Germany: patent prosecution
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How do you get a patent in your jurisdiction?
Q: What types of patent are granted in your jurisdiction, and what rights do they confer on owners?
Patents are granted for technical inventions. Technically, inventions are usually in the field of engineering, chemistry, pharmaceuticals and physics. In contrast to other jurisdictions (eg, the United States), non-technical inventions (eg, business methods) cannot be patented in Germany. Besides patents, protection for a technical invention can be obtained through a utility model. However, methods are excluded from protection by utility models. The main rights conferred by patents (and utility models) include claims to request an infringing party cease and desist infringing activity and claims for damages. However, products and processes protected by a patent may be used for private use or research.
Q: What inventions are eligible for patent protection in your jurisdiction?
All technical inventions are eligible for patent protection. Non-technical subject matter is excluded. Besides technicity, inventions must fulfil the requirements of being novel, inventive and industrially applicable.
Q: Are there any specific exemptions to patent eligibility?
Discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, computer programs and presentations of information are excluded from patentability. This exclusion is relevant only if the subject matter or activity relates to such subject matter or activity as such. If the subject matter or activity comprises a solution to a technical problem, then it is not considered subject matter or activity as such. Therefore, for example, computer software can be protected by means of a patent if the software solves a technical problem.
Further, the human body at the various stages of its formation and development (including germ cells) and the mere discovery of one of its components (including the sequence or partial sequence of a gene) are not patentable inventions. However, an isolated component of the human body or a component otherwise obtained by a technical process (including the sequence or partial sequence of a gene) may be patentable, even if the structure of such component is identical to the structure of a natural component.
The following are not patentable:
- mere discoveries;
- scientific theories and mathematical methods;
- aesthetic creations of form;
- plans, rules and procedures for mental activities, games or business activities;
- computer programs as such;
- the reproduction of information as such;
- inventions, the commercial exploitation of which is contrary to public order or morality (eg, torture devices, letter bombs, apparatus for prohibited games of chance or for the production of clearly unhealthy or dangerous food or drink);
- plant varieties and animal breeds;
- the human body in the individual phases of its formation and development, as well as the mere discovery of one of its components, including the sequence or partial sequence of a gene;
- methods for cloning human beings;
- procedures for modifying the genetic identity of the germ line of human beings;
- the use of human embryos for industrial or commercial purposes;
- processes for modifying the genetic identity of animals, that involve suffering of these animals without these procedures being of significant medical benefit; and
- procedures for the surgical or therapeutic treatment of the human or animal body and diagnostic procedures.
Q: Are there technology-specific eligibility issues that applicants must navigate (eg, in software, business methods, AI, medical diagnostics, pharmaceuticals, medical procedures, etc)?
Software, business methods and AI can be patented only if they contribute to a technical solution. Methods for medical treatments and diagnostics are excluded from patentability. However, pharmaceuticals can be protected. There is even patent protection for a second indication of pharmaceuticals (second medical use claims).
If the subject matter of the invention is a sequence or partial sequence of a gene whose structure is identical to the structure of a natural sequence or partial sequence of a human gene, its use, for which the industrial applicability is specifically described, will be included in the patent claim.
Q: What are the time and costs involved in securing a granted patent? Is expedited examination available? Are reduced fees available for certain applicants?
Examination of the patent application can be started by the applicant at any time in the first seven years of the patent application by filing a request for substantive examination. Therefore, the applicant can control whether the application will be granted soon after filing or whether the examination will be deferred. Late examination will result in the late grant of the patent. When deferring examination, the costs can be postponed correspondingly. Costs until grant are, on average, between €5,000 and €12,000. An expedited examination is available without an official fee. There is no fee reduction for certain applicants.
Q: What are any specific requirements that a patent specification must meet in your jurisdiction?
The patent application can be filed in any language, but a German translation must be filed afterwards. Depending on the filing language and priority claims, the deadline for filing the translation can vary. There is no fee for the late filing of a translation.
There are no further specific requirements.
Q: What rules govern the filing of provisional applications, continuations or continuations-in-part, divisionals or any other special type of application?
Divisional applications can be filed as long as the patent application is pending. There is no provisional application, continuation or continuation in part. However, it is possible to file a patent application without paying a filing fee to receive a filing date that can be used as a priority date for further patent applications. This is a cheap and efficient way for securing an early priority date.
Q: What do applicants need to know about office actions and patent examiner interviews?
For each patent application there is the possibility to request an examiner interview. If the applicant does not agree with the examiner during the written procedure on the grant of the patent application, the examiner will schedule the interview. The interview usually takes part in a personal meeting with the examiner at the German Patent and Trademark Office (GPTO). Applicants can join the interview.
Q: Are there any recent examination trends that patent applicants need to be aware of?
Q: Is there anything else about the patent filing process that applicants should know?
For entering the German phase based on an international (Patent Cooperation Treaty) application, a deadline of 30 months applies, within which a German translation of the international application must be filed.
In Germany a law protecting employees’ inventions exists. Inventions made by employees in Germany may oblige the employer to pay the employee inventor compensation when IP rights resulting from a notice of an invention by that employee are used by the employer or even when they are kept confidential. The amount of the compensation is calculated according to official regulations based on the principle of royalties.
Q: Is utility model or petty patent protection or an equivalent available in your jurisdiction? If so, how does the system work and under what circumstances would you advise using it?
A utility model can be filed with the GPTO. Only device claims are permitted in utility models. Utility models are not examined with regard to the requirements for protectability (eg, novelty and inventiveness) but only for formal requirements. However, a search for prior art can be requested. The maximum duration of a utility model is 10 years, compared to 20 years for patents. There is a six-month grace period before the priority date or the filing date of the utility model in which the inventor or their legal successor can disclose the invention without harming the utility model. Therefore, it is advisable to file a utility model if there is a prior publication. A utility model application can be branched off from a pending German patent application, European patent application or Patent Cooperation Treaty application. The branched-off utility model application receives the same filing date as the corresponding patent application. When branching off, the utility model usually gets registered and becomes valid within a few weeks. Therefore, by branching off a utility model a valid right can be easily and quickly obtained and used against potential competitors. Since the utility model does not get examined, there is a certain risk about its value. However, when branching off from a pending patent application, search results for the patent application may be received and can be used to tailor the claims of the utility model so that it is novel and inventive and still encompasses the competitor’s embodiment, as long as the claims are within the scope of disclosure of the patent application.
Q: Under what circumstances would you advise a national prosecution to secure protection in your jurisdiction rather than going down the EPO route?
National German prosecution is advisable if the product’s key market is in Germany or the majority of competitors are located in Germany. A German patent application is significantly cheaper than taking the EPO route.
What are the major administrative procedures in your jurisdiction?
Q: How can applicants appeal patent office decision?
Patent office decisions can be appealed by filing an appeal within one month of receipt of the appealable decision. The appeal must be filed at the GPTO. Although there is no official deadline for filing the grounds of appeal, it is recommended they be filed shortly after or ideally when filing the appeal itself. Depending on the nature of the proceedings, the fees for filing an appeal are between €200 and €500.
Q: Are oppositions available pre-grant or post-grant? What rules govern standing to oppose a patent and the opposition process?
Oppositions are available post-grant. The deadline for filing an opposition is nine months after the publication of the grant together with an opposition fee of €200. A patent can be opposed based on a lack of the requirements that are needed for patentability (eg, technicity, novelty, inventiveness and sufficient disclosure).
Q: What are the processes for re-examination of a patent?
There is no re-examination process, but a nullity suit against granted patents is available. This procedure is usually used in parallel with patent litigation procedures before the civil courts. A nullity action should be filed at the Federal Court of Patents. Appeal to the Federal High Court of Justice is possible. A nullity action is even available after the patent has ended if there is a legal interest.
Q: What is the process for invalidation or revocation of a patent? Who has standing to request invalidation? How long do inter partes invalidation cases take?
To invalidate or revocate a patent, an opposition or a nullity suit can be filed. While the opposition must be filed within nine months of the publication of the grant of the patent at the GPTO, the nullity suit must be filed with the Federal Patent Court. Both can be filed by any party. The duration of an opposition proceeding is usually between three and five years, while a nullity suit usually takes about four to six years. Even after a patent has ended due to its 20-year time limit, a nullity suit can still be filed if a party is accused of patent infringement in the past.
Q: How can opposition, re-examination or invalidation decisions be appealed?
Decisions by the opposition department can be appealed by filing an appeal to be processed before the Federal Patent Court. Under certain circumstances appeal against Federal Patent Court decisions can be taken to the Federal High Court of Justice.
Q: Is administrative enforcement of patents possible?
No, this is not applicable to Germany.
Q: Does your jurisdiction grant patent-term extensions?
Yes, if the patent was granted for an active ingredient, substance or a combination of active ingredients or substances, or a medical or plant protection product, then a patent-term extension can be granted. Under certain circumstances, it is possible to have the term of protection extended by a supplementary protection certificate by up to five years and for a further period of up to six months if studies recognise medical products for paediatric use.
Q: Is there anything else about patent administrative procedures that patent owners and challengers should know?
Unlike other jurisdictions, Germany generally permits the late filing of new requests or new material that will be considered by the decisive body. It is possible in such complex procedures as patent prosecution or opposition procedures to enter with new arguments at a late stage.