When is an agent required?
Applicants having a residence, principal place of business or an establishment in Germany do not have to appoint a legal representative for proceedings before the German Patent and Trade Mark Office (DPMA). They can file applications for IP rights and requests themselves. Nevertheless, it may be useful to engage a patent attorney or lawyer experienced in IP protection even before filing an application.
A yearly updated directory of German patent attorneys (published by the German Chamber of Patent Attorneys) is available at the enquiry units or online on the webpage of the Patentanwaltskammer.
Applicants having neither a residence nor principal place of business nor an establishment in Germany
Applicants - even German nationals - having neither a residence nor principal place of business nor an establishment in Germany can only take part in IP proceedings before the DPMA if they are represented by a lawyer or patent attorney authorised to practice in Germany (Sec. 25(1) Patent Act [Patentgesetz], Sec. 28(1) Utility Model Act [Gebrauchsmustergesetz], Sec. 96(1) Trade Mark Act [Markengesetz], Sec. 58(1) Design Act [Designgesetz]). Under certain conditions, persons having neither a residence nor principal place of business nor an establishment in Germany may be represented by patent agents (Patentassessor or Patentassessorin) (Sec. 155(1) no. 2 and (2) Patent Attorney Code [Patentanwaltsordnung]) or holders of certificates of representation (Erlaubnisscheininhaber) (Sec. 160 Patent Attorney Code in conjunction with Sec. 178 Patent Attorney Code in the version in force until 31 August 2009).
Representation is also possible through lawyers or patent attorneys from a member state of the European Union, a contracting party to the Agreement on the European Economic Area or Switzerland if they are authorised and empowered to represent applicants in proceedings before the German Patent and Trade Mark Office, the Federal Patent Court and in civil litigation affecting a patent, as well as to file motions for criminal prosecution. The authorisation is subject to relevant provisions governing admission to the profession of lawyer or patent attorney as well as to the provisions concerning temporary provision of services (cf. Act on the Activities of European Lawyers in Germany [Gesetz über die Tätigkeit europäischer Rechtsanwälte in Deutschland] and the Act on the Activities of European Patent Attorneys in Germany [Gesetz über die Tätigkeit europäischer Patentanwälte in Deutschland] as well as the Federal Lawyers' Act [Bundesrechtsanwaltsordnung] and Patent Attorney Code). Also admitted are European patent attorneys who are either active as admitted patent attorneys (Secs. 1, 12 Act on the Activities of European Patent Attorneys in Germany) or as patent attorneys providing services (Sec. 13 Act on the Activities of European Patent Attorneys in Germany). The chambers of lawyers or the Chamber of Patent Attorneys decide on the type and scope of the admissible activities of European lawyers and patent attorneys. The chambers publish in publicly accessible registers which European lawyers (with the exception of lawyers providing services and in-house lawyers) or patent attorneys are admitted to be active in Germany.
- Official Register of Lawyers of the German Federal Bar
- Official register of patent attorneys
- Register of patent attorneys providing services (in German)
The DPMA may review the authorisation of the empowered lawyer or patent attorney of the applicant having neither a residence nor principal place of business nor an establishment in Germany during IP proceedings, particularly based on the publications by the chambers.
If an applicant having neither a residence nor principal place of business nor an establishment in Germany does not appoint a person authorised to accept service resident in Germany, service is effected by registered letter in proceedings before the DPMA (Sec. 94(1) no. 1 Trade Mark Act, Sec. 127(1) no. 2 Patent Act in conjunction with Secs. 21(1) Utility Model Act, 23(4), fourth sentence, Design Act).
The list of professional titles which are comparable to German attorneys-at-law can be consulted here: Gesetze im Internet.
Last updated: 19/07/19