake is reaching for a waiver. The solution is reaching for a settlement.

Photo: © fdecomite, [CC BY 2.0]

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The Patent Grant Procedure in Belgium

Posted on June 20, 2026 by Dr. Dirk Franke

Anyone seeking protection for an invention in Belgium has two routes: a European patent designating Belgium, or a national Belgian patent. The national procedure is remarkably lean by international standards – and differs from the German or European route in one decisive respect: the Belgian office grants the patent without substantive examination of patentability. This article walks through the procedure, the formal requirements, the fees, the language regime, and a few practical points worth keeping in mind.

The office and the legal basis

The competent authority is the Belgian Office for Intellectual Property – Office de la Propriété Intellectuelle (OPRI) / Dienst voor de Intellectuele Eigendom (DIE) – part of the Federal Public Service Economy (FPS Economy / SPF Economie), based in Brussels. The legal framework is essentially Book XI of the Belgian Code of Economic Law (Code de droit économique), together with the Royal Decree of 2 December 1986. As is standard, the maximum term is 20 years from the filing date.

The guiding principle: grant without substantive examination

The defining feature of the Belgian system is that the patent is granted irrespective of the search result. A novelty search is carried out (see below), but the office does not examine patentability on the merits and will not refuse grant even where the search indicates that the invention may lack novelty or inventive step. By express statutory wording, the patent is granted without any guarantee and at the applicant’s own risk.

The practical consequence: the validity of a Belgian patent is decided, if challenged, by the courts alone. Unlike a European patent – which is regarded as a “strong”, examined right – mere grant in Belgium says nothing about whether the patent will hold up. A Belgian patent issued with an unfavourable search report is therefore not automatically worthless: the search report binds neither the office nor the court.

Filing and formal requirements

Applications are filed with the OPRI using an application form – in person, by post, by fax, or electronically via the Benelux Patent Platform (BPP). To secure a filing date, three elements suffice initially: an explicit or implicit indication that the documents are intended to constitute a patent application; information identifying the applicant and allowing the office to make contact; and a part that, at first sight, appears to be a description of the invention.

Once a filing date has been accorded, the application must contain:

  • a request for grant addressed to the competent Minister;
  • the applicant’s identification details;
  • a description of the invention, sufficiently clear and complete for a skilled person in the relevant field to carry it out;
  • one or more claims defining the scope of protection;
  • any drawings referred to in the description or claims;
  • an abstract;
  • where known, an indication of the geographical origin of any biological material from which the invention was developed;
  • the designation of the inventor (or the inventor’s request not to be named).

The pages of the application must be numbered in accordance with the OPRI circular of 13 August 2020. Proof of payment of the filing fee must reach the OPRI within one month of filing.

Regularisation: if the conditions for the filing date or other requirements are not met, the OPRI invites the applicant to remedy the deficiency. The period is three months from notification, and a regularisation fee of EUR 60 must be paid within the same period. If the application is not regularised in time, it is deemed withdrawn (or deemed not to have been filed). The applicant may also cure deficiencies on its own initiative for as long as the patent has not yet been granted.

Language regime

Belgium has three national languages – Dutch, French and German – and the procedure follows the coordinated laws on the use of languages in administrative matters. This means that the language of the proceedings and of the correspondence is determined by the language the applicant (or the person represented, even where a representative acts) must use under those administrative-language rules. In practice it is therefore driven largely by regional allocation rather than freely chosen.

Two practical points matter:

  • For the accordance of a filing date, the indication that the documents constitute a patent application and the identification details must be drafted in the prescribed national language.
  • The part appearing to be the description, by contrast, may be filed in any language (for example English), provided a translation into the prescribed national language is supplied within three months of receipt.

The novelty search by the EPO

The search fee must be paid within 13 months of the filing date (or the priority date). The search itself is carried out by the European Patent Office, which produces a novelty search report together with a written opinion on patentability. Neither the report nor the opinion is binding, and neither guarantees validity.

On the basis of the report, the applicant may:

  • withdraw the application;
  • amend the claims, abstract and, if necessary, the description (without extending the subject-matter beyond the original disclosure); or
  • keep the application as filed.

The applicant may also file written comments on the opinion for the record. The EPO does not, however, issue a revised report. The search report, the written opinion, any amendments and any comments all become part of the publicly accessible patent file.

Unity of invention / divisional applications: if the search report finds a lack of unity, it is drawn up for the invention mentioned first in the claims. Before grant, the applicant must then either limit the application or file one or more divisional applications (each carrying its own filing and search fees and any annual fees). Divisional applications retain the filing date and, where applicable, the priority date of the parent.

Publication and grant

The application is made available to the public 18 months after the filing or priority date. Once all formalities are complete and the fees due have been paid, the patent is granted by ministerial decree – as soon as possible after the 18-month period expires. On request, grant can be accelerated provided all formalities are in order; this can be useful where infringement threatens shortly after filing.

The patent is entered in the Belgian online patent register (eRegister) and published in summary form in the Recueil des Brevets d’invention. It takes effect when made available to the public. Before publication, provisional protection applies, determined by the published – or most recently filed – claims.

Fees

The national procedure is light on fees: there is no examination fee and no separate grant or publication fee. The figures below reflect the OPRI tariff as of 13 January 2026.

FeeAmountDeadline
Filing feeEUR 50within 1 month of filing
Surcharge for late payment of the filing feeEUR 25within 3 months of the invitation to pay
Correction/addition of a priority claimEUR 50on filing the request
Search fee (EPO novelty search)EUR 300at the latest 13 months from filing/priority
Regularisation of an applicationEUR 60within 3 months of the deficiency notice
Correction of errors of expression/transcriptionEUR 35on filing the request
Restoration (application/patent, or priority right)EUR 350 eachwith the request
Validation of a European patent in Belgium–currently no validation fee

Annual fees fall due from the third patent year, on the last day of the month corresponding to the anniversary of the filing date. They rise progressively:

YearEURYearEURYearEUR
340916515360
4551018516400
5751121517450
6951224018500
71101327519555
81351432020600

If an annual fee is not paid on time, a six-month grace period applies against a surcharge (EUR 85 for the 3rd–10th annuity, EUR 230 for the 11th–20th). If payment is still not made, the rights lapse – with effect from the original due date.

The annual fees also apply to European patents validated in Belgium (without unitary effect). Annual fees for unitary patents, by contrast, are paid directly to the EPO and are not collected by the OPRI.

What else to keep in mind

Validation of European patents – no translation required. Since 1 January 2017, Belgium no longer requires a translation of the specification to validate a European patent granted (or maintained as amended after opposition, or limited) in English, French or German – the relevant trigger being publication of the mention of grant on or after that date. A translation of the claims remains relevant for establishing provisional protection of a still-pending EP application. No validation fee is currently charged.

Unitary patent and the Unified Patent Court. Belgium participates in the European patent with unitary effect; the Unified Patent Court (UPC) has been operational since 1 June 2023, with a local division in Brussels. Annual fees for unitary patents are paid solely to the EPO.

Abolition of the short-term patent. Belgium’s former short-term patent (a six-year right without a search) was abolished when Book XI of the Code of Economic Law entered into force on 22 September 2014. Only the regular patent, with a mandatory search, remains.

PCT. Since 1 April 2018, the OPRI no longer acts as a receiving office for international applications under the PCT. The corresponding procedural fees are paid directly to the competent receiving office.

Representation. Applicants without a domicile or establishment in the European Economic Area must act through a representative registered with the OPRI (mandataire agréé). More generally, appointing an address for service is advisable so that the office can reliably reach the applicant.

Re-establishment of rights. Where an applicant or proprietor misses a time limit, a restoration procedure is in principle available. It is, however, excluded for certain deadlines – among them the period for regularising an application and certain annual fees arising from a restoration.

A Belgian patent as a first filing. The national patent works well as a priority-founding first filing: it can serve as the basis for claiming priority in other countries within twelve months. That makes it attractive even for applicants who initially have only the Belgian market in view, or who want to secure a priority date inexpensively.

Takeaway

A Belgian patent is quick and inexpensive to obtain: low official fees, no examination fee and no grant fee, a clearly timed procedure with the search handled by the EPO, and grant typically around 18 months after filing. The price of that leanness is the absence of substantive examination – the robustness of the right only becomes apparent if it is challenged in court. Applicants choosing the national route should therefore take the EPO’s search report and written opinion seriously and amend the claims, where sensible, before grant.

Photo: © OliBac, [CC BY 2.0]

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Unitary Patent and National Patent: Does the Prohibition of Double Protection Still Apply?

Posted on June 19, 2026 by Dr. Dirk Franke

With the start of the Unitary Patent system on June 1, 2023, a practical question arises for many applicants: can I hold a national German patent for the same invention alongside a European patent with unitary effect (the “Unitary Patent”) – or does the prohibition of double protection stand in the way? The answer is clear: for the Unitary Patent there is no prohibition of double protection. That is precisely what distinguishes it from the former position regarding a classic European patent validated in Germany. This article explains the reform, the decisive opt-out boundary, and the strategic consequences.

The prohibition of double protection until May 31, 2023

Until the patent reform, Article II § 8 IntPatÜbkG imposed a strict prohibition of double protection. Where a European patent of the same priority and the same scope had been granted to the same inventor or successor in title with effect for Germany, the same invention could not at the same time be protected by a national patent. The national patent became ineffective to that extent as soon as the European patent could no longer be revoked in opposition proceedings. Anyone taking the European route effectively had to give up their parallel German right.

The redesign as of June 1, 2023

With the entry into force of the Agreement on a Unified Patent Court (UPCA), Article II § 8 IntPatÜbkG was fundamentally recast. Since then it is, in principle, possible to hold a national German patent alongside a European patent or a Unitary Patent. The prohibition of double protection has not disappeared entirely, but it has been cut back to a narrow scope of application.

The decisive factor is now jurisdiction: the prohibition applies only to European patents for which an opt-out under Article 83(3) UPCA has been declared – that is, patents which are not (or no longer) subject to the exclusive jurisdiction of the Unified Patent Court (UPC). Only in that case does a national patent for the same subject matter lose its effect. If, by contrast, no opt-out is declared and the European patent remains within the UPC’s jurisdiction, the national patent retains full effect alongside it.

Why the Unitary Patent is never affected

For the Unitary Patent, the answer is therefore unambiguous. The European patent with unitary effect is necessarily subject to the jurisdiction of the UPC; an opt-out is excluded for the Unitary Patent from the outset. The only constellation in which the prohibition of double protection can still apply – the opted-out patent – can therefore never arise for the Unitary Patent. A parallel national German patent remains fully effective alongside the Unitary Patent.

The position can be summarised as follows:

  • Unitary Patent alongside a national patent: double protection permitted – always.
  • Classic EP without opt-out alongside a national patent: double protection permitted (UPC jurisdiction).
  • Classic EP with opt-out alongside a national patent: the prohibition applies – the national patent loses its effect to that extent.

Double protection and double patenting – two different questions

In practice, two terms are often conflated. The prohibition of double protection (Article II § 8 IntPatÜbkG) concerns the effect of parallel rights after grant. This must be distinguished from a prohibition of double patenting at the granting stage – that is, the question of whether the same invention may be brought to grant twice at all.

Between a German patent and a Unitary Patent there is no bar in this respect either: the same application can be brought to grant both as a national patent at the DPMA and, via the European route, as a Unitary Patent. No prohibition of double patenting exists here. The position is different only internally at the EPO, for two identical European applications by the same applicant – for instance where the same invention is to be granted both as a classic bundle patent and as a Unitary Patent; such a double grant within the European procedure is not possible. The relationship between the EP and the DE patent, however, is not covered by this.

The limit: the objection of double enforcement

The fact that double protection is permitted does not mean that a proprietor could proceed without limit from both rights in parallel. The corrective is the objection of double enforcement under Article II § 18 IntPatÜbkG. It is a protective mechanism for defendants: a party already sued from the Unitary Patent before the UPC over the same act of infringement can prevent being pursued again, in addition, from the national patent for the same subject matter before the German courts – and vice versa. Double protection thus opens up additional options for the proprietor, but does not lead to double liability of the infringer.

Strategic significance

The new legal position makes a parallel national patent an attractive flanking right alongside the Unitary Patent. The principal reason is that the Unitary Patent stands or falls centrally. A successful revocation action before the UPC brings it down with effect for all participating Member States. A parallel German patent, subject to the national courts, is unaffected by this and can safeguard protection in Germany. There is also the choice of forum – the UPC on the one hand, and the German courts with their established practice on the other.

These advantages must be weighed against the additional costs and administrative effort of a second right. As before, there also remains the option of additionally filing a German utility model or branching one off from a European application.

Conclusion

Since June 1, 2023, the prohibition of double protection is no longer an obstacle to combining a Unitary Patent with a national German patent: because the Unitary Patent is necessarily subject to the UPC’s jurisdiction and cannot be opted out, the prohibition can never apply here. The national patent remains fully effective and can be used deliberately as a hedge against central revocation or for forum choice. The old prohibition of double protection lives on only for the opted-out classic European patent. Anyone considering a parallel rights strategy should factor in the objection of double enforcement and the cost implications from the outset.

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Micro-Entity Fee Reductions: Opportunities, the Comparison with the US, and the Risks of Incorrect Declarations

Posted on June 19, 2026 by Dr. Dirk Franke

Fee reductions for small applicants are tempting – they noticeably lower the cost of the patent procedure. Both the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) offer such reductions. What many underestimate is that the reduction is not a one-time checkbox, but a continuing declaration about one’s own status. If that declaration is made incorrectly or becomes outdated, serious consequences can follow – up to and including loss of the application or unenforceability of the patent. This article explains the EPO scheme, compares it with the US system, and shows what applicants absolutely need to watch out for.

The EPO micro-entity reduction at a glance

Since 1 April 2024, under Rule 7a EPC, the EPO has granted a 30% reduction on the principal procedural fees – including the filing, search, examination, designation, grant and renewal fees. Eligible parties are microenterprises (fewer than 10 employees and an annual turnover and/or annual balance sheet total of no more than EUR 2 million), as well as natural persons, non-profit organisations, universities and public research organisations.

A filing cap applies in addition: each applicant must have filed fewer than five European or Euro-PCT applications in the five years preceding the relevant application. Where there are several applicants, each must meet the requirements. The status must be expressly declared at the latest when the relevant fee is paid; the decisive point is the applicant’s status on the date of payment. The reduction applies irrespective of nationality, residence, place of business and the language of the proceedings.

The comparison with the US

The USPTO operates two tiers that are considerably more generous than the EPO scheme:

  • Small entity: 60% reduction. This covers natural persons, small businesses with no more than 500 employees (including affiliates), and non-profit institutions. A further condition is that the invention has not been assigned or licensed to a party that does not itself qualify as a small entity.
  • Micro entity: 80% reduction. In addition to small-entity status, this requires in particular that the applicant’s gross income does not exceed a certain threshold (around three times the US median household income) and that the inventor has been named on fewer than five previously filed US applications; alternatively, there is a separate route for those affiliated with an institution of higher education.

At first glance, the US system looks more attractive. The decisive difference, however, lies not in the size of the reduction but in the consequences of an improper claim – and here the USPTO sharpened its approach considerably in 2025.

Risks of incorrect or outdated declarations

At the EPO: the threat of loss of rights

If the declaration of status is missing, incorrect, or a change of status is not notified, the underpaid fee is deemed not to have been validly paid. For most fees, this means the application is deemed withdrawn. In many cases this can be cured through further processing (Article 121, Rule 135 EPC): within two months of the communication noting the loss of rights, the missing amount must be paid together with the further processing fee. That fee, however, regularly exceeds the 30% saved – the apparent saving is reversed.

The renewal fees are particularly dangerous: further processing is not available for them. Here only the usual six-month grace period with a 50% surcharge applies. If the error is discovered only after that, the loss of rights may be irreversible. The EPO also carries out random checks on applicant status during the grant procedure.

In the US: surcharges, delay, and unenforceability

In 2025 the USPTO brought a new penalty system into force (statutory basis: 35 U.S.C. §§ 41(j) and 123(f), introduced in 2023 and supplemented by a good-faith exception in December 2024). Where an incorrect small- or micro-entity status is found, the following consequences may follow:

  • A penalty of three times the amount. The office imposes a fine of not less than three times the amount underpaid – unless the applicant shows that the declaration was made in good faith.
  • Procedural delay. The USPTO issues a combined notice of payment deficiency and an order to show cause. The application is removed from examination pending resolution – with possible losses in patent term adjustment.
  • Allegation of fraud on the office. Under the MPEP sections 509.03(b) and 509.04 as revised in 2025, a status declaration made improperly or with intent to deceive constitutes “fraud practiced on the Office”. The Office of Petitions is now expressly authorised to review status declarations.
  • Unenforceability of the patent. Where the false statement is made with intent to deceive, the patent may be treated as unenforceable. In infringement litigation, defendants comb the file history for precisely such discrepancies in order to devalue the patent.

The comparison shows that the EPO sanctions primarily through the threat of loss of rights, which – except for renewal fees – can usually still be cured. Since 2025, the USPTO has relied on a markedly more punitive regime combining fines, procedural disadvantages, and the risk of rendering the patent entirely worthless. In both systems, however, the same principle applies: status is not a one-time entry but must be checked on an ongoing basis.

What applicants need to watch out for

The risks described give rise to several practical guidelines:

  • Check before every payment, not just at filing. The relevant status is assessed afresh at each individual fee payment (filing, examination, grant, every renewal/maintenance fee). A single assessment at filing is not enough.
  • Actively monitor changes. Eligibility can be lost through growth (headcount, turnover), through exceeding the filing cap, through assignments, licences or mergers, or – in the US – through funding rounds involving affiliated entities. Such events should trigger an internal alert.
  • Notify changes of status in good time and pay full fees. As soon as the requirements fall away, the office must be informed; subsequent fees must be paid in full. Reduced fees already validly paid remain unaffected.
  • Multiple applicants: all must qualify. If even one co-applicant fails to meet the requirements, the reduction is lost altogether.
  • Give renewal fees special protection. At the EPO in particular, a loss of rights on renewal fees is barely recoverable. A reliable deadline- and status-monitoring system that immediately informs the party responsible for payment of any change of status is indispensable here.
  • When in doubt, pay the full fee. If status is unclear, it is often safer to pay in full first and – where possible – request a refund later. An overpayment is easier to recover than an incorrect declaration is to justify.
  • Document your evidence. In the US especially, a careful, demonstrable assessment (“reasonable inquiry”) is expected. Records supporting the status claimed should be kept.
  • Review on any transfer. If the application passes to a new owner who does not meet the requirements, entitlement is lost – the reduced payment can then become invalid.

Conclusion

The micro-entity reduction is a valuable instrument for cutting the cost of the patent procedure – 30% at the EPO, and up to 80% in the US. The flip side is considerable risk where declarations are incorrect or outdated: at the EPO, loss of rights looms; in the US, since 2025, there is in addition a triple-fee penalty, procedural delay, and, in the worst case, unenforceability of the patent. Anyone using the reduction should therefore check status on an ongoing and documented basis – and, when in doubt, pay in full rather than buy a modest saving at a disproportionately high risk.

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Micro Entity Fee Reductions: What the GPTO Offers – and What It Does Not

Posted on June 19, 2026 by Dr. Dirk Franke

We are regularly asked whether Germany offers a special fee reduction for small applicants – a “micro-entity discount” of the kind familiar from the United States or the European Patent Office. The short answer is that the German Patent and Trade Mark Office (GPTO) does not provide such a status-based micro-entity discount. The widely noted 30% reduction is a scheme of the European Patent Office (EPO). This article explains both regimes and, in particular, looks at Germany’s own cost-relief instrument – procedural cost assistance – and why it compares unfavourably with the international reductions.

The EPO micro-entity reduction

Since April 1, 2024, under Rule 7a EPC, the EPO has granted a 30% reduction on the principal procedural fees where the applicant qualifies as a micro-entity. The reduction covers, among others, the filing, search, examination, designation, grant and renewal fees, as well as certain Euro-PCT fees where the EPO acted as International Searching Authority.

Eligible applicants are not only microenterprises in the narrow sense, but also natural persons, non-profit organisations, universities and public research organisations. A microenterprise is defined – following EU Recommendation 2003/361/EC – as an enterprise employing fewer than 10 persons with an annual turnover and/or annual balance sheet total not exceeding EUR 2 million.

A filing cap applies in addition: each applicant must have filed fewer than five European or Euro-PCT applications in the five years preceding the relevant application. Where there are several applicants, each of them must independently meet the requirements.

Notably, the scheme applies irrespective of nationality, residence, place of business and language of the proceedings – a clear broadening compared with the earlier, language-based reduction. The status must, however, be expressly declared, at the latest when the relevant fee is paid; it is not applied automatically. If the status changes (for example because the thresholds are exceeded or the filing cap is reached), the EPO must be notified, and fees falling due thereafter are again payable in full. Incorrect declarations can have adverse consequences, so careful verification before declaring is advisable.

And at the GPTO?

The GPTO currently provides no comparable micro-entity reduction and no size-based tiering of patent fees. German official fees are, however, moderate by international standards in any event – a key reason why a separate reduction for small applicants has not been introduced here.

German law does, nevertheless, have its own instrument for financial relief, although its purpose is fundamentally different: procedural cost assistance (Verfahrenskostenhilfe).

Procedural cost assistance – Germany’s distinct route

Procedural cost assistance (Verfahrenskostenhilfe, “VKH”) under Sections 129 et seq. of the German Patent Act (PatG) allows parties in proceedings before the GPTO, the Federal Patent Court and the Federal Court of Justice to have the costs borne by the state, in whole or in part. In grant proceedings, the applicant receives VKH on request – applying Sections 114 to 116 of the German Code of Civil Procedure (ZPO) by analogy – provided there is a sufficient prospect of the patent being granted and the application does not appear frivolous (mutwillig). On a separate request, renewal fees may also be included; payments are made to the Federal Treasury. The effect of a grant is, in essence, that the legal consequences otherwise triggered by non-payment – such as the deemed withdrawal or lapse – do not occur. On request, a patent attorney or attorney-at-law may also be assigned to the applicant (Section 133 PatG).

VKH is therefore a valuable instrument, particularly for impecunious individual inventors. It is, however, not a discount but a means-tested form of welfare support – and this is precisely where the decisive differences from the international reductions lie.

Disadvantages of procedural cost assistance compared with the EPO and USPTO

Set against the micro-entity schemes of the EPO (30%) and the USPTO (60% for a “small entity”, 80% for a “micro entity”), several weaknesses of VKH become apparent:

  • A means test rather than a status test. VKH requires the applicant to show that, given their personal and financial circumstances, they cannot bear the costs, or can bear them only in part; these circumstances must be disclosed and substantiated. The EPO and USPTO reductions, by contrast, turn solely on an easily verifiable status (company size, number of prior filings) – regardless of whether the applicant is wealthy or profitable.
  • Practically closed to companies. Legal persons – such as the typical start-up GmbH – obtain VKH only under the very narrow conditions of Section 116 ZPO, namely where failure to pursue the matter would run counter to the general interest. The micro-entity reductions, in contrast, are designed precisely for microenterprises and are readily available to them.
  • A merits assessment up front. VKH is granted only where there is a sufficient prospect of grant and no frivolousness. The office thus carries out a preliminary substantive assessment. At the EPO and USPTO there is no examination of the merits whatsoever; the reduction applies irrespective of the prospects of grant.
  • Application burden, repeated at each stage. VKH must be applied for afresh for each stage of the proceedings – assistance granted for the grant proceedings does not, for instance, extend to opposition proceedings. The international reductions require no more than a simple declaration of status when the relevant fee falls due.
  • Deferral with a repayment risk, not a genuine fee reduction. VKH does not reduce the fee owed; depending on the applicant’s circumstances it provides for the cost to be covered in instalments or in full, and that coverage may have to be repaid if the applicant’s situation improves. The micro-entity reduction, by contrast, permanently lowers the fee amount itself, with no obligation to repay.
  • Purely national reach. VKH covers only proceedings before the GPTO, the Federal Patent Court and the Federal Court of Justice. Applicants filing in Europe or the United States benefit from the respective reductions there, but find no comparably low-threshold equivalent in the German proceedings.

In short, VKH is targeted support for the genuinely impecunious, whereas the EPO and USPTO reductions are conceived as broadly accessible, low-bureaucracy relief for small – and quite possibly economically healthy – applicants. The two instruments therefore serve different purposes and are only comparable to a limited extent.

Other routes to cost relief in Germany

Besides VKH, further options exist for reducing IP costs. These include, in particular, the EU SME Fund, through which – when the funding window is open – part of the official fees can be reimbursed; its focus, however, is on trade marks and designs. There are also funding and advisory services, for example through the patent information centres. Procedural levers can help to spread costs as well: the request for examination at the GPTO can be deferred, so that examination and downstream costs arise only once the commercial significance of the invention is clearer.

A look beyond Germany

The international picture is mixed. The USPTO, with its two tiers, goes considerably further than the EPO. Other offices, such as the Chinese CNIPA, also provide reductions. Anyone building an IP portfolio across several countries should factor these differences into their cost and filing strategy at an early stage.

Takeaways for practice

Microenterprises, individual inventors, universities and non-profit institutions filing in Europe should make active use of the EPO reduction – it can save substantial amounts across the entire grant and maintenance procedure, but must be declared in good time. For national German filings at the GPTO there is no micro-entity discount. Procedural cost assistance can step in, but it is tied to financial need, a merits assessment and a noticeable application burden, and is barely accessible to ordinary companies. It is therefore no substitute for a genuine fee reduction of the kind the EPO and USPTO offer. All the more reason for German applicants to consider available funding and a well-planned, cost-conscious approach to the proceedings.

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Filing a Patent in France: Formal Requirements, Particularities and Costs

Posted on June 19, 2026 by Dr. Dirk Franke

In France, an invention can be protected either by filing a national patent or utility certificate application, or by designating France in a European or international (PCT) patent application. On the basis of a pending PCT application, patent protection in France is only available through the European phase.

This article summarises the formal requirements, particularities and costs of national patent and utility certificate applications in France. It reflects the current procedure, which was substantially reformed by the so-called Loi PACTE (Law No. 2019-486 of 22 May 2019), whose individual measures entered into force in stages during 2020.

1. National Patent Application

A national patent application in France (demande de brevet) can — as in Germany — be filed in any language. If the application is not already filed in French, a translation must be supplied within a period of two months from notification of a corresponding official communication pointing out the formal deficiency.

The French Patent and Trademark Office (Institut national de la propriété industrielle, INPI) first examines the application documents for formal deficiencies before the substantive examination. Among other things, it examines whether the subject matter of the claims is sufficiently supported by the detailed description, whether the claims are clear and intelligible, and whether the application relates to a single invention only. The formal examination also checks whether the claimed invention must be refused on the basis of a statutory exclusion from patentability. As in Germany, computer programs and business methods, for example, cannot be protected by patents.

Provided that the official fees are paid within the statutory period (filing fee for electronic filing: EUR 26, including the first annuity; search fee: EUR 520; a 50 % reduction applies to natural persons, SMEs and non-profit/research or teaching bodies — as of June 2026), the INPI draws up a preliminary search report, which is supplemented by a written opinion on patentability. In terms of structure and scope, the search report is similar to an Extended European Search Report drawn up by the European Patent Office.

Where the application is filed as a first filing (i.e. without claiming priority), the search is not carried out by the INPI itself but by the European Patent Office as a subcontractor of the national office. As a rule, the preliminary search report is then available within nine months from the filing date — a period somewhat longer than the eight-month target the German Patent and Trademark Office (DPMA) aims for (though does not always meet) and longer than the average processing time at the UK Intellectual Property Office.

Where the application is filed as a subsequent filing (i.e. claiming priority), the INPI invites the applicant, around six months after publication of the application, to submit the search results of the office of first filing. Unlike under the European procedure, however, providing this information is voluntary: the application is not deemed withdrawn if the applicant does not comply with the request. As with a first filing, the INPI will then send the preliminary search report.

Within a period of three months from publication of the preliminary search report, any third party may file observations against the grant. Unlike the European procedure under Art. 115 EPC, however, anonymous observations against a French patent application are not accepted.

If documents in category X or Y are cited in the preliminary search report, a response to the report must be filed within an extendable period of three months.

A key change introduced by the Loi PACTE concerns the substantive examination. Since 22 May 2020, the INPI also examines inventive step and may refuse a patent application solely on the ground that the claimed subject matter lacks inventive step (Art. L. 612-12 of the French Intellectual Property Code). Previously, the INPI could only refuse an application on the basis of objections regarding lack of novelty; doubts as to inventive step were merely placed on file in the final search report and left to be resolved, if necessary, before the ordinary courts. This is no longer the case: inventive step is now a ground for refusal during examination, which considerably strengthens the robustness of granted French patents.

Where a response to the preliminary search report is required, it is strongly advisable to submit at least some claims whose subject matter is both novel and inventive. It is also advisable not to put on file, when responding to the search report, any statements that could be used before the ordinary courts to interpret the scope of protection of the invention restrictively. In this respect, proceedings before the INPI display features comparable to the prosecution-history estoppel known — to the applicant’s disadvantage — from the US grant procedure.

The substantive examination by the INPI is concluded on the basis of the documents cited in the search report, any third-party observations, and the applicant’s response to the preliminary search report. A final search report is served on the applicant.

After payment of the grant and printing fees (EUR 90 in total, as of June 2026), the patent specification is published together with the final search report.

Contrary to the position before the reform, French law now provides for an opposition procedure. Since 1 April 2020, any third party may file an opposition against a French patent before the INPI within nine months of grant (applicable to patents granted as of that date) — comparable to the procedure in Germany and before the EPO. Independently of this, the proprietor may also request a voluntary limitation procedure after grant.

The term of a patent in France ends 20 years after the filing date.

2. National Utility Certificate Application

As a cost-effective and rapid alternative to a patent application in France, an application for a utility certificate (certificat d’utilité) is available, for which no substantive examination is provided.

The most significant change here also stems from the Loi PACTE: the maximum term of the utility certificate was extended from 6 to 10 years from the filing date, with effect from 11 January 2020 (Decree No. 2020-15 of 8 January 2020). The extension applies not only to utility certificates filed as of that date but also to those still in force on 10 January 2020. The term therefore now corresponds to that of a German utility model (Gebrauchsmuster).

The formal requirements for filing a utility certificate correspond to those of a patent application in France. No search fee is payable, so that only the filing fee (EUR 26, as of June 2026) is due.

As a rule, the utility certificate application is published about 18 months after filing. This is a key difference from the German utility model application, which is published upon registration (i.e. usually about three months after filing). Early publication can, however, also be requested in France.

After publication of the utility certificate application, any third party may file observations within a period of three months. After payment of the grant and printing fees by the applicant, the utility certificate is registered.

Unlike for a patent in France, the proprietor of a utility certificate must request a search of the prior art from the INPI if it wishes to enforce the rights under the certificate against competitors and infringers. Only the search confers on the proprietor the standing to sue.

Where a utility certificate and a patent in France relate to the same subject matter, have the same filing date and were filed by the same applicant, the utility certificate loses effect upon grant of the patent in France. This corresponds to the prohibition of double protection that also exists under German and European patent law.

A further new feature introduced by the Loi PACTE is convertibility: since 11 January 2020, a utility certificate application can be converted into a patent application (previously, only the reverse — conversion of a patent application into a utility certificate — was possible). This makes the utility certificate a considerably more flexible starting point than before.

3. Provisional Patent Application

The Loi PACTE also created an entirely new filing option. Since 1 July 2020, it has been possible to file a provisional patent application (demande provisoire de brevet). This is a simplified, lower-cost initial filing that secures a filing date and must be completed (regularised into a regular patent application) within a period of twelve months, failing which it is deemed withdrawn. The provisional application is intended in particular to make an early filing date more accessible to start-ups, SMEs and individual inventors.

4. Particularities of French Patent Law

The following further particularities should be noted in connection with granted patents in France.

A granted patent in France applies not only to the European territory of France but also to the French overseas territories (La France d’Outre-Mer), including the overseas departments of Guadeloupe, Martinique, French Guiana, Réunion and Mayotte, the collectivités d’outre-mer (COM), the collectivité sui generis (CSG) of New Caledonia, and the French Southern and Antarctic Lands (TAAF).

A working requirement (obligation d’exploiter) applies to granted patents in France: the invention must actually be worked, within a period of three years, in the territory of at least one Member State of the European Economic Community. The period is generally calculated from grant of the patent. If the invention is not worked, a third party wishing to work the invention may demand the grant of a compulsory licence against payment of compensation.

5. Our Assessment

The Loi PACTE has noticeably improved the attractiveness of the utility certificate. Both the extended term of 10 years (which, with regular publication 18 months after the filing or priority date, amounts to a de facto term of about 8.5 years) and the new possibility of converting the application into a patent application increase the economic value of this right. Applying the apud model of the Industrieclub Düsseldorf, the average value of the utility certificate in France now stands at roughly 25 % of the average value of a granted patent in France (10/20 × 0.5), compared with around 15 % under the previous 6-year term. The utility certificate is therefore worth considering far more often than was the case in 2015, when we recommended it only in rare special situations.

A national patent application in France comes into consideration in particular where the applicant does not want a PCT application but needs protection in only a few European countries, including France. In such cases, filing national applications — for example patent applications in Germany, the United Kingdom and France only, either as first or subsequent filings — may be economically sensible instead of a PCT or European application. In view of the steadily rising costs of grant proceedings before the European Patent Office, we expect industry’s interest in national grant proceedings in Europe to increase again.

Finally, the introduction of an examination of inventive step and of a post-grant opposition procedure means that French patents are now considerably more robust and legally certain than under the regime described before 2020 — addressing a concern that was, with good reason, frequently raised in practice.

Photo: © Martie Swart, [CC BY 2.0]

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Moldova Joins the EPC

Posted on June 18, 2026 by Dr. Dirk Franke

On June 1, 2026, the Republic of Moldova acceded to the European Patent Convention (EPC) as its 40th contracting state. A single European patent application can now reach 40 states.

What changes for applicants

For European patent applications with a filing date on or after June 1, 2026, Moldova – like the other 39 member states – is automatically designated, and no separate validation fee is due. A single application can therefore secure protection in 40 states without paying any extension or validation fees.

Applications with an earlier filing date remain subject to the previous regime, under which protection in Moldova is available only through validation. Specifically, Moldova remains available as a validation state for European applications with an effective filing date between November 1, 2015 and May 31, 2026. For pending matters, it is therefore worth checking which route – validation or automatic designation – applies in the individual case.

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The apud Model of Qualitative Patent Valuation – and How to Use Its Factors to Increase the Value of Your Patent Portfolio

Posted on June 17, 2026 by Dr. Dirk Franke

Patents often make up a substantial part of a company’s intangible value – yet that value cannot be captured in a single figure. The apud model is a qualitative valuation approach that systematically captures the characteristics that determine a patent’s worth. Once you know these factors, you can influence them deliberately and thereby increase the value of your portfolio.

What is the apud model?

The apud model was developed by the Patent Law Working Group at the University of Düsseldorf (in German: Arbeitskreis Patentrecht an der Universität Düsseldorf, abbreviated “apud”) and has been discussed in practice since the mid-2000s. It is a qualitative valuation model: unlike purely monetary methods (the cost, market or income approach), it is not primarily aimed at a sum of money but at a transparent assessment of a patent’s technological, legal and strategic quality. In the terminology of patent valuation, it is therefore concerned less with “valuation” (determining a monetary figure) than with “evaluation” (assessing quality).

The underlying idea is to place a patent’s value determinants in a methodologically sound relationship with its economic effect, and to make the result transparent through a points system. The model was deliberately designed to be flexible and manageable for small and medium-sized enterprises as well. It does not claim to be the only valid approach, but offers a structured route that discloses the relevant criteria – especially where forecasts (for example as to market development) come into play. For a monetary valuation building on this, a standardised method (such as the German standard DIN 77100) can be used in addition.

The model’s valuation factors

The apud model looks at two levels: the legal and technical substance of the right, and its economic effect in the product market.

1. Legal and technical value determinants

At the core are four value determinants, which together describe the strength and robustness of the right:

  • Novelty – how clearly does the protected teaching stand apart from the prior art?
  • Inventive step – how far does the inventive contribution go beyond what was obvious to the skilled person?
  • Scope of protection – how broad and, at the same time, how robust is the scope defined by the claims?
  • Difficulty of circumvention – how hard is the patent to design around?

For a patent that has already been granted, practical assessment aspects are added – in particular the scope of protection, the enforceability against infringers (whether infringement can actually be established), the validity in the face of attack (opposition / nullity), and the remaining term. In the model’s points system these legal aspects feed into the overall assessment up to a defined maximum; what matters is less the exact numerical value than the structured, comparable way of capturing them.

2. Economic patent effect (product market)

A legally strong patent is only valuable if it has an effect on a relevant market. The model therefore brings in the economic dimension: the patent’s connection to specific products, the size and growth of the market addressed, the competitive advantage or exclusionary effect, and the fit with the company’s strategy (for example own use, licensing or sale). It would be a mistake to equate patent valuation with product valuation – a patent always takes effect only through the section of the product that its claims delimit.

How to increase portfolio value through the apud factors

The practical benefit of the model is that every factor is a lever. By paying attention to these factors as early as drafting, prosecution and portfolio management, you systematically raise the quality – and thus the value – of your rights.

Secure novelty and inventive step

Both determinants largely govern validity. You strengthen them through a careful prior-art search before filing, through strict preservation of novelty (no premature disclosure, non-disclosure agreements), and through an application that clearly works out the inventive core and supports it with technical effects. The more robust the novelty and inventive step, the lower the risk of a successful attack.

Make the scope of protection broad and robust

Aim for the broadest possible main claim that is still covered by the prior art, and secure it with a well-considered claim hierarchy providing fall-back positions (dependent claims). Use the various claim categories (product, process, use) and – where sensible – divisional applications to cover variants and downstream commercialisation stages. A broad yet defensible scope increases value far more than a claim narrowly tailored to a single embodiment.

Increase the difficulty of circumvention

Protect the underlying technical principle, not just one specific implementation. Cover obvious workarounds through additional claims or accompanying applications, and build a “patent thicket” (a portfolio of coordinated rights) around key technologies. The more expensive and unattractive a design-around becomes for competitors, the higher the economic value.

Ensure enforceability

A patent is only worth as much as it can be enforced. Draft claims so that infringement is detectable and provable on the market – features that occur only inside a third party’s manufacturing process are hard to prove. Focus on perceptible features that can ideally be established on the end product, and document use and infringement situations.

Maintain validity

Ensure a clean prosecution file, robust fall-back positions in the description, and – for particularly important rights – validity and infringement opinions. Actively monitor opposition and nullity risks; a successfully defended patent gains value, while a vulnerable one loses it.

Manage term and economic effect

Take the remaining term into account in every decision on maintenance or abandonment, and check where supplementary protection certificates (SPCs) allow an extension. Above all, align your portfolio with the products and markets that actually matter. Rights with no product or market connection tie up fees without creating value.

From the single patent to a managed portfolio

The real lever lies in the regular, criteria-based assessment of the entire stock. Score and rank your rights periodically against the apud factors. This yields concrete measures:

  • Build on strengths: invest deliberately in highly rated rights (divisional applications, foreign extension, accompanying filings).
  • Clear out weaknesses: abandon low-rated rights with no market or enforcement value and thereby save maintenance fees.
  • Close gaps: file where strategically important products are still unprotected or where workarounds remain open.
  • Communicate value: present the structured assessment transparently to investors, buyers or licensees – a comprehensible scoring grid increases the credibility of the value claimed.

Conclusion

The apud model ties a patent’s value to comprehensible factors: novelty, inventive step, scope of protection and difficulty of circumvention on the legal and technical side, complemented by enforceability, validity and term as well as the economic effect in the product market. Those who consider these factors from the moment of filing and assess their portfolio against them regularly raise not only the quality of the individual rights but also the demonstrable value of the entire stock. We would be glad to support you in the qualitative assessment and strategic alignment of your patent portfolio.

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Abstract (Single-Colour) Trademarks and Their Case Law in Germany

Posted on June 17, 2026 by Dr. Dirk Franke

A single colour can be a trademark – Telekom’s magenta, Langenscheidt’s yellow and the Sparkassen red are well-known examples. At the same time, the abstract, contourless colour mark is one of the hardest marks to obtain and to enforce. This post summarises the legal framework and the leading German case law.

What is an abstract colour mark?

A distinction must be drawn between the abstract (contourless) colour mark – protection of a colour “as such,” independent of any particular shape or arrangement – and the mere colouring of a word/figurative mark. An abstract colour mark seeks to protect the shade alone, in any use on goods, packaging or in advertising. It is precisely this detachment from any concrete form that makes registration difficult.

Legal framework

Under Section 3(1) of the German Trade Mark Act (Markengesetz, MarkenG), colours and combinations of colours are capable of being a trademark, so capacity as such is not in doubt. The hurdles lie in the absolute grounds for refusal in Section 8 MarkenG: an abstract colour regularly lacks distinctive character (Section 8(2) no. 1) and is often subject to a need to be kept free for competitors (Section 8(2) no. 2), because colours should remain available as a general design resource. These grounds can be overcome by acquired distinctiveness through use (“Verkehrsdurchsetzung,” Section 8(3) MarkenG).

As to representation: the former requirement of graphic representability was abolished in Germany by the Trade Mark Law Modernisation Act (MaMoG) with effect from January 14, 2019 (and across the EU from October 1, 2017). The colour must nevertheless be defined clearly and precisely, which in practice is done by specifying an internationally recognised colour code (such as RAL, Pantone or HKS).

The EU-law foundations were laid early by the Court of Justice of the European Union. In Libertel (judgment of May 6, 2003, C-104/01) the Court held that a colour as such can in principle be a trademark, but normally lacks inherent distinctive character, and that there is a public interest in not unduly restricting the availability of colours. For colour combinations, Heidelberger Bauchemie (judgment of June 24, 2004, C-49/02) required a systematic arrangement associating the colours in a predetermined and uniform way.

The basic rule: abstract colours are rarely inherently distinctive

In line with the CJEU, the German courts assume that the public usually perceives a colour as a decorative element rather than as an indication of commercial origin. An abstract colour mark therefore possesses inherent distinctive character only exceptionally – for instance where the goods or services claimed are very specific, the relevant market is narrowly defined, and the use of colours is unusual there. As a rule, the route to a registrable colour mark therefore runs through acquired distinctiveness.

The leading decisions of the Federal Court of Justice (BGH)

Langenscheidt Yellow (2014)

The current line of authority opened with the yellow of the dictionary publishers. In infringement proceedings, the BGH held that a competitor’s yellow packaging (language-learning software) infringed the abstract colour mark “yellow” registered for Langenscheidt (judgment of September 18, 2014, I ZR 228/12). In the parallel cancellation proceedings, the BGH confirmed the validity of the mark and dismissed the cancellation request (order of October 23, 2014, I ZB 61/13 – “Langenscheidt-Gelb,” GRUR 2015, 581). It was thus settled that an abstract colour, where it has acquired distinctiveness, can be protected as a mark and enforced against third parties.

Nivea Blue (2015)

In the dispute over Beiersdorf’s blue (Pantone 280 C), the BGH set aside the cancellation ordered by the Federal Patent Court and referred the case back (order of July 9, 2015, I ZB 65/13 – “Nivea-Blau”). The decision contains the standard that is central in practice: abstract colour marks are generally not inherently distinctive, but can acquire distinctiveness through use; for that, as with other types of mark, a recognition level of more than 50 % suffices. The BGH rejected as too strict the 75 % threshold the Federal Patent Court had applied. At the same time, it set demanding requirements for the methodology of consumer surveys and dismissed the survey submitted as flawed (respondents had been shown a blue colour card with a white border, which may have skewed the results in the proprietor’s favour). After referral back and a limitation of the mark to certain product groups, the competitor withdrew its cancellation request; the Federal Patent Court confirmed that the mark remained on the register (decision served on October 18, 2019). The Nivea blue is therefore still protected.

Sparkassen Red (2014–2016)

The best-known case concerned the red (HKS 13) of the umbrella association of the German savings banks (Sparkassen-Finanzgruppe), registered for retail banking. On a reference from the Federal Patent Court, the CJEU first clarified that acquired distinctiveness does not turn on rigid percentage figures but on an overall assessment (judgment of June 19, 2014, C-217/13 and C-218/13). After the Federal Patent Court nonetheless ordered cancellation (order of July 8, 2015, 25 W (pat) 13/14), the BGH set that aside and kept the mark on the register (order of July 21, 2016, I ZB 52/15 – “Sparkassen-Rot,” BGHZ 211, 268).

The decision brought two important clarifications. First, the BGH confirmed the principle that inherent distinctiveness is lacking, but that it had here been overcome by acquired distinctiveness. Second, for cancellation proceedings it took the decisive point in time to be the decision on the cancellation request: even a colour mark that may originally have been registered wrongly – for want of proven acquired distinctiveness – remains protected if it had acquired such distinctiveness by that later date (Section 50(2) sentence 1 MarkenG). What mattered was a recognition level above 50 %, supported by consumer surveys and further circumstances. In the accompanying infringement dispute against the Spanish Santander group, the BGH had earlier set aside an interim judgment and referred the matter back (judgment of September 23, 2015, GRUR 2015, 1201).

A recent confirmation: NJW Orange (2021)

That the line continues is shown by the decision “NJW-Orange” (BGH, GRUR 2021, 1526) on the abstract colour mark “orange” of a legal journal. The BGH reaffirmed the principles from “Sparkassen-Rot” and again refined the requirements for consumer surveys – for example, that the response option “looks familiar” must not be actively offered but only recorded if mentioned spontaneously, and that where a colour has only ever been used in combination with other elements it is hard to prove that the colour as such has become established.

Proving acquired distinctiveness

In practice, acquired distinctiveness is demonstrated above all through a methodologically sound consumer survey; the German Patent and Trade Mark Office (DPMA) has published guidance on this. As a rule, more than 50 % of the relevant public must perceive the colour as an indication of origin. Supporting factors include market share, the intensity, geographical spread and duration of use, advertising expenditure, and declarations from chambers of industry and commerce and trade associations. Particular difficulties arise where the colour has never been used in isolation but always together with word or figurative elements – in that case the evidence will often establish only that the specific overall design has become established, not the colour as such.

Practical tips for applying for an abstract colour mark

  • Define the colour unambiguously by means of a recognised colour code (RAL, Pantone, HKS).
  • Maintain a consistent corporate design over many years – the colour actually used should match the colour applied for exactly.
  • Keep the list of goods/services narrow and specific; a clearly defined market improves the prospects of success.
  • Commission a consumer survey in line with the DPMA’s requirements early, and document use and market data.
  • Where possible, use the colour in isolation (not only together with a logo or word mark) so that the distinctiveness of the colour as such can be proved.

Conclusion

Abstract colour marks are protectable in Germany – but they are “earned” marks: the route almost always runs through acquired distinctiveness, with a high evidentiary bar. For established brands that have used a house colour consistently over many years, the effort can nonetheless pay off, as the decisions on Langenscheidt yellow, Nivea blue and Sparkassen red show: once a colour has been registered and has acquired distinctiveness, its non-decorative use by competitors can be effectively prohibited.

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Failed Trials, Strong Patents: The Federal Court of Justice on Fampridine-SR (BGH X ZR 165/23)

Posted on June 16, 2026 by Dr. Dirk Franke

German Federal Court of Justice (Bundesgerichtshof), judgment of 17 March 2026 – X ZR 165/23 – on appeal from the Federal Patent Court

In a decision that commentators are already calling a milestone for pharmaceutical patents, the X. Civil Senate (Patent Senate) of Germany’s Federal Court of Justice (Bundesgerichtshof, BGH) upheld a patent covering sustained-release fampridine (Fampridine-SR) for improving walking speed in patients with multiple sclerosis (MS). The judgment is notable not only for its outcome—it reversed an invalidation by the Federal Patent Court—but for what it says about two pillars of patent law: the novelty of medical uses and the assessment of inventive step where clinical hurdles stand in the way.

Background: the patent and the dispute

The patent in suit concerned the use of a sustained-release formulation of fampridine (4-aminopyridine) to increase walking speed in MS patients—in essence, a dosing-regimen invention in a disease characterised by demyelination of nerve fibres, which slows or blocks the transmission of impulses along those fibres.

Generic challengers brought nullity actions. At first instance, the 3rd Senate (Nullity Senate) of the Federal Patent Court (Bundespatentgericht) declared the patent null by judgment of 11 July 2023. The patentee appealed (Berufung) to the BGH.

The outcome

The BGH reversed. It amended the Federal Patent Court’s judgment, dismissed the nullity actions, and ordered the claimants to bear the costs of the proceedings. The patent therefore stands.

Key findings of the decision

1. A high bar for novelty of a medical use (the “Memantine” line confirmed)

The Senate reaffirmed its Memantine case law: the suitability of a substance for a particular therapeutic effect is only disclosed in a novelty-destroying way if a prior-art reference makes clear, directly and unambiguously, that the substance actually has that effect. Mere expectations, estimates, or announcements of planned clinical studies—for example in investor materials or conference abstracts—are not sufficient to anticipate the invention. The Court drew a sharp line between disclosed facts and mere hopes.

2. Inventive step and the “roadblock” principle

Even where a prior-art document highlights a particular solution path, inventive step can be denied only if that path could actually have been pursued successfully with the knowledge and means available at the filing or priority date, judged on an ex-ante basis.

It is not enough that a path was theoretically conceivable. If, after setting out along it, obstacles or other circumstances would have arisen that—from a skilled person’s perspective—made continuing inadvisable, inventive step is not negated.

Crucially, the assessment of a reasonable expectation of success must take account of difficulties that were not yet known in the prior art but that would have materialised once the skilled person embarked on the path.

3. Clinical failures can support inventiveness

Where a clinical study (here, the MS-F202 trial) missed its primary endpoint and failed to show statistical significance, that failure can amount to a technical obstacle weighing against obviousness. Far from undermining the patent, a setback in earlier development can serve as evidence that the claimed solution was not obvious—because, without the invention, the skilled person would have faced what looked like a dead end.

4. Post-hoc analyses are a legitimate means of proof

The Court accepted that a post-hoc responder analysis is a valid way to establish a technical property. Although it is a statistical method, it is relevant under patent law because it speaks to a technical matter—the actual effect of the substance—and can support the efficacy of a specific dosing regimen even where the overall study cohort did not reach a significant result.

Practical takeaways

  • Document clinical setbacks. Missing a primary endpoint in early trials is not necessarily fatal to a patent; it can demonstrate that the eventual solution was not obvious.
  • Scrutinise the prior art closely. In nullity proceedings, distinguish carefully between references that disclose facts and those that convey only expectations or “hope values”—the BGH treats these very differently.
  • Use subgroup / responder analyses. Identifying responders through later statistical evaluation is a legitimate way to substantiate the effect of a specific dosing regimen.
  • Good news for dosing-regimen patents. The decision reinforces that the path to regulatory approval often runs through unforeseeable technical hurdles that can justify an inventive step.

Why it matters

For research-based pharmaceutical companies, the judgment is a meaningful signal. It confirms a demanding standard for anticipating a medical use, and it recognises that real-world drug development is rarely a straight line: obstacles encountered along the way—including failed trials—can be part of what makes an invention non-obvious. For generic challengers, it underscores that prior-art references must disclose the relevant therapeutic effect clearly and directly, not merely foreshadow it.

The full text of the judgment is available from the Federal Court of Justice (PDF).

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