German Patent Law – Part 1 The Patent

1.

(1) Patents shall be granted for inventions that are new, involve an inventive step and are susceptible of industrial patent application.

(2) The following in particular shall not be regarded as inventions within the meaning of subsection (1):

1. discoveries, scientific theories and mathematical methods;
2. aesthetic creations;
3. schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers;
4. presentations of information.

(3) The provisions of subsection (2) shall exclude patentability only to the extent to which protection is sought for the above-mentioned subject matter or activities as such.

2.

Patents shall not be granted in respect of:

1. inventions the publication or exploitation of which would be contrary to public policy or morality, provided that the exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation. The first sentence above shall not exclude the granting of a patent for an invention falling under Section 50(1);
2. plant or animal varieties or essentially biological processes for the production of plants or animals. This provision shall not apply to microbiological processes or the products thereof.

3.

(1) An invention shall be considered to be new if it does not form part of the state of the art. The state of the art comprises all knowledge made available to the public by means of a written or oral description, by use or in any other way, before the date relevant for the priority of the patent application.

(2) Additionally, the content of the following patent applications, which have an earlier priority and which were published only on or after the date relevant for the priority of the later patent application, shall be considered to be comprised in the state of the art:

l. national patent applications, as originally filed with the German Patent Office;
2. European patent applications, as originally filed with the competent authority, in which protection is sought in the Federal Republic of Germany and for which the designation fee for the Federal Republic of Germany has been paid in accordance with Article 79(2) of the European Patent Convention, unless the patent application for a European patent is based on an international patent application and does not fulfill the conditions set out in Article 158(2) of the European Patent Convention;
3. international patent applications under the Patent Cooperation Treaty, as originally filed with the receiving Office, where the German Patent Office is the designated Office with respect to the patent application.

If the earlier priority of an patent application is based on a claim to the priority of an earlier patent application, the first sentence of the present subsection shall be applicable only to the extent that the contents of the patent application in question do not go beyond the contents of the earlier patent application. Patent applications under item 1 of the first sentence of the present subsection which have been subject to a decision under Section 50(1) or (4) of the Patent Law shall be considered to have been made available to the public on expiry of the 18th month following their filing.

(3) The provisions of subsections (1) and (2) shall not exclude from patentability any substance or composition comprised in the state of the art where it is intended for use in a method referred to in Section 5(2) and its use for such method is not comprised in the state of the art.

(4) For the patent application of subsections (1) and (2), disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the patent application and if it was due to or in consequence of

l. an evident abuse in relation to the applicant or his legal predecessor or
2. the fact that the applicant or his legal predecessor has displayed the invention at an official or officially recognized international exhibition falling within the terms of the Convention on International Exhibitions signed at Paris on November 22, 1928.

Item 2 of the first sentence of the present subsection shall apply only if the applicant states, when filing the patent application, that the invention has been so displayed and files a supporting certificate within four months following the filing. The exhibitions referred to in item 2 of the first sentence of the present subsection shall be notified by the Federal Minister for Justice in the Federal Law Gazette [Bundesgesetzblatt].

4.

An invention shall be considered to involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Section 3(2), these documents shall not be considered in deciding whether there has been an inventive step.

5.

(1) An invention shall be considered susceptible of industrial patent application if it can be made or used in any kind of industry, including agriculture.

(2) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body shall not be regarded as inventions which are susceptible of industrial patent application within the meaning of subsection (1). This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

6.

The right to a patent shall belong to the inventor or his successor in title. If two or more persons have jointly made an invention, the right to a patent shall belong to them jointly. If two or more persons have made an invention independently of each other, the right shall belong to the person who is the first to file an patent application with the Patent Office.

7.

(1) To avoid the substantive examination of the patent application being delayed due to the need to determine the identity of the inventor, the applicant shall be deemed in the proceedings before the Patent Office to be entitled to request grant of a patent.

(2) If a patent is revoked by reason of opposition based on usurpation (Section 21(1)3) or if opposition results in the withdrawal of the patent, the opponent may himself file an patent application in respect of the invention, within one month after the official notification thereof, and claim the priority of the earlier patent.

8.

An entitled person whose invention has been applied for by a person not so entitled may require the patent applicant to surrender to him the right to the grant of a patent. If the patent application has already resulted in a patent, he may require the patentee to assign the patent to him. Such right may only be asserted by an action at law within two years after publication of the grant of the patent (Section 58(1)), subject to the fourth and fifth sentences. If the injured person has filed opposition on the grounds of usurpation (Section 21(1)3), he may bring an action within one year of the final conclusion of the opposition proceedings. The third and fourth sentences shall not apply if the patentee had not acted in good faith in obtaining the patent.

9.

A patent shall have the effect that the patentee alone shall be authorized to use the patented invention. A person not having the consent of the patentee shall be prohibited

1. from making, offering, putting on the market or using a product which is the subject matter of the patent or importing or stocking the product for such purposes;
2. from using a process which is the subject matter of the patent or, when he knows or it is obvious from the circumstances that the use of the process is prohibited without the consent of the patentee, from offering the process for use within the territory to which this Law applies;
3. from offering, putting on the market, using or importing or stocking for such purposes the product obtained directly by a process which is the subject matter of the patent.

10.

(1) A patent shall have the further effect that a person not having the consent of the patentee shall be prohibited from supplying or offering to supply within the territory to which this Law applies, other than a person entitled to exploit the patented invention, with means relating to an essential element of such invention for exploiting the invention, where such person knows or it is obvious from the circumstances that such means are suitable and intended for exploiting the invention.

(2) Subsection (1) shall not apply when the means are staple commercial products, except where such person induces the person supplied to commit acts prohibited by the second sentence of Section 9.

(3) Persons performing the acts referred to in Section 11.1 to 3 shall not be considered persons entitled to exploit the invention within the meaning of subsection (1).

11.

The effects of a patent shall not extend to:

1. acts done privately and for non-commercial purposes;
2. acts done for experimental purposes relating to the subject matter of the patented invention;
3. the extemporaneous preparation for individual cases in a pharmacy of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared;
4. the use on board vessels of another State party to the Paris Convention for the Protection of Industrial Property of the patented invention, in the body of the vessel, in the machinery, tackle, gear and other accessories, where such vessels temporarily or accidentally enter the waters to which the territory of this Law extends on condition that such use serves exclusively the needs of the vessel;
5. the use of the patented invention in the construction or operation of aircraft or land vehicles of another State party to the Paris Convention for the Protection of Industrial Property or of accessories for such aircraft or land vehicles, where these temporarily or accidentally enter the territory to which this Law applies;
6. the acts specified in Article 27 of the Convention on International Civil Aviation of December 7, 1944, where such acts concern the aircraft of another State to which the provisions of that Article are applicable.

12.

(1) A patent shall have no effect against a person who, at the time of the filing of the patent application, had already begun to use the invention in Germany, or had made the necessary arrangements for so doing. Such person shall be entitled to use the invention for the needs of his own business in his own plant or workshops or the plant or workshops of others. This right can only be inherited or transferred together with the business. If the applicant or his predecessor in title has, before applying for a patent, disclosed the invention to other persons and reserved his rights in the event of a patent being granted, a person learning of the invention as a result of such disclosure cannot, under the provisions under the first sentence, invoke measures which he has taken within six months after the disclosure.

(2) If the patentee is entitled to a right of priority, the date of the prior patent application shall be substituted for the date of the patent application referred to in subsection (1). However, this provision shall not apply to nationals of a foreign country which does not guarantee reciprocity in this respect, where they claim the priority of a foreign patent application.

13.

(1) A patent shall have no effect where the Federal Government orders that the invention be exploited in the interest of public welfare. Nor shall the effect of a patent extend to any exploitation of the invention which is ordered in the interests of the security of the Federal Republic by the appropriate supreme federal authority or, on the latter’s instructions, by a subordinate agency.

(2) Appeals from orders under subsection (1) shall be heard by the Federal Administrative Court where such orders have been made by the Federal Government or the appropriate supreme federal authority.

(3) In the cases mentioned in subsection (1), the patentee shall have a claim against the Federal Republic for reasonable compensation. In the event of dispute as to its amount, legal action may be brought before the ordinary civil courts. Any order by the Federal Government under the first sentence of subsection (1) shall be communicated to the person recorded as patentee in the Register (Section 30(1)) before the invention is exploited. If the supreme federal authority by which an order or an instruction under the second sentence of subsection (1) is issued learns that a claim for compensation has arisen under the first sentence, it shall give notice thereof to the person recorded in the Register as patentee.

14.

The extent of the protection conferred by a patent or a patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

15.

(1) The right to a patent, the right to the grant of a patent and the rights deriving from a patent shall pass to the heirs. They may be assigned to others with or without restrictions.

(2) The rights under subsection (1) may be licensed in whole or in part, exclusively or non-exclusively, for the whole or part of the territory to which this Law applies. Where a licensee contravenes a restriction of his license covered by the first sentence, the right conferred by the patent may be invoked against him.

(3) The assignment of rights or the granting of a license shall not affect licenses previously granted to other persons.

16.

(1) The duration of a patent shall be 20 years, beginning on the day following the filing of the patent application in respect of the invention. If the purpose of an invention is the improvement or further development of another invention for which the applicant has already secured patent protection, he may apply, within 18 months from the date of filing of the patent application or, insofar as an earlier date is claimed as relevant for the patent application, from that date, for a patent of addition, which shall expire at the same time as the patent for the earlier invention.

(2) If the main patent lapses due to revocation, declaration of nullity or abandonment, the patent of addition shall become an independent patent; its duration shall be determined by the date of commencement of the main patent. Where there are several patents of addition, only the first shall become independent; the others shall be deemed patents of addition to that patent.

16a.

(1) Pursuant to Regulations of the European Economic Community concerning the creation of supplementary certificates of protection, which shall be notified in the Federal Law Gazette, supplementary protection may be requested in respect of a patent, that shall follow on immediately from the expiry of the term of the patent under Section 16(1). Annual fees shall be paid for supplementary protection in accordance with the schedule of fees.

(2) Unless otherwise provided by the law of the European Communities, the provisions of the Patent Law concerning entitlement of the applicant (Sections 6 to 8), effects of the patent and exceptions thereto (Sections 9 to 12), order to exploit the patent, compulsory license and forfeiture (Sections 13, 24), extent of protection (Section 14), licenses and their registration (Sections 15, 30), fees (Sections 17(2) to (6), 18 and 19), lapse of the patent (Section 20), nullity (Section 22), preparedness to grant licenses (Section 23), domestic representative (Section 25), the Patent Court and proceedings before the Patent Court (Sections 65 to 99), proceedings before the Federal Court of Justice (Sections 100 to 122), reinstatement (Section 123), obligation of truth (Section 124), official language, service of documents and legal assistance (Sections 126 to 128), infringement (Sections 139 to 141 and 142a), joining of actions and advertising of patent (Sections 145 and 146) shall apply mutatis mutandis to supplementary protection.

(3) Licenses and declarations under Section 23 of the Patent Law which are effective for a patent shall also apply to supplementary protection.

17.

(1) There shall be paid in respect of every patent application and every patent an annual fee, as prescribed in the schedule of fees for the third year and each subsequent year following the date of filing.

(2) No annual fees shall be payable for a patent of addition (second sentence of Section 16(1)). If a patent of addition is converted to an independent patent, it shall become subject to the payment of fees; the due date and the annual amount shall be determined by the date of commencement of the preceding main patent. The first sentence and the first half of the second sentence shall apply mutatis mutandis to an patent application for a patent of addition with the proviso that, where an patent application for a patent of addition is regarded as an patent application for an independent patent, such annual fees shall be payable as are due for an patent application that is independent from the beginning.

(3) Annual fees in respect of the coming year shall be due on the last day of the month bearing the same name as the month containing the anniversary of the date of the patent application. If an annual fee has not been paid by the end of the last day of the second month after the due date, the surcharge prescribed in the schedule of fees shall become due. After the expiration of the time limit, the Patent Office shall notify the applicant or patentee that the patent application will be deemed to have been withdrawn (Section 58(3)) or that the patent will lapse (Section 20(1)) if the fee and the surcharge prescribed in the schedule of fees are not paid before the expiration of a period of four months from the end of the month in which the notification has been served.

(4) The Patent Office may postpone dispatch of the notification at the request of the applicant or patentee on proof being furnished by the latter that payment may not reasonably be expected of him at present due to his financial situation. Postponement may be made conditional upon payment of installments within specified periods. If an installment is not paid in due time, the Patent Office shall advise the applicant or patentee that the patent application will be deemed to have been withdrawn or that the patent will lapse if the balance is not paid within one month after service of the notification.

(5) Where no request has been made to postpone dispatch of the notification, the due date of the fee and the surcharge may be deferred on proof being furnished that payment may not reasonably be expected of the applicant or the patentee at present due to his financial situation, even after service of the notification, provided that a request is made within 14 days after service and the previous failure to comply is satisfactorily explained. Deferment may also be authorized subject to the payment of installments. If a deferred sum is not paid in due time, the Patent Office shall repeat the notification, whereby the whole of the balance outstanding shall be demanded. After service of the second notification, no further deferment shall be allowed.

(6) A notification which has been postponed on request (subsection (4)) or which, after deferment has been granted, must be repeated (subsection (5)) shall be dispatched not later than two years after the fee falls due. Installments paid shall not be refunded if, owing to nonpayment of the balance outstanding, the patent application is deemed to have been withdrawn (Section 58(3)) or the patent lapses (Section 20(1)).

18.

(1) If an applicant or patentee furnishes proof that the payment may not reasonably be expected of him at present due to his financial situation, payment of the fees for the grant and for the third to 12th years may be deferred, at his request, until the commencement of the 13th year and may be waived if the patent application is withdrawn or the patent lapses within the first 13 years. The patent applicant or patentee shall immediately inform the Patent Office of any alteration in his personal and economic circumstances relevant to the deferral.

(2) If a patent has been granted or maintained after opposition, an order may be made in favor of an applicant that the reasonable expenses for drawings, models and expert opinions, the production of which was necessary in the grant proceedings or opposition proceedings, be refunded to him as outlay if he furnishes proof that payment of such expenses may not reasonably be expected of him at present due to his financial situation. The request for refund must be submitted to the Patent Office within six months after the grant of the patent; if opposition is brought, it must be filed within six months after the maintenance of the patent. The refund shall be recorded in the Register (Section 30(1)). If later circumstances seem so to justify, the Patent Office shall order the sum refunded to be repaid in whole or in part. Repayments shall be added as a supplement to the annual fees and treated as part thereof.

19.

Annual fees may be paid before they fall due. Fees which have not become due shall be refunded if it is established that they will no longer become due.

20.

(1) A patent shall lapse if

l. the patentee abandons it by a written declaration to the Patent Office;
2. the declarations prescribed in Section 37(1) are not made in due time after service of the official notification (Section 37(2)); or
3. the annual fee and the surcharge are not paid in due time after service of the official notification (Section 17(3)).

(2) The Patent Office shall be the sole judge of whether the declarations prescribed under Section 37(1) and the payments have been made in due time; Sections 73 and 100 shall remain unaffected.

21.

(1) A patent shall be revoked (Section 61) if it transpires that

1. the subject matter of the patent is not patentable under Sections 1 to 5;
2. the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
3. the essential elements of the patent have been taken from the descriptions, drawings, models, appliances or equipment of another person, or from a process used by another person, without his consent (usurpation);
4. the subject matter of the patent extends beyond the content of the patent application as originally filed with the competent authorities; the same shall apply if the patent was granted on a divisional patent application or on a new patent application filed in accordance with Section 7(2) and the subject matter of the patent extends beyond the content of the earlier patent application as originally filed with the competent authorities.

(2) If the grounds for revocation affect the patent in part only, the patent shall be maintained in the form of a corresponding limitation. The limitation may be effected in the form of an amendment to the claims, the descriptions or the drawings.

(3) In the event of revocation, the effects of the patent and of the patent application shall be deemed not to have existed ab initio. This provision shall apply mutatis mutandis to limited maintenance; where in such case a patent is not maintained by reason only of a division (Section 60), the effect of the patent application shall remain unaffected.

22.

(1) Nullity of a patent shall be declared on request (Section 81) if it transpires that one of the grounds mentioned in Section 21(1) is present or the scope of the patent has been broadened.

(2) Section 21(2) and (3), first sentence and first half of second sentence, shall apply mutatis mutandis.

23.

(1) If the applicant for a patent or the person recorded as patentee in the Register (Section 30(1)) declares to the Patent Office in writing that he is prepared to allow anyone to use the invention in return for reasonable compensation, the annual fees falling due after receipt of the declaration shall be reduced to one half of the amount prescribed in the schedule of fees. The effect of a declaration made in respect of a main patent shall extend to all its patents of addition. The declaration shall be recorded in the Register of Patents and published in the Patent Gazette [Patentblatt].

(2) Such declaration shall not be accepted if a note concerning the grant of an exclusive license (Section 30(4)) is recorded in the Register of Patents or a request for the recording of such note is pending before the Patent Office.

(3) Any person who wishes to exploit the invention after the recording of the declaration shall notify the patentee of his intention. Notification shall be deemed to have been effected if it has been dispatched by registered mail to the person recorded in the Register as patentee or to his registered representative. A statement of how the invention is to be exploited shall be given in the notification. After such notification, the notifying party shall be entitled to exploit the invention in the manner stated by him. He shall be obliged, at the end of every calendar quarter, to give the patentee particulars of the use which has been made and to pay the compensation therefor. If he fails to meet this obligation in due time, the person recorded in the Register as patentee may grant him a reasonable extension of time and, if the extension of time expires without result, may prohibit further use of the invention.

(4) The compensation shall be assessed by the Patent Division at the written request of a party. Sections 46, 47 and 62 shall apply mutatis mutandis to the proceedings. A fee as prescribed in the schedule of fees shall be paid with the request, which may be directed against more than one party; if the fee is not paid, the request shall be deemed not to have been made. In assessing the compensation, the Patent Office may order that the fee be repaid in whole or in part by the opponents of the request. Payment of the fee may be deferred for up to six months after the termination of the proceedings if the patentee furnishes proof that payment may not reasonably be expected of him at present due to his financial situation. If the fee is not paid by that time, the opponents of the request may be ordered to pay compensation for the exploitation of the invention to the Patent Office for the account of the patentee until such time as the amount of the fees still owing has been paid.

(5) After the expiration of one year from the last assessment, any person affected thereby may apply for it to be altered if, in the meantime, circumstances have arisen or have become known which show that the amount of compensation assessed is obviously inappropriate. A fee as prescribed in the schedule of fees shall be paid with the request. In other respects, the provisions of the first to fourth sentences of subsection (4) shall apply mutatis mutandis.

(6) If the declaration is made in respect of an patent application, the provisions of subsections (1) to (5) shall apply mutatis mutandis.

(7) The declaration may be withdrawn at any time by a written communication to the Patent Office insofar as no intention of using the invention has been notified to the patentee. Withdrawal shall take effect on filing. The amount by which the annual fees have been reduced shall be paid within one month after withdrawal of the declaration. The second and third sentences of Section 17(3) shall apply mutatis mutandis with the proviso that the due date shall be replaced by the end of the one-month period in accordance with the third sentence.

24.

(1) A non-exclusive authorization to commercially exploit an invention shall be granted by the Patent Court in individual cases in accordance with the following provisions (compulsory license) if

1. the applicant for a license has unsuccessfully endeavored during a reasonable period of time to obtain from the patentee consent to exploit the invention under reasonable conditions usual in trade; and
2. public interest commands the grant of a compulsory license.

(2) If the applicant for a license is unable to exploit an invention for which he holds protection under a patent of later date without infringing a patent of earlier date, he shall be entitled within the framework of subsection (1) to request the grant of a compulsory license with respect to the owner of the patent of earlier date if his own invention comprises, in comparison with that under the patent of earlier date, an important technical advance of considerable commercial significance. The patentee may require the applicant for a license to grant him a counter license under reasonable conditions for the exploitation of the patented invention of later date.

(3) A compulsory license under subsection (1) may be granted for a patented invention in the field of semiconductor technology only if such grant is necessary to remove an anti-competitive practice on the part of the patentee that has been established in judicial or administrative proceedings.

(4) If the patentee does not use the patented invention or does not use it predominantly in Germany, compulsory licenses under subsection (1) may be granted to ensure an adequate supply of the patented product to the domestic market. Importing shall be deemed to constitute use of the patent in Germany in such case.

(5) The grant of a compulsory license in a patent shall be permissible only after the grant of the patent. It may be granted subject to restrictions and made dependent upon conditions. The scope and duration of use shall be restricted to the purpose for which they have been permitted. The patentee shall be entitled to remuneration from the holder of a compulsory license that shall be commensurate with the circumstances and shall take into consideration the commercial value of the compulsory license. In the event of a significant change, with respect to the repeated remuneration that will become due in future, in the circumstances on which the determination of the amount of the remuneration was based, each party shall be entitled to require a corresponding adjustment. If the circumstances on which the grant of a compulsory license was based no longer apply and if it is unlikely that they will reoccur, the patentee may require the withdrawal of the compulsory license.

(6) A compulsory license in a patent may only be transferred together with the enterprise concerned by the exploitation of the invention. A compulsory license in an invention that is the subject matter of a patent of earlier date may only be transferred together with the patent of later date.

25.

A person who has neither domicile nor establishment in Germany may take part in proceedings before the Patent Office or the Patent Court regulated by this Law and assert rights deriving from a patent only if he has appointed a patent attorney or an attorney-at-law in Germany as his representative. The latter shall be authorized to represent him in Patent Office and Patent Court proceedings and in civil litigation affecting the patent; he may also file requests for the institution of criminal proceedings. The place where the representative has his business premises shall be deemed, within the meaning of Section 23 of the Code of Civil Procedure [Zivilprozessordnung], to be the place where the assets are located; if there are no business premises, then the place where the representative has his domicile shall be relevant and, in the absence thereof, the place where the Patent Office has its seat.