Patent law - horak Attorneys at law/ Patent Attorneys, Germany

What is a patent?

A patent gives the patent holder the exclusive exploitation right including a prohibitive right. Only the patent holder can commercially exploit the patented invention, so that he can prohibit third parties from manufacturing, advertising, marketing and using or even owning or applying the patent procedure as well as of the object obtained by it.

What requirements must a patent comply with?

Patents are issued for inventions which are new, which are founded on a creative activity and which are commercially applicable (§ 1 (1) Patent Act). “Only inventions” are patentable. An invention is a technical solution for a technical problem, which solves the problem by means of so-called innovative activity. An invention is considered new if goes beyond state-of-the-art technology (§ 3 (1) Patent Act). State-of-the-art technology comprises all knowledge which has been disclosed to the public up to the day of the application by means of a written/oral description, utilisation, etc. Therefore, inventions cannot be presented to the public before their application – especially by the inventor – i.e. especially exhibited at fairs or even explained in detail.

An invention must stand out from state-of-the-art technology by an inventive step or an invention is characterised by a the so-called level of invention (§ 4 Patent Act). The required invention level has been reached if an invention lies above the average knowledge of an expert.

Lastly, the invention must be commercially applicable (§ 5 Patent Act), i.e. it must be possible to manufacture and utilise it commercially. This characteristic usually has a special importance in the area of therapeutical or diagnostic medicine; in all other cases, the requirement concerning commercial applicability is usually fulfilled.

What is not patentable?

Most objects are in principle patentable, there are, however, explicit exceptions. Inventions which are not patentable include (§ 1 (2) Patent Act): discoveries as well as scientific theories and mathematical methods, aesthetic creations (protection of registered designs is usually possible), plans, rules and procedures for intellectual activities, for games or for business activities, as well as for software as such (at the moment the question of the patentability of software is being discussed again based on US software patents; presently software is protected by copyright under German law), as well as representation of information (such as forms, charts, etc.). Further exceptions include (§ 2 Patent Act): inventions which involve violation of moral principles, as well as plant varieties (plants varieties patent is possible), animal species and biological procedures for growing plants and breeding animals, except for microbiological procedures and their produce.

In spite of these areas of exception, technical appliances in these areas might be patentable, with the exception of the violation of moral principles.

How long is patent protection effective?

Protection expires 20 years after the day when the application giving rise to the patent is first filed, as long as the patent is maintained, by paying the annual fees.

An exception is a so called Supplementary Protection Certificate for pharmaceuthical products, which after the time / duration of protection provides further protection of the maximum of 5 years when certain requirements are met.

What territorial protection does a patent provide?

There is no worldwide patent. Alongside national patents and conventional European patents, the European patent with unitary effect has been available since 1 June 2023. Its territorial coverage is determined by the participating states covered when unitary effect is registered; it does not automatically cover every EU member state or all of Europe. A PCT application simplifies the international filing route but does not result in a worldwide patent.

Until today patents are protected only nationally, in spite of international efforts, among which GATT-TRIPS are especially important. A German patent application results in protection of the invention in Germany only. If a patent is to be protected in England as well, an autonomous English patent must be applied for. The Patent-Cooperation-Treaty merely makes the application procedure easier.

Is it allowed to make public an invention prior to a registration (novelty period of grace)?

In Germany an invention has to be registered before it can be made public in any way whatsoever. An invention is made public when samples of the invention are handed out to third parties that exhibit, sell or advertise such products, so that the invention is revealed in advertising materials. Therefore, if such samples are passed on, they should be accompanied by a comprehensive agreement to maintain secrecy. On the one hand, the invention should not be revealed in such an agreement, but on the other, it should be described precisely enough, so that there are no doubts with regard to the subject matter of the agreement to maintain secrecy. It is in principle not harmful to reveal a patent to an individual, although this might in some cases mean that it is made public in this way. Thus, it is generally not recommended to reveal an invention in any way. A restriction applies only in the case of an obvious infringement to the disadvantage of the applicant or his representative or on world exhibitions. In such cases the announcement can remain harmless within 6 months before filing an application, as long as additional requirements are met.

In some countries there is, however, a so-called novelty period of grace. This means that inventions might be made public – as long as certain requirements are met – in a specified period prior to the application. In the USA the novelty period of grace is one year.

How to apply for a patent?

German patents generally come into being by filing a patent application to the German Patent Office. There is a form available from the German Patent and Trademark Office (http://dpma.de). Apart from this form, which includes an application, so-called patent claims, a description and a summary in German should be handed in. For the purpose of a better description, drawings are usually included. When filing an application, which will be scanned by the Patent Office, you should pay attention to a number of formal requirements, e.g. that the description, the claims and the summary each start with a special form and should be marked with an appropriate title. Moreover, there is almost a patent language of its own, in which certain expressions are used for structuring the text, signalling consequences etc.: the patent claims often include the expression “characterised by…” followed by the description of the actual invention, whereas the state of technology is delineated prior to this including references to existing patents.

What is the procedure of issuing a patent?

On filing, the patent application is checked for obvious formal faults, e.g. if documents are lacking, etc. After that, according to the type of application a research or examination procedure is started. Based on the examination application a Patent Office examiner with the appropriate technical background examines if the patent application conforms to patent requirements, i.e. especially to the central questions concerning the novelty and the creative activity. Special attention is paid to the patent claims, since it is them that define the scope of the protection sought by the applicant. Patent Office examiners often have one or more questions which need to be answered before a patent can be granted. As long as they do not relate to the main aspects of the major claim, it is enough to change the application correspondingly or to convince the examiner that none are necessary.

The whole examination procedure can easily last up to two years, whereas the unexamined patent application is disclosed already after 18 months. Therefore, the question if a subsequent application for the same object should be filed has to be answered early. In case of a subsequent application, e.g. a subsequent application in another country, it is possible to assert the priority of the primary application. The patent filed subsequently is then considered to have been filed on the day of the primary application. The possibility to claim such priorities is based on the Paris Convention that most countries are members of. This means that within a year from the date of the first application a subsequent application can be effected guaranteeing its priority.

The examination procedure ends when a test certificate is issued, or possibly with the refusal to issue a patent. In case of granting a patent, a patent is published in the patent journal and entered in the patent registry.

How can action be taken against a patent – opposition/nullity proceedings?

An opposition against the grant of a German patent may be filed within nine months after publication of the grant under section 59 of the German Patent Act. It must be submitted and substantiated in writing and based on a statutory ground for revocation. The supporting facts must be specified within the opposition period. In cases of unlawful appropriation, only the injured party is entitled to oppose.

Oppositions are generally decided by the DPMA patent division, subject to the statutory appeal routes. A patent nullity action must be brought against the registered patent proprietor before the Federal Patent Court. Under section 81(2) of the German Patent Act, such an action is barred while an opposition may still be filed or opposition proceedings are pending. In cases of unlawful appropriation, only the injured party may bring the action.

The nullity suit – contrary to the opposition proceedings – is expensive. An appeal can be lodged to the Federal High Court of Justice from the judgement of the Federal Patent Tribunal.

Is there a European patent?

However, on the basis of the European Patent Convention a standardised application to issue a European patent can be made to the European Patent Office. In this case, national issues, namely national laws, are to be partly applied e.g. in cases of infringement suits. This is so because a European patent acquires the same rights in each of the European countries designated in the application (it is not necessary to designate all countries) as it would acquire if it had obtained individual patents in each of these countries.

What do we need to register your invention?

Usually we need an outline, a description and possibly a model are necessary. In some cases, we need further details which we cannot state since they depend on the complexity of the given object.

In the initial phase, in which we plan further proceedings, we only need general information on the area in question (electrical engineering, mechanical engineering, chemistry, etc.) so that our expert in charge can contact you and settle further details with you, including estimation of costs.