Revised German Patent Act: More Flexibility for Applicants

Revised German Patent Act entering into force on April 1, 2014A revised German Patent Act will enter into force on April 1, 2014. This has been announced by the German Patent and Trademark Office (GPTO) in a press release on October 24, 2013.

With the revised German Patent Act important features will be introduced which will have a significant impact on both, the prosecution of German patent applications as well as litigation proceedings in patent matters before the GPTO.

Key features of the revised German Patent Act

  • The time limit for filing German translations of the application documents for applications filed in English or French language will be extended from three months to twelve months starting from the priority date. A patent applications for which a German translation is not filed in time, will no longer be deemed to be not filed but rather deemed to be withdrawn. This has the legal consequence that the priority date of these applications may still be validly claimed in later applications.
  • The search report will be extended by a written opinion of the examiner on the patentability of the subject matter claimed.
  • The request for search may only be filed by the applicant. However, the filing of third party observations will still be possible in future.
  • Oral proceedings in the granting procedure will become mandatory, if a request for oral proceedings is filed by the applicant.
  • The opposition period for filing opposition against granted German patents will be extended to nine months starting from the decision to grant.
  • The opposition proceedings will be held in public.
  • The “extension patent” (Zusatzpatent) will be abolished in Germany.
  • Before a German patent can be granted, the designation of inventors must be filed by the applicant.
  • The search fee will increase by 50 EUR.

Most applicants will welcome the amendments introduced by the revised German Patent Act. In particular, the rules for filing the German translations for applications filed in either English or French language will provide more flexibility for the applicants. With the extension of the opposition period the patent practice in Germany will be brought into line with the practice before the European Patent Office. The “extension patent” was hardly ever used by any applicants and will not be missed in future.

The amendments in the revised German Patent Act have been suggested by the GTPO. After approval in the Bundestag (lower house of the German parliament) on June 27, 2013, the Act had passed the Bundesrat (upper house of the German parliament) at second reading on July 5, 2013.

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