Pages 614-616

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

DE Germany

Amendment of the Patent Law and other laws

On 1 November 1998 the main provisions of the Second Law amending the Patent Law and other laws of 16 July 19981 entered into force.

The growing importance of trade marks in the German Patent Office's work has been drawn to the public's attention by renaming it the "German Patent and Trade Mark Office". The main aim of the changes to the law, however, is to simplify the formalities involved in filing patent and utility model applications and bring German law into line with developments in European and international law.

The changes to the Patent Law likely to have the biggest impact in practice are summarised below. Further details have been published in the Blatt für Patent-, Muster- und Zeichenwesen which has also printed the grounds for changing the law (Bl.f. PMZ 1998, 382, 393).

Patentability criteria

One of the few substantive changes to the Patent Law is the rewording of Section 3(2), first sentence, No. 2. This takes account of the extended period for paying the designation fees for European patent applications (Art. 79(2) EPC) which has been applicable since 1 July 19972. The provision mirrors Rule 23a EPC by stipulating that when national applications are examined European patent applications must only be considered as prior applications (Art. 139(1) EPC) if the designation fee for Germany has been validly paid.

Filing of patent applications

Under the new law (Section 34 (1), (2)) patent applications in Germany may be filed in future not only with the German Patent and Trade Mark Office (DPMA) in Munich, its branch in Jena3 and the DPMA's new technical information centre in Berlin45, but also via patent information centres to be specified by the Federal Ministry of Justice. The new provisions also apply to the filing of European and international patent applications (Art. II, Section 4(1); Art. III, Section 1(2), Law on International Patent Treaties).

The new wording of Section 35(1) permits the filing of patent applications not drafted in German as the basis for according a date of filing. In such cases the applicant has to file, within three months, a German translation of the application authenticated by a lawyer or prepared by a court-appointed translator (Section 10(1) Patent Filing Regulation).

The minimum requirements for according a date of filing have now been expressly stipulated in Section 35(2). This states that the applicant's name must be given, together with a request for the grant of a patent and a text capable of being regarded as a description.

Right of priority

The new wording of Section 41(1) makes it much simpler to claim priorities under the Paris Convention. The procedural steps required (declaration of priority, submission of priority document) can now be taken up to the expiry of 16 months from the date of priority. In future, translations of the priority document only have to be filed at the request of the Patent Office (Section 10(4) Patent Filing Regulation).

A new provision which will be particularly important in practice is the reintroduction of the possibility of re-establishment of rights in the case of failure to observe the period of priority. Under the new law (Section 123(1)), however, re-establishment of rights in respect of the 12-month time limit for filing the follow-up application is only possible if a Paris Convention priority has been claimed; the so-called "inner priority" (Section 40) remains excluded from re-establishment of rights.

As with the other time limits, re-establishment of rights in respect of the priority period must be requested in accordance with Section 123(2). This means in particular that re-establishment is ruled out if the priority period has expired more than one year ago.

The new Section 123(7) is intended to protect the legitimate interests of third parties. The provision accords a right of further use to someone who starts, or prepares to start, using the invention in question after expiry of the missed priority period and before re-establishment of rights.

Time limits

The new wording of Section 17(3), second sentence, simplifies the calculation of the two-month period for paying renewal fees without a surcharge. The time limit now expires on the last day of the second month after the renewal fee falls due.