I. German Patent
A technical invention can be protected in Germany by a German patent. A patentable invention must be new, inventive and industrially applicable.
The maximum protection term of a German patent is 20 years.
A German patent application is filed with the German Patent and Trademark Office (DPMA).
The application can be directly filed with DPMA with or without claiming priority. The application can be filed in any language. When the application is filed with a language other than German, a German translation must be filed within three months of the filing date of the application, otherwise the application will be deemed withdrawn.
Alternatively, a PCT application can be nationalized in Germany as a German patent application within 30 months of the priority date of the PCT application.
The examination request must be filed within 7 years of the filing date of the German application. An examination request (which includes a search request) can also be filed when filing the application.
During examination, novelty, inventive stepunity, unity, and clarity of the invention is examined. Before the decision regarding the grant of a patent, the applicant can amend the application document provided that the amendment does not exceed the original scope of the application.
When filing a response to the Examination report of the application, the applicant can request an oral hearing before the DPMA rejects the patent application.
When the applicant missed the deadline for filing a response to the Examination report, the application will be rejected. DPMA issues a rejection decision. The application can apply for further processing, which incurs additional costs within one month of receiving the decision.
3. Branching off
A German patent application can be branched off into a German utility model. The utility model, which is branched off from the German patent application, has the same filing date and priority date as that of the German patent application. The branching off must take place within two months of the end of the month of the ending the application proceedings of the German patent application at the latest (for example, the application is deemed withdrawn, is withdrawn or is rejected) or the ending of the opposition proceeding, but must be within 10 years of the application date of the application. The German patent application proceeding is not affected by the branching off. This is useful when the applicant needs an immediately enforceable right against a product of a competitor.
The decision to grant issued by DPMA contains the application documents including specification, claims and figures intended for grant. If the applicant is not in agreement with the version intended for grant, he can file an appeal within one month of receiving the decision to grant. If the applicant indicates immediately after receiving the decision to grant that he waives the right to appeal, the publication of the grant will be accelerated. If he does not make any comment on the decision, the DPMA will wait until the time period of appeal expires and then proceed with the publication of the grant as well as the issuance of the certificate.
5. Annuity fees
Annuity fees need to be paid starting from the third year after the filing date of the application with the DPMA.
6. Opposition, limitation and nullity proceedings
If a granted German patent is affecting your business activity or you are faced with a possible patent infringement proceedings or a warning, you have the option of opposing the patent or the option of filing a nullity complaint when the nine-month opposition period has expired.
Within 9 months of the publication of the grant of the patent, an opposition can be filed with DPMA. The notice of opposition must be filed in writing and the opposition must be substantiated within the 9 months.
It will be decided at the end of the opposition proceeding whether or to which extent the patent will be upheld or whether the patent is completely revoked. If the patent is completely or party revoked, the effect of revoked part is deemed as non-existent from the outset. If the opposition is rejected, the patent is upheld without any amendment.
Patent nullity complaints are filed against German patents or European patents with effect for Germany before the German Federal Patent Court. A nullity senate containing technical judges is formed to examine the legal validity of the granted patent.
In both the opposition and nullity proceedings, a number of comprehensive written briefs are submitted in the beginning followed by oral proceedings. At the end of oral proceedings, a decision is usually delivered. With regard to opposition proceedings before DPMA, decisions at first instance may be appealed. In the case of patent nullity proceedings, an appeal may be lodged against the German Federal Patent Court’s decision before the German Federal Court of Justice in Karlsruhe.
The patent proprietor can file a request of revocation or limitation of the patent through amending the patent claims.
II. European Patent
A European patent is examined and granted by the European Patent Office according to the European Patent Convention (EPC) and can be validated in the European Patent Organization. Currently, there are 38 member states as well as 2 extension states (Bosnia and Herzegovina and Montenegro) and 4 validation states (Morocco, Republic of Moldova, Tunisia, Cambodia) of the European Patent Organization.
The European patent application realizes not only a unified filing of the application, but also a unified examination and grant proceeding of the application. The applicant obtains great convenience due to the unified examination proceeding. The official fees for applying a European patent are higher than the official fees for applying a national patent in the contracting states. Furthermore, after a patent is granted, the patent needs to be validated in the desired contracting states, with translation of the claims or the entire application documents being necessary to be filed with some of the national patent offices, if necessary. Therefore, a European patent is usually most economical when a patent protection is desired in more than three contracting states.
The maximum protection term of a European patent is 20 years.
A European patent application can be directly filed with the EPO, including filing application according to Paris Convention, e.g. filing the European patent application within 12 months after the filing date of a national patent application and claiming priority of the previous national patent application.
Alternatively, a PCT application can enter the European phase within 31 months after the priority date of the (national) patent application forming the priority application.
2. Substantive Examination
During the substantive examination, novelty, inventive step, unity, and clarity of the invention disclosed in the application are examined. Oral proceedings may be scheduled during the process of substantive examination.
The EPO issues an intention to grant after a positive examination procedure, with a copy of the application document including specification, claims and figures which is allowed. The applicant is given four month time to pay for the grant fee and file the translation of the claims into the other two official languages if he is in agreement with the allowed text. The EPO will issue a decision to grant a European patent and a certificate.
If the applicant is not in agreement with the allowed text, he can choose to file an amended text as well as the reason of the amendment within the four months. If the EPO allows the amended text, the European patent will be granted. If not, the substantive examination will be restarted.
4. Validation proceeding
The European patent needs to be validated in the contracting states of interest within three months of the mention of the grant is published. Different contracting states have different validation requirements regarding translation and official fees.
5. Patent Prosecution Highway (PPH)
For our Chinese clients, it is very interesting that the PPH can be used between the Chinese patent office (CNIPA) and the EPO.
With effect from 6 January 2020 the IP5 PPH programme is extended for a period of three years ending on 5 January 2023. The requirements laid forth below will apply to PPH requests filed with the EPO on or after 6 January 2020.
A PPH request must fulfill the following requirements:
- The EP application for which participation in the PPH programme is requested must have the same earliest date with the corresponding application, whether this be the priority or filing date of a corresponding national application filed with CNIPA or a corresponding PCT application for which CNIPA has been ISA and/or IPE.
- The corresponding application(s) has/have at least one claim indicated by CNIPA to be patentable/allowable.
- All claims in the EP application for which a request for participation in the PPH programme is made must sufficiently correspond to the patentable/allowable claims in the previous corresponding application(s).
- Substantive examination of the EP application for which participation in the PPH programme is requested has not begun.
6. Annuity fees
Annuity fees need to be paid starting from the third year after the filing date of the application with the EPO until the patent is granted. After the grant of the patent, the annuity fees shall be paid with the national patent offices of the validated contracting states.
7. Opposition, limitation and nullity proceeding
After a European patent is granted, it can be limited or nullified through:
1) opposition proceeding with the EPO. The opposition must be filed within 9 months of the publication of the mention of the grant. The result of the opposition is valid in all contracting states.
2) request of limitation or revocation of the patent by the patent proprietor with the EPO at any time.
3) national nullity proceeding in any of the validated contracting states. The effect is valid only in the contracting state where the nullity request is filed.
III. International Patent Application (PCT-Application)
It is further possible to file an internation patent application covering a large number of contracting states (more than 150).
The PCT procedure includes
- filing the international application,
- International Search by an International Searching Authority for prior art and establishing a Written Opinion based on this search and
- international publication of the application.
Optionally, it is possible to request a Supplementary International Search by a second International Searching Authority or an International Preliminary Examination based, for example, on a version of the application which was amended in the light of the Written Opinion.
For grant of the international patent application, the international application has to enter the national or regional phase before the national or regional patent office of the desired country/countries.
For more information regarding the international patent application please refer to the information of the World Intellectual Property Organization (WIPO).