Changes in German IP Law (15.01.2010)
Effective from October 1, 2009: Simplification and Improvements relating to the German Patent Act, Trademark Act and Employees’ Inventions Act
I. PATENT ACT
1) Faster and Straighter Nullity Proceedings
When being accused of patent infringement, the defendant usually files a nullity action against the allegedly infringed patent before the Federal Patent Court (Bundespatentgericht). Up to now, the court did not utter its opinion before the hearing. Often, surprising facts were presented at this final stage of the proceedings. Now, the court explicitly has to draw the parties’ attention to relevant issues before the hearing, and the parties have to file all facts within a deadline set by the court.
The nullity decisions by the Federal Patent Court may be appealed at the Federal Court of Justice (Bundesgerichtshof, BGH). In order to accelerate the appeal proceedings before the BGH, the nullity decision will now only be checked for judicial errors. This also means that all factual evidence must be presented in the first instance at the Federal Patent Court. Thus, the BGH usually will no longer order an expert opinion.
2) New Fees for German Patent Applications
The German Patent and Trademark Office (GPTO) has introduced claim fees for patent applications filed from October 1, 2009. When filing the application in electronic form, for each claim above 10 a claim fee of EUR 20,- falls due. For paper filings, the claim fee amounts to EUR 30,- for the 11th claim and each following claim. No claim fees have been introduced for utility models.
II. TRADEMARK ACT
1) Opposition Based on Non-trademarks
Formerly, an opposition against a trademark registration must have been based on older trademark rights. From October 1, 2009 on, other older rights can be brought forward, i.e. older company names, domain names and work titles as well as trademarks with a reputation.
2) Faster Way to Appeal Decisions
Starting from October 1, 2009 a negative decision by the trademark division of the GPTO can be directly appealed at the Federal Patent Court (so-called “Beschwerde”). The applicant may also choose to take the former route and first have the decision to be reconsidered by the GPTO (so-called “Erinnerung”). The appeal against the “Erinnerung” decision is still possible.
III. EMPLOYEES´ INVENTIONS ACT
Various amendments relate to employees’ inventions, i.e. inventions made for a German employer. Now, all inventions announced by the employee to the employer are automatically transferred to the employer. The employer may waive his right to the invention within a period of four months. In this case, the invention belongs to the employee, who may decide whether or not to file a utility model or a patent application. If the employer does not waive his right within these four months, he has to file a respective utility model or patent application.
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