News 2022

Latest news and important information

++ News – Munich, May 12, 2022 +++

Amendments of regulations before the German Patent and Trade Mark Office (DPMA)


In the months of May and July 2022, some amendments relevant for practice before the DPMA will enter into force. The most important ones in brief:

(1) Increase of renewal fees for German patents (entry into force: 1 July 2022).
The patent fees for annual renewals will be moderately increased with due dates from July 2022, concerning payments from the 5th renewal fee. The following list shows the old (left column) and the new (right column in brackets) fees in EURO:

Annual fees:

  • for the 3rd year  . . . . . . . . . . . . . . . . . . . . . . . .  70
  • for the 4th year  . . . . . . . . . . . . . . . . . . . . . . . .  70
  • for the 5th year  . . . . . . . . . . . . . . . . . . . . . . . .  90     (100)
  • for the 6th year  . . . . . . . . . . . . . . . . . . . . . . . .  130   (150)
  • for the 7th year  . . . . . . . . . . . . . . . . . . . . . . . .  180   (210)
  • for the 8th year  . . . . . . . . . . . . . . . . . . . . . . . .  240   (280)
  • for the 9th year  . . . . . . . . . . . . . . . . . . . . . . . .  290   (350)
  • for the 10th year  . . . . . . . . . . . . . . . . . . . . . . .  350   (430)
  • for the 11th year  . . . . . . . . . . . . . . . . . . . . . . .  470   (540)
  • for the 12th year  . . . . . . . . . . . . . . . . . . . . . . .  620   (680)
  • for the 13th year  . . . . . . . . . . . . . . . . . . . . . . .  760   (830)
  • for the 14th year  . . . . . . . . . . . . . . . . . . . . . . .  910   (980)
  • for the 15th year  . . . . . . . . . . . . . . . . . . . . . . .  1,060   (1,130)
  • for the 16th year  . . . . . . . . . . . . . . . . . . . . . . .  1,230   (1,310)
  • for the 17th year  . . . . . . . . . . . . . . . . . . . . . . .  1,410   (1,490)
  • for the 18th year  . . . . . . . . . . . . . . . . . . . . . . .  1,590   (1,670)
  • for the 19th year  . . . . . . . . . . . . . . . . . . . . . . .  1,760   (1,840)
  • for the 20th year  . . . . . . . . . . . . . . . . . . . . . . .  1,940   (2,030)

Surcharge for late payment of the annual fee . . 50

(2) Extension of the time limit for entering the German national phase in PCT applications (entry into force: 1 May 2022)

The time limit for entering the German national phase in PCT applications is extended from 30 to 31 months from the filing or priority date. This gives more time to pay the fee for the initiation of the national phase at the DPMA and, if necessary, to submit the translation of the application in German. This is now also a welcome harmonisation with the corresponding 31-month time limit for the entering the regional phase before the European Patent Office (EPO).

(3) Conduct of hearings and oral proceedings by video (entry into force: 1 May 2022)
In patent, utility model, trade mark and design procedures before the DPMA, the possibility to participate in hearings and oral proceedings by video transmission will be opened. However, the possibility to participate in on-site personal hearings instead will continue to exist.

If you have any questions, please do not hesitate to contact our team. Dr Andreas Oser, LL.M. (office@pruefer.eu)


++  News – Munich, March 10, 2022 +++

Prüfer & Partner with Andreas Jacob listed on WTR 1000 2022


Intellectual Property specialists Prüfer & Partner are celebrating as the firm together with its Managing Partner Andreas Jacob were listed in the prestigious ranking Word Trademark Review WTR 1000 2022. Consistently listed in WTR 1000’s sister publication, the IAM Patent 1000, Prüfer & Partner makes its first appearance in the trademark rankings this year thanks to its growing profile on the soft IP side and to the efforts of Andreas Jacob, who was recommended by WTR for his anti-counterfeiting knowledge.

What the ranking said
WTR recognized Prüfer & Partner as "it is sought after for portfolio management and enforcement work both online and offline – and increasingly for litigation, thanks to the efforts of Andreas Jacob" and emphasized that its "State-of-the-art IT systems and digital solutions keep it ahead of the curve, while a sizeable worldwide network renders it highly capable on the global stage".

As a listed individual, Andreas Jacob was recommended for his "rarely seen level of anti-counterfeiting knowledge". As a managing partner of the firm, Jacob has recently been masterminding several trademark infringement actions for Knorr-Bremse, as well as managing its filing strategy and guiding the IP aspects of the restructuring of its entire product portfolio.

About WTR 1000
The prestigious ranking WTR 1000, published by the Globe Business Media Group in London, is one of the world's leading rankings with regard to trademark services providers. It identifies the top trademark professionals in key jurisdictions around the globe. The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive ‘go-to’ resource for those seeking world-class legal trademark expertise.


++ News – Munich, February 07, 2022 +++

Newly published Legal 500 Germany Ranking 2022 - Prüfer & Partner again among the leading law firms in Intellectual Property Law

Prüfer & Partner has again been awarded by the renowned professional publisher Legal500 in the field of Intellectual Property Law, both in the category "Prosecution" and in "Litigation"! We are very pleased about this further award for our work and would like to sincerely thank all our clients, foreign colleagues as well as employees for the trust they have placed in us and the good cooperation.
The link to the detailed ranking result on LEGAL500 can be found here.

References:

"Prüfer & Partner are a strong team, which is particularly effective in the interaction between back office (very strong and extremely friendly!), drafting of applications/prosecution and legal advice in the conflict/licensing environment."

"Dorothea Hofer: Excellent, conscientious and comprehensive advice in the conflict/licensing environment, very pragmatic and savvy and exceptionally helpful."

"Very high level of expertise."

"Dorothea Hofer, Jürgen Feldmeier and Andreas Oser. They are very good at understanding complex technical issues, give appropriate advice, and handle urgent matters expeditiously. Mr. Feldmeier selects his associates very well in order to be able to handle important mandates well, especially litigation."

"Dorothea Hofer and Jürgen Feldmeier are IP veterans, which is apparent in their practical advice and background knowledge of procedures and possible outcomes of office actions or conflicts. I find them very strong and attentive, especially with clients from Asia who feel safe with them. Perfect English and cultural sensitivity help them."

The Legal 500 is a renowned research agency that specializes in law firm recommendations. As part of its research, the independent team of experienced editors conducts hundreds of interviews with attorneys and consults more than 23,000 clients each year, allowing for a comprehensive and thorough evaluation of law firms in a wide range of practice areas.


++ News – Munich, February 2, 2022 +++

Roadmap and preparations for the EU Unitary Patent
and EU Patent Court System

As previously reported, following ratification in Germany, the way is cleared for the European patent with unitary effect (EU unitary patent) and the Unified Patent Court (UPC). As a result of the deposit of the instrument of ratification by Austria on 18 January 2022, the "provisional application of the EPC/UPC" has now entered into force. Only the preparatory work for the establishment of the court system will have to be completed in the coming months. The Preparatory Committee estimates that it will take at least 8 months. Once the UPC has become effective, Germany will deposit its instrument of ratification as the last formal act, which will automatically trigger the starting point: at the beginning of the fourth following month, i.e. probably towards the end of 2022 or the beginning of 2023, the unitary patent and the UPC will finally become reality, after a long waiting period.

What does this mean for patent applicants and patent proprietors of European patents?
The following are some points to consider now, i.e. even before entering into force:

(1) Choice between the new unitary patent and the classical EP patent
Even if the option can in principle only be exercised after entry into force: by means of suitable procedural measures, this freedom of choice could still be used for EP applications currently pending before the EPO, even if the grant phase is already relatively far advanced.
In a recent communication from the European Patent Office, official measures are announced - without giving details at the moment - to give patent applications that are about to be granted the chance to obtain a unitary patent. The communication on the version of the patent application intended for grant (the so-called "Rule 71(3) Communication") is considered to be the caesura for the applicability of these announced measures.
If you wish to maintain the option for applications although a Rule 71(3) Communication has already been issued, you may have to take your own procedural steps. That is, in order to gain time in this situation, for instance minor formal amendments to the intended text could be requested at the end of the regular 4-month period, in order to trigger a second 71(3) Communication. Alternatively, or in addition, it is also possible to continue the application after the due date for completion of the (possibly second) Rule 71(3) Communication has deliberately expired: after being notified of a loss of rights, further processing (with an official fee of 265.00 EUR) would then have to be requested.

(2) Choice depending on the type and number of countries desired
After entry into force of the Unitary Patent Act, the applicant must decide, at the latest one month after receipt of the decision to grant by the EPO, whether to proceed with EP validations in individual countries as before or to seek the new EU unitary patent. The new EU unitary patent would allow patent protection over the entire territory of the participating EU countries at one stroke, which currently includes the following 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. More will be added soon, as 8 countries only need to ratify (Czech Republic, Greece, Ireland, Poland, Romania, Slovakia, Hungary, Cyprus). If protection is to be achieved for further, non-participating countries - including non-EU states of the EPC such as Great Britain or Switzerland - additional national validations would have to be carried out there in accordance with the "old" model.

(3) Choice of (non-)applicability of the UPC (opt-in/opt-out)
Three months before the unitary patent and the UPC enter into force, the so-called "sunrise period" begins. From this time onwards, the applicant/patent proprietor can request the non-applicability of the UPC system for one or more or even all of his existing and future classical EP patents by "opting out". In the opt-out state, individual national courts will then - during a transitional period of 7 years - retain jurisdiction as before in actions on patent infringement and validity in the respective country. Reasons for choosing the opt-out are, for example, not to expose the patent to the risk of a central invalidation through a single nullity procedure; furthermore, in the opt-out state, the development and the practice and case law in the new UPC system could first be observed; if sufficient legal certainty is given, the patent proprietor can then enable UPC applicability again in the future as a result of an opt-in declaration.

(4) Choice of a competent UPC court location for patent infringements
Due to their experience, the German court locations Düsseldorf, Munich, Mannheim and Hamburg will also play an important role in the new UPC system. The court location Germany could be further strengthened by the fact that the central UPC court in Munich is not only responsible for the field of mechanics, as originally stipulated, but may also awarded the technical fields of chemistry, pharmaceuticals and human necessities (incl. health care); this field was originally intended for London, but is now available for disposition as a result of Brexit.
If there is no opt-out, the decisions of the UPC court will be directly effective in all countries where the EP patent exists.

If you have any questions, please do not hesitate to contact our team. Dr Andreas Oser, LL.M. (office@pruefer.eu)