Selective Amendments to the German Patent Act Adopted by Federal Cabinet

The painting "Sonntag der Bergbauern" of Ernst Ludwig Kircher (1880-1938) is hanging above the cabinet table in the Berlin Office of the Federal Chancellor.

Recently, the Federal Ministry of Justice under Sabine Leutheuser-Schnarrenberger (Liberal Democrats/FDP, @sls_bmj) submitted a proposal for amendments to patent law and other laws of intellectual property (cf Draft Amendment, in German) that were approved this week by the Federal Cabinet. To enter into force, the Amendment still needs to be approved by the Federal Parliament (“Bundestag”) which, however, is only a formality given the present clear parliamentary majority.

The amendments to the Patent Act (Patentgesetz, PatG) aim at reducing bureaucracy and providing for more flexible and cost-efficient proceedings before the German Patent and Trademark Office (DPMA/GPTO), cf. press release (machine translation).

One important measure to improve cost- and procedural efficiency at least for the Office was the introduction of the electronic case file system ElSA which enables the GPTO to process patent and utility model files fully electronically. The present Amendment regulates inter alia the – long overdue – public access to the electronic ElSA files in order to provide for some cost- and procedural benefits to applicants and attorneys as well.

The most significant amendments are the following:

• The ‘patent of addition’ is abolished since it was hardly used by applicants but caused a high administrative overhead to the GPTO. Its purpose was to provide supplementary protection for a further development of a filed invention.
• The conditions which must be fulfilled to concede a filing date are combined in one separate article (amended § 35 PatG).
• The grant of a patent without the inventor’s name is no longer possible. By this, the personal rights of inventors are strengthened.
• The German translation of an English or French language application will have to be submitted with the GPTO only by the end of the twelfth months from filing, so that the applicant will have more time to decide whether or not he really wants to bear the high costs of a translation for the national proceedings up to grant.
• The legal regulations defining the prior art search are amended as well. The content of the search report will be expanded to in future also include an opinion on patentability of the invention. In order to protect itself from extensive work, the search report may also raise the lack of unity objection and the application can be limited on a single invention.
• In the examination procedure, conduction oral hearings will be compulsory upon request by the applicant. This will render the granting procedure even more transparent for the parties involved.
• The opposition term will be extended from three months to nine months. By that the German opposition term is adapted to that of the European Patent Convention (cf. Art. 99 (1) EPC).
• At the same time the opposition proceedings will become more transparent in that the public is generally allowed to observe the proceedings.
• The right to inspect the files is supplemented by a regulation that clarifies the restrictions on electronic access to documents via the Internet for data protection purposes. This legislative clarification is related to the introduction of the electronic case file (ElSA) at the GPTO. In the future it will be possible for parties and the public to inspect the records of published patent applications and granted patents via the Internet. Further, it is now expressly clarified by law, that usage and forwarding of such data for purposes of patent information services is allowed.
• With regard to European patent law, an explicit legal basis for data transfer between the GPTO and the EPO is created.
• Another new regulation affects the subsequent payment of annuities in the event that the Enlarged Board of Appeal cancels under Art. 112a EPC a decision of an EPO Board of Appeal.
• Filing an international application under the provisions of the Patent Cooperation Treaty (PCT) is in practice attractive for applicants. Up to now, the fees incurred upon national phase entry before the GPTO occasionally lead to confusion. For the sake of legal clarity, the current way of handling this issue by the GPTO will now be implemented by law. This also involves a change in the International Patent Treaties Act (IntPatÜG). The expanded scope of the search report results in a slight increase in fees.

As some of those amendments are of minor importance for applicants, the expanded scope of the search report of the GPTO providing a opinion on patentability (in fact, up to now the GPTO has not issued a distinct ‘seach report’ but the first substantive Office Action cited the relevant prior art) and the possibility of filing a German translation of English/French application documents until 12 months after the filing date may turn out to be helpful for those applicants who are not entirely sure as to whether or not a German examination makes sense – for legal, procedural, or cost reasons.

It is interesting to know that the GPTO will nevertheless draw up a seach report even if the translation of an English or French application has not yet been submitted. That opens up an interesting strategy for English and French filers, since they can obtain a comparably cheap (300 EUR) opinion on patentability from the GPTO without translating the application if the search request is submitted early enough, e.g. upon filing.

Notabene: The above-depicted expressionist painting “Sonntag der Bergbauern”, made 1923/26 by famous expressionist Ernst Ludwig Kircher (1880-1938), was classified by the Nazis as “degenerated art” and shown at the exhibition ‘Entartete Kunst’ in the Munich Hofgarten Arcades in 1937. The exhibition showed modernist artworks chaotically hung and accompanied by deriding text labels in order to defame modern art and artists. Federal Chancellor Helmut Schmidt selected this and further expressionist paintings in 1975 to decorate the newly built Office of the Federal Chancellor in Bonn as a counterweight for the “savings bank architecture of this functional building”. Upon moving the Chancellor’s office from Bonn to Berlin in 2001, Chancellor Gerhard Schröder transferred Schmidt’s colorful collection of expressionists to the new Office of the Federal Chancellor in Berlin.