返回概览 German Patent Law Modernisation Act

The German Patent Law Modernisation Act (Patentrechtsmodernisierungsgesetz, PatRModG) has been enacted by the legislature and will enter into force on October 1, 2009. The Act aims to maintain and strengthen the competitiveness of the German patent system in Europe and on an international level, particularly through a reform of the German nullity proceedings. It is intended to streamline the nullity appeal procedure before the Federal Court of Justice (Bundesgerichtshof, BGH) in general by limiting the nullity appeal proceedings to the revision of the judicial decision taken in the first instance nullity proceedings before the Federal Patent Court (Bundes­patent­gericht, BPatG). Accordingly, the BGH will focus on the correct application of the law by the BPatG, and will not investigate the facts relating to the case. Particularly, the BGH will no longer appoint court experts as a rule, thus leading to a significant reduction in the duration of the nullity appeal proceedings (currently more than 4 years). As a consequence, the first instance nullity proceedings before the BPatG will gain significant importance and weight because the BPatG will have the role of exhaustively investigating all the facts pertaining to a nullity case. In view of making the first instance proceedings more predictable, the PatRModG provides a statutory regulation forcing the BPatG to indicate the facts considered to be relevant and to provide a provisional opinion at an early stage of the proceedings, well ahead of an oral hearing. In view of streamlining the first instance proceedings, the BPatG will also set a deadline for the filing of new requests, facts, and arguments before the oral hearing takes place. As a rule, the parties will be precluded from filing new requests, facts, and evidence after expiry of the deadline.

In addition, the Patent Law Modernisation Act (PatRModG) introduces also some important changes to the German Act on Employees' Inventions (Arbeit­nehmer­erfindungs­gesetz, ArbEG). In the past there have been significant problems arising due to the allocation of an invention to the inventor, in case the employer did not properly claim the invention within the statutory, non-extendable deadline of 4 months from the report of the invention. According to the PatRModG, for inventions reported on or after October 1, 2009, a new legal regime will apply to the extent that the invention will be regarded as claimed (i.e. the rights to the invention will belong to the employer) if the employer does not declare the invention to be free within the statutory deadline of 4 months from the report of the invention. While this amendment will improve the legal situation of employer, particularly for companies that are not acquainted with the provisions of the ArbEG, no changes will be introduced with respect to the remuneration of the employee inventor, particularly regarding the computation of the remuneration.

Moreover, the German Patent Law Modernisation Act introduces amendments to the German Trademark Law in that as of October 1, 2009 applicants have an opportunity to request a reconsideration by the GPTO, or proceed directly to appeal proceeding before the Federal Patent Court (BPatG). Furthermore, the grounds for opposition have been expanded to allow an opposition based on prior rights to trade designations, similar to the opposition against community trademarks.

Finally, the German Patent Law Modernisation Act also addresses some procedural issues. Particularly, claims' fees have been introduced at the GPTO, so that upon filing, fees must be paid for the 11^th claim and each subsequent claim. Moreover, if the total number of claims is increased during the examination procedure, the fee difference must be paid within three months from the date of the corresponding request (e.g. from the date of filing the response amending the claims). In case main and auxiliary requests are filed, the number of claims must be added up, unless the main and auxiliary request(s) relate to the same subject matter, in which case the claims' fees are computed on the basis of the request having the highest number of claims. The new fee regime will apply only to applications filed on or after October 1, 2009.

 

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