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Notice of 7 September 2021

concerning the Second Act to Simplify and Modernise Patent Law (Zweites Gesetz zur Vereinfachung und Modernisierung des Patentrechts) of 10 August 2021 and the Act on Further Duties of the German Patent and Trade Mark Office and to Revise the Patent Costs Act (Gesetz über weitere Aufgaben des Deutschen Patent- und Markenamts und zur Änderung des Patentkostengesetzes) of 30 August 2021

The Second Act to Simplify and Modernise Patent Law (Second Patent Law Modernisation Act – Patentrechtsmodernisierungsgesetz) were promulgated in the Federal Law Gazette (BGBl. I p.3490) on 17 August 2021. The Act on Further Duties of the German Patent and Trade Mark Office and to Revise the Patent Costs Act were promulgated in the Federal Law Gazette (BGBl. I p.4074) on 7 September 2021.

The purpose of the Second Patent Law Modernisation Act is to simplify and modernise the Patent Act (Patentgesetz) and other IP laws. The amendments relevant to the procedures before the DPMA are contained in several articles. They concern overarching issues in the IP Acts and in the Ordinance Concerning the German Patent and Trade Mark Office (DPMA Verordnung, see A.1) as well as provisions in individual acts and ordinances and in the Act on International Patent Conventions (Gesetz über internationale Patentübereinkommen, see A.2 to A.5). In addition, there are fee amendments (see A.6).

The omnibus act will enter into force on 18 August 2021. Those amendments that require adjustments to the IT systems of the DPMA will enter into force on 1 May 2022.

The Act on Further Duties of the German Patent and Trade Mark Office and to Revise the Patent Costs Act will provide for the assignment of further responsibilities in the field of information of the public and international cooperation to the German Patent and Trade Mark Office (DPMA), which will be incorporated in the Patent Act. In addition, the annual fees for patents will be raised from
1 July 2022 (see B.).

Contents of the notice

A. Second Act to Simplify and Modernise Patent Law

1. General provisions for all IP procedures
2. Patent procedures and procedures for supplementary protection certificates
3. Utility Model Procedures
4. Trade mark procedures
5. Design procedures
6. Fee provisions

B. Act on Further Duties of the German Patent and Trade Mark Office and to Revise the Patent Costs Act
Increase in annual fees for patents

A. Second Act to Simplify and Modernise Patent Law

1. General provisions for all IP procedures

  • a) Participation in hearings, proceedings and giving evidence by using image and sound transmission
    (entry into force: 1 May 2022)

For procedures under the Patent Act, the Utility Model Act (Gebrauchsmustergesetz), the Trade Mark Act (Markengesetz), the Design Act (Designgesetz) and the Semiconductor Protection Act (Halbleiterschutzgesetz), the option of participating in hearings, proceedings, and giving evidence by means of image and sound transmission shall be provided by analogously applying Section 128a of the Code of Civil Procedure (Zivilprozessordnung – hearings for oral argument and examinations before the civil courts) (section 46 (1) of the Patent Act, section 17 (2) sentence 6 of the Utility Model Act, section 60 (1) sentence 2 of the Trade Mark Act, section 34a (3) sentence 4 of the Design Act, section 8 (5) of the Semiconductor Protection Act).

Parties can participate in sessions by video conferencing in suitable cases to be decided by the DPMA. It will still be possible to physically be present in order to participate in the sessions on site. These options will be available as soon as the necessary internal technical infrastructure has been established. The DPMA will provide further details in a separate notification.

  • b) Uniform rules on public holidays for all DPMA locations (entry into force: 1 May 2022)

All public holidays applicable at at least one of the DPMA locations will be recognised for the purpose of extending a time limit, irrespective of the location where the act required to meet the time limit is actually performed (section 18a of the DPMA Ordinance). The acts and declarations that are subject to a time limit can be performed or made at all three DPMA locations in Munich, Jena and Berlin in order to meet the time limit. In the future, this will eliminate legal uncertainties when calculating a time limit if public holidays that are not uniformly observed throughout Germany fall within that period.

  • c) Restriction of the obligation to publish and of the right to inspect files in the case of contents that are obviously contrary to public policy (entry into force: 18 August 2021)

In future, the publication of patent and trade mark applications with obviously morally offensive contents is to be avoided by restricting the obligation to publish (section 32 (2) of the Patent Act, section 33 (3) of the Trade Mark Act). Similarly, the right to inspect files will be excluded across all types of IP rights insofar as the file contains elements that are obviously contrary to public policy or morality (section 31 (3b) of the Patent Act, section 8 (7) of the Utility Model Act, section 62 (4) of the Trade Mark Act, section 22 (3) of the Design Act). This is to prevent the official publication and register database of the DPMA, which is accessible to everyone on the Internet, from being used for the dissemination of contents obviously contrary to public policy or morality. Since the exclusion of publication and inspection is limited to the contents of the files that are contrary to public policy, the interest of the general public in obtaining information is not affected.

2. Patent procedures and procedures for supplementary protection certificates

  • a) Extension of the period for PCT applications to enter the national phase (entry into force: 1 May 2022)

The period for PCT applications to enter the national phase will be extended from 30 to 31 months from the filing date or priority date, as the case may be. In future, applicants will have one more month to pay the fee for entry into the national phase at the DPMA and, if applicable, to submit the German translation of the application (Article III sections 4 and 6 of the Act on International Patent Conventions).

  • b) Simplifying the change of parties in opposition proceedings (entry into force: 1 May 2022)

The change of parties in opposition proceedings in case of a change in the proprietor will be simplified and streamlined. In future, the person newly entered as right holder in the register may take the place of the former right holder in ongoing opposition proceedings without the consent of the other parties to the proceedings (section 30 (3) sentence 3 of the Patent Act).

  • c) Expansion of the examination of obvious deficiencies (entry into force: 18 August 2021)

The examination of obvious deficiencies of a patent application by the Examining Section will be expanded to include the exclusions from patentability under section 1a (1) of the Patent Act (human body) and section 2a (1) of the Patent Act (plants and animals) (section 42 (2) No. 3 of the Patent Act).

  • d) Naming of the inventor (entry into force: 1 May 2022)

It is clarified by law that the inventor may be mentioned by name and an indication of the place in patent publications and in the register. The mention will be omitted completely or with regard to the indication of the place if the inventor designated by the applicant so requests (section 63 (1) of the Patent Act).

  • e) Revocation and further processing of supplementary protection certificates (entry into force: 18 August 2021)

In line with existing practice, it is clarified by law that supplementary protection certificates may be revoked upon request of the proprietor under section 64 of the Patent Act and that the procedural option of further processing (section 123a of the Patent Act) also applies to supplementary protection certificates (section 16a (2) of the Patent Act).

3. Utility Model Procedures

  • a) Simplifying the utility model splitting-off procedure (entry into force: 1 May 2022)

In future, the requirement to file a copy of the patent application or its translation will no longer exist in the utility model splitting-off procedure if these documents have already been filed with the DPMA in the context of applying for a patent (section 5 of the Utility Model Act, section 8 of the Utility Model Ordinance [Gebrauchsmusterverordnung]).

  • b) Simplifying the utility model cancellation procedure (entry into force: 1 May 2022)

The utility model cancellation procedure will become more efficient (section 17(2) to (5) of the Utility Model Act). In future, a hearing will only take place – similar to the hearing in patent opposition proceedings – if requested by a party or if the DPMA considers it expedient (section 17(2) to (3) of the Utility Model Act). In addition, more flexibility will be introduced to the decision on costs (section 17 (4) of the Utility Model Act). If no decision is made on the merits of the case, a decision on the costs will only be made upon request. If no decision on costs is issued, each party bears their own costs. In future, the Utility Model Division as judicial panel may also determine the value of the matter (section 17(5) of the Utility Model Act).

4. Trade mark procedures

  • a) Harmonisation with the current legal situation of the Madrid system (entry into force: 1 May 2022)

The Trade Mark Act, the Trade Mark Ordinance (Markenverordnung) and the schedule of fees are brought into line with the current legal situation of the Madrid system (sections 107 et seq. of the Trade Mark Act, section 25 No. 31, sections 43, 45 and 46 (1) of the Trade Mark Ordinance, Part A section III No. 5 of the annex to section 2 (1) of the Patent Costs Act). Since 31 October 2015, all members of the Madrid Agreement are also members of the Protocol to the Madrid Agreement. Due to the fact that the Protocol to the Madrid Agreement takes priority over the Madrid Agreement, the international registration of marks is now only governed by the Protocol to the Madrid Agreement. This is taken into account by the amendments.

  • b) Clarifying the calculation of the duration of protection in the Trade Mark Act (entry into force: 18 August 2021)

The provisions on the duration of protection in the Trade Mark Act and in the European Union Trade Mark Regulation will be completely harmonised as regards their wording. In order to facilitate the calculation of the time limit, it is clarified by means of the harmonisation that section 47 (1) of the Trade Mark Act – just as the European Union Trade Mark Regulation – refers to a time period that is triggered by an event. The calculation of the duration of protection will not be changed as a result of the amendment.

5. Design procedures

  • a) Requirement to hold sessions in design procedures abolished (entry into force: 18 August 2021)

The Design Division will be allowed to take decisions without a session (for example, by way of written procedure) (section 6 (3) of the DPMA Ordinance). This places the Design Division on a par with the divisions in other IP proceedings, for which no session is required either.

  • b) Ex officio determination of the value of the matter in design procedures (entry into force: 18 August 2021)

In future, it will be possible to determine the value of the matter in design procedures ex officio (section 34a (6) of the Design Act). The purpose is to simplify the procedure and accelerate the subsequent determination of costs.

6. Fee provisions

  • a) Fee reduction for joint proprietors or applicants of an IP right (entry into force: 18 August 2021)

In procedures before the DPMA, in which a legal remedy can only be sought by the person in possession of an IP right, the fees will no longer be determined according to the number of proprietors or applicants. For reasons of fee fairness, joint proprietors or applicants are treated as one person for fee purposes (part A section 2 of the annex to section 2 (1) of the Patent Costs Act). The same fee reduction is granted to joint proprietors or applicants of an affected IP right in appeal proceedings if they jointly file an appeal (part B section 1 of the annex to section 2 (1) Patent Costs Act).

  • b) Due date for payment of annual fees for supplementary protection certificates (entry into force: 1 May 2022)

For determining the due date of payment of the annual fees for supplementary protection certificates, the special circumstances of the individual grant procedures will be taken into account to a greater extent in the interest of the proprietors (section 3 (2) sentences 3 and 4 of the Patent Costs Act). This refers in particular to special situations where the supplementary protection certificate is granted only after the IP term has started.

  • c) Advance payment of annual fees for supplementary protection certificates (entry into force: 1 May 2022)

In the future, it will be possible to make a legally effective advance payment of the annual fees for supplementary protection certificates more than one year before the due date so as to simplify administrative matters for applicants and the DPMA (section 5(2) sentence 3 of the Patent Costs Act).

  • d) Fee increase for supplementary protection certificates (entry into force: 1 May 2022)

The annual fees for supplementary protection certificates will be moderately raised given the increased efforts involved in the examination (Nos. 312 210 to 312 261 of the annex to the Patent Costs Act (schedule of fees)). Please refer to the provisions concerning the application of the previous fee rates in certain cases under section 13 of the Patent Costs Act.

  • e) Switching back from the "one-class model" to the "three-class model" for the conversion of a European Union trade mark into a national trade mark (entry into force: 1 May 2022)

For the conversion of a European Union trade mark into a national trade mark, what is known as the “three-class model” will be reintroduced into the fee system (part A, section III, No. 5 of the annex to section 2 (1) of the Patent Costs Act). Under the up to now applicable "one-class model", the conversion of European Union trade marks into national trade marks results in higher fees compared to a national trade mark application, for which the "three-class model" applies, although the examination effort is basically the same. This will be remedied by the amendment.

B. Act on Further Duties of the German Patent and Trade Mark Office and to Revise the Patent Costs Act

Increase in annual fees for patents (entry into force: 1 July 2022)

The annual fees for the maintenance of patent applications or patents (section 17 of the Patent Act) will be moderately increased (numbers 312 050 to 312 207 of the annex to the Patent Costs Act (schedule of fees)). The increase takes into account the drop in the fee level caused by inflation since 1999. The change in fees will come into force on 1 July 2022.

Please refer to the provisions concerning the application of the previous fee rates in certain cases under section 13 of the Patent Costs Act.

Last updated: 7 September 2021 

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