Available from January 7th, 2014: Online inspection of files according to § 32 PatG
An explicit legal basis for online inspection of files was created. This step was necessary due to reasons of privacy and copyright. The German Patent and Trademark Office will offer online inspection of files in the cases of patents and utility models, presumably beginning from January 07th, 2014.
Term for forwarding will be extended: Applications in English or French language according to § 35a PatG (from April 01st, 2014)
The deadline for the submission of the German translation of a patent application text initially filed in English or French will be extended to 12 months after filing date, however, not more than 15 months after priority date. If the applicant misses the submission of the translation in time, the application will be regarded as withdrawn. However, the Office can even request that the applicant has to submit a German translation of the patent application before the above-mentioned deadline under certain circumstances.
Soon with a preliminary assessment from the Office: Search according to § 43 PatG (from April 01st, 2014)
The content of the search report will be extended by a preliminary assessment of the possibility to protect the subject-matter of the application. Therefore, the applicant should get a better basis for a decision how to proceed. On the other hand, the workload at the German Patent and Trademark Office will increase due the production of the new search report. The law provides a suitable increase of the research fee by 50 EUR (now 300 EUR instead of 250 EUR) for compensation reasons. Associated with the extension of the search report, the right of a third party to request a search will be canceled. However, a third party can continue to request an examination. If the search is performed by a non-national institution, the applicant can request that the result of the search can also be used for the European patent application.
Opposition term will be extended: Opposition according to § 59 PatG (from April 01st, 2014)
The deadline for filing an opposition against an issued patent will be extended from 3 months to 9 months.
Hearings will become obligatory for the Office: Hearings according to § 59 PatG (from April 01st, 2014)
If requested, the examining sections always have to conduct a hearing in the examination pro-ceedings in the future. Further, hearings in an opposition procedure will be always open to public. However, if protectable interests are in danger, the public can be excluded by request of one involved party.
If you have further questions regarding this topic, we will be happy to assist you.
Contact person: Jürgen Feldmeier
As from November 2014, the EPO will enable applicants to request further searches in the European regional phase for international patent applications that are found to lack unity of invention.
Under the current practice, when an application enters the European regional phase and the EPO objects to the lack of unity of the invention (i.e., if, in the EPO's opinion, the application includes more than one invention), the EPO searches – according to Rule 164 of the European Patent Convention (EPC) only the claims for the (chronologically) first invention. However, the EPO does not allow the applicant to request additional searches. Thus, the further inventions can be protected only by filing divisional applications, even if the applicant does not intend to continue the procedure for the first invention.
Now, the EPO has announced by press release (http://www.epo.org/law-practice/legaltexts/ official-journal/ac-decisions/archive/20131014b.html) an amendment of said rule. The new rule will come into force on November 1, 2014 and will enable applicants to request additional searches in the European regional phase if the EPO objects to the lack of unity.
Under the amended Rule 164, the applicant will be given two months from receipt of a corresponding notification to request additional searches by paying a respective fee. The new provisions will apply to any case in which no EPO examination communication has been issued by November 1, 2014. In cases for which the EPO was not the International Searching Authority, the new provisions will apply if the supplementary European search report (SESR) is drawn up on 1 November 2014 or later.
Since also Rule 135 EPC was revised accordingly, in addition, further processing will be available for requests for further searches.
f you have any specific questions, please do not hesitate to contact us any time.
Contact person: Jürgen Feldmeier
Amendment of the rules for European divisional applications (Rules 36, 38, and 135 EPC)
Dear Sir or Madam,
On the EPO-website, the Administrative Council of the European Patent Office announced an important amendment concerning the rules for divisional applications.
With effect from April 1, 2014, a divisional application may be filed as long as the earlier application is still pending. Therefore, the existing 24-month time limit for the filing of divisional applications is repealed.
Where the two-year term for filing divisionals has already passed, applicants may have a further opportunity to file divisionals when their application is still pending on April 1, 2014.
However, since the original purpose of Rule 36 EPC was to reduce the number of divisional applications and it came clear that the rule did not have the desired effect, the amended regulations will introduce an additional fee growing progressively for each subsequent generation of divisional applications. This means that the filing of divisional applications based on antecedent divisional applications will be subject to an additional fee.
The precise details of the new fee is still to be published.
If you have any specific questions on this development, please contact us.
With kind regards
Contact person: PA Jürgen Feldmeier
On October 22, 2013, an IP-Speedating having the topic "product piracy" takes place in Munich. On the part of Prüfer & Partner, Mr. Andreas Jacob (Attorney-at-Law/Rechtsanwalt) will be present at this event for reporting on expiriences from the legal practice in the fight against counterfeits, look-alikes and plagiarism.
Apart from preemptive protection strategies and counter measures in case of emergency, Mr. Jacob will inform on recent developments in the legal practice, e.g. the upcoming Unitary European Patent, the planned European certification mark and changes on cross-border actions.
Date: October 22, 2013, 9 am to 12 am
Place: I.G.T. Informationsgesellschaft Technik mbH, Oskar-Maria-Graf-Ring 23, 81737 Munich