Questions to Customer Care and Services

The EU's 14th sanctions package against Russia results in restrictions on the acceptance of applications and requests in pending registration procedures filed by Russian nationals or natural persons resident in Russia or by legal persons, entities or bodies established in Russia, see https://eur-lex.europa.eu/legal-content/DE/TXT/HTML/.

As a consequence, effective 25 June 2024, the German Patent and Trade Mark Office (DPMA) no longer accepts such applications and requests pursuant to Article 5s of Regulation (EU) 833/2014, unless an exemption applies (for details, please see Important notice of Important notice of 19 July 2024 and Notice No. 1/24 of the President of 9 August 2024.

With its answers to the FAQ, the DPMA offers non-binding guidance on requests and submissions. The answers reflect the DPMA's current interpretation of the legal consequences of Article 5s of Regulation (EU) 833/2014. Amendments to the interpretative guidance of the European Commission or court decisions rendered with respect to the sanctions regulations may require changes to the office's practice and the answers. This does not give rise to any claims. Amendments can be made at any time.

Please find below answers to frequently asked questions that concern the DPMA's practice in implementing Article 5s of Regulation (EU) 833/2014:

I. Collection of information about natural persons that is relevant to the sanctions

Certain information about natural persons relevant to the sanctions (Russian nationality and certain other nationalities, if any, or a residence permit) have so far not been available to the DPMA. The DPMA is now required to request this information if applications are filed and requests and submissions are made during pending registration procedures. This is the only way we can consider whether Article 5s(1) of Regulation (EU) 833/2014 or an exemption pursuant to Article 5s(5) of Regulation (EU) 833/2014 applies.

1. How does the DPMA collect the information relevant to the sanctions when applications and requests are received by mail or fax?

All necessary information to determine whether a natural person is subject to the sanctions and whether an exemption applies (Russian nationality, additional nationality or nationalities, residence permit) must be provided in the form A 9520 for the additional declaration (available at https://www.dpma.de/service/formulare/sonstige/index.html). This information has so far not been available to the DPMA.
All natural persons are required to make this additional declaration.

2. Why is it not sufficient for natural persons to merely make a declaration assuring that they are not subject to the sanctions?

A general declaration that the person concerned is not subject to the EU sanctions regulation is not sufficient to check the sanction status. The EU regulation on which the 14th sanctions package is based expressly stipulates that the IP offices should be enabled to request the necessary information from natural persons. Documents supporting the information must be provided if they are requested.

3. Does an additional declaration have to be made even if the application has been filed prior to the entry into force of the EU regulation on 25 June 2024?

Basically, requests for the grant or registration of IP rights filed prior to the entry into force of Article 5s(1) of Regulation (EU) 833/2014 on 25 June 2024 are not covered by the sanction. This means that the subsequent filing of an additional declaration is not required in all cases. However, if additional requests or submissions are filed in these procedures, they fall into the scope of the sanctions regulation. Since 25 June 2024, an additional declaration has therefore been required with respect to requests and submissions in pending registration procedures even if the application has been filed before that date.

4. Which requests/submissions are not covered by the regulation? In which cases is the submission of the additional declaration not required?

If IP rights have already been granted or registered, they are not covered by the regulation. This means that an additional declaration is not required in the case of, for example:

• Requests for the registration of a transfer of right following the grant/registration, provided there is no indication for a circumvention of the sanctions regulations; and
• Appeal proceedings following the grant/registration.

5. Does the regulation cover appointments of representatives, changes to representation, changes of name and address?

Appointments of representatives, changes to representation and changes of name and address are not subject to the regulation even during pending registration procedures. In these cases, the submission of the additional declaration is not required.

6. Does the regulation cover payments of fees?

The payment of annual/renewal/maintenance fees is not subject to the regulation.

7. Can the additional declaration be made electronically?

Since August 9, 2024, the supplementary declaration can be filed in PDF format via DPMAdirektPro and since February 25, 2025 also via DPMAdirektWeb. It is sufficient to file the supplementary declaration electronically via DPMADirektWeb or DPMADirektPro. An additional subsequent submission by post is not required.

8. Can the additional declaration be made by e-mail?

No. The provisions applicable to the additional declaration are the same as those applicable to other requests and submissions in IP procedures. It is permitted to file by mail, by fax or electronically in accordance with the Ordinance on Electronic Legal Transactions with the DPMA (Verordnung über den elektronischen Rechtsverkehr beim Deutschen Patent- und Markenamt). This means that it is not possible to file the additional declaration by e-mail.

9. Can the form be completed by a representative?

Yes. The declaration can be completed by a representative. In this case, they must complete the "Acting as (if applicable)" field under the signature line.

10. In which case do the additional questions on page 2 of the form have to be answered?

The additional questions must be answered if one of the questions asked in the declaration ("I am a Russian national" or "I am resident in Russia") is answered with "Yes". It is not relevant whether the applicant answers "Yes" to the first or second question of the declaration.

11. Does a separate additional declaration have to be filed for each application, request or submission, or is a filed additional declaration valid for all procedures?

It is only once each natural person must make the additional declaration. The additional declaration is then valid for all procedures. For technical reasons, however, we may request the supplementary declaration from you more than once. In such individual cases, we ask you to complete and submit the supplementary declaration nevertheless.

12. In the case of joint applicants, does each natural person have to make a separate additional declaration, or is a jointly completed additional declaration sufficient?

Each natural person being a joint applicant must make a separate additional declaration.

13. Can applicants or their representatives charge the DPMA for costs relating to the additional declaration?

No. If the applicants or their representatives incur additional costs in connection with the additional declaration (e.g. postal charges, translation costs, general administrative costs, etc.), they shall bear such costs. They cannot claim reimbursement from the DPMA.

14. Is the form for the additional declaration only available in German?

No. Translations of the form into English, French and Spanish are available at https://www.dpma.de/service/formulare/sonstige/index.html.

II. Other questions

1. What happens if, in the case of joint applicants, only one or more members are subject to the sanctions?

If at least one joint applicant is subject to the sanctions, the restrictions of the sanctions regulation apply to applications, requests and submissions filed by the joint applicants of which the sanctioned person is a member.

2. Which actions relating to the national phase of PCT procedures (Article III sections 4 and 5 of the Act on International Patent Conventions - Gesetz über internationale Patentübereinkommen) are covered by Article 5s of Regulation (EU) 833/2014?

As for the procedure before the DPMA as designated office, the payment of the fees for the entry into the national phase is not subject to the sanctions regulation. By contrast, under the conditions provided in the sanctions regulation, the DPMA must not accept the filing of the translation or any request made by the applicant in the national phase, e.g. a request for examination.

3. Can European patents indicating Germany as designated state still be "validated" at the DPMA?

Upon entry into force of the London Agreement in Germany on 1 May 2008, there are no longer validation requirements (or "validation formalities", see FAQ of the European Commission) for European patents with effect in Germany. It is only required that maintenance and/or annual fees be paid; such payments are not subject to point (b) of Article 5s(1) of Regulation (EU) 833/2014 (see question I.6.).
An exception applies in the case of the validation of a European patent for which the mention of the grant of the patent was published in the European Patent Bulletin before 1 May 2008 (Article XI section 4 of the Act on International Patent Conventions1). The national validation of such European patents is considered on an individual basis, provided such cases still exist.

4. Does Article 5s(1) of Regulation (EU) 833/2014 apply to European patents granted by the European Patent Office indicating Germany as designated state?

As there are no longer validation requirements for most European patents with effect in Germany (see question II.3.), the registration procedure concerning the German part of the European patent is usually completed upon publication of the mention of the grant in the European Patent Bulletin. Accordingly, Article 5s(1) of Regulation (EU) 833/2014 does not usually apply to granted European patents indicating Germany as designated state.

5. Can the German part of a granted European patent be transferred to third parties?

Yes. The German part of a granted European patent can still be transferred to third parties, provided there is no indication for a circumvention of the sanctions regulations. In Article 5s(1) of Regulation (EU) 833/2014, point (b) refers exclusively to requests and submissions during pending registration procedures. It does not apply to IP rights already granted or registered (see question II.4.).

Additional information on the 14th sanctions package of the EU is available in Part B of the Frequently Asked Questions of the European Commission Part B of the Frequently Asked Questions of the European Commission .

First of all, there is the question about the costs: The procedure for recording the details of transfer of ownership at the DPMA is free of charge.

Please send requests separately for each IP right, indicating the file number(s), in writing by post, fax or – if you are in possession of a qualified signature card – submit them electronically via DPMAdirektPro; you may, but need not, use the respective request form:

• Patent P 3190
• Utility Model G 6333
• Trade Mark W 7616
• Design R 5742
• Umschreibungsrichtlinien (guidelines for recording the details of a transfer of ownership) A 9139

Legal bases and important sources of information are, among others, the respective IP laws and ordinances, the guidelines for recording the details of a transfer of ownership, as well as section 28 of the DPMA Ordinance DPMAV.

Note: If the request is filed solely by the legal successor or his/her representative, the registered owner or his/her representative will always be contacted prior to recording of the details of the transfer in the register, requesting his/her consent (= right to be heard, compare section 28 (4) of the DPMA Ordinance DPMAV). Requesting consent will delay the procedure of recording the details of a transfer of ownership in the register. For this reason, we recommend that a request for the recording of the details of a transfer of ownership in the register be accompanied by the required, legally effective signatures of both parties, i.e. the predecessor as well as the legal successor or their representatives, or that an extra declaration of consent be attached to the request. Forms for a declaration of consent are also available on our website (P 3201, W 7024, R 5744).

Special case – EP patents: Automatic data transmission between the European Patent Office (EPO) and the DPMA only takes place if the amendment was made at the EPO before the grant of the European patent (EP). Otherwise, the recording of the details of a transfer of ownership must be additionally requested at the DPMA by submitting the EPO's communication concerning a change of registration (EPO Form 2544). If the opposition period at the EPO has already expired, necessary documents concerning the change of ownership (contracts, etc.) may have to be enclosed.

Regarding the question: "How to file the requests in a legally effective way?" Submissions to the IP case files that are received by e-mail are not legally effective. Customer Care and Services do not forward such e-mails to the specified case files. Therefore, please do not send your requests for transfer of rights/to record details of a transfer of ownership in the register by e-mail or attached to an e-mail, but rather send them in writing by post, fax or – if you are in possession of a qualified signature card – electronically via DPMAdirektPro indicating the file number.

If the relevant file numbers are indicated and the required documents enclosed, the details of the transfer of ownership can usually be recorded in the register within a few days.

Customers keep asking whether their fax has actually arrived at the DPMA because they have received a cancellation or error message.

Please note that the DPMA receives up to 10,000 faxed pages per day. Assigning the numerous fax pages to individual business processes (new IP applications or follow-ups to existing files, intended use of SEPA direct debit mandates, other letters) takes some time. Therefore, neither the Customer Care and Services nor the Document Receiving Service staff can confirm receipt of the fax shortly after it having been sent.

It is important that you clearly indicate on the fax how many pages it contains in total. In the case of follow-ups to individual IP acts, also especially in the case of changes of address, you should always state the respective file number(s).

If your fax does not pass (abort or error message), this could be because your telephone provider has switched its own technology to "Voice over IP" (VoIP). In this case, you will have to configure your fax machine differently. The recommendations of the Bundesnetzagentur (Federal Network Agency for Electricity, Gas, Telecommunications, Post and Railway) are as follows:

• Use a "Group 3" fax
• Limit the transmission speed to 9,600 bps.
  • Attention, the transmission will take correspondingly longer! If necessary, start the fax transmission at a time outside of the usual peak times.
• Turn on the fax error correction mode (ECM).
• Use the shortest possible cable between the fax machine and the telephone system or avoid proximity to sources of interference (e.g. power cables).

Make sure that the fax transmission is carried out with the G.711 voice codec.

• compressing or HD codecs (G.729, Opus, G.722) lead to errors in the transmission due to distortion of the signal.
• T.38 is not yet supported by the DPMA's PBX. Please make sure that your T.38 fallback works or deactivate T.38 as a test if necessary.
• If many or all transmissions continue to abort, please test the following additional changes:
  • Turn off the Error Correction Mode (ECM) of your fax machine.
  • Change the setting of the port of your telephone system to which the fax machine is connected from "Fax" to "Telephone".
• In addition, switching off settings of your telephone system (voice activity detection – VAD, echo suppression) can also increase the probability of a successful fax transmission.

If you have set up your fax machine in this way, your fax should reach the DPMA. Please understand that the DPMA cannot support you in configuring your telephone system, fax machine or alternative fax solutions. The existing problems are caused by the technology of the telephone networks/transmission networks. Therefore, the DPMA cannot guarantee a successful transmission. It might also be advisable to contact your telephone network provider.

Alternatively, letters can be sent to the DPMA by post (German Patent and Trade Mark Office, 80297 Munich) or electronically (with DPMAdirektPro or DPMAdirektWeb). You may also hand in your letters personally at the DPMA in Munich, Jena or Berlin or drop them in the night mailbox (see Contact). New applications can currently also be filed at nine patent information centres (Stuttgart, Hamburg, Aachen, Dortmund, Kaiserslautern, Saarbrücken, Chemnitz, Dresden, Ilmenau).

Please note: Do not send us applications, requests and other submissions to the files by e-mail. Since this means of transmission is not permitted for legal proceedings, these e-mails are not forwarded for processing.

No, it does not. According to the Ordinance on the Issuing of the Certificate under Article 3 of the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (in German), the DPMA issues apostilles only for documents emanating from its own area of responsibility. For example, priority documents of IP applications, German first publications of patent applications (Offenlegungsschriften), patent specifications or register extracts from DPMAregister are authenticated upon an extra written request.

For all other federal documents, i.e. those from a federal court or from the other federal authorities, the Federal Office of Administration issues authentications.

Civil status documents or documents of the Länder and regional courts fall, depending on the case, within the remit of the respective local authorities and authorities of the Länder or regional courts.
Abroad, the authenticity of German documents is often only recognised if they have been legalised by the competent representative entity (consulate, embassy) of the concerned foreign state in the Federal Republic of Germany or if they are provided with an apostille in accordance with the Hague Convention of 5 October 1961.

The Federal Foreign Office also offers information on the keyword “International Recognition / Legalization of Documents”.

Our Customer Care and Services frequently receives calls about misleading requests for payment in connection with patents, utility models, trade marks and designs. This often involves invoices sent by companies or individuals with official-sounding names.
Owners of IP rights are offered to have their patent, utility model, trade mark or design registered in non-official registers or publications. Furthermore, these letters are accompanied by requests for payment of large amounts, often with very short payment deadlines.
Please read these offers carefully. They do not relate to registration fees or renewal fees of the DPMA. Official fees arising in connection with an IP right in procedures before the German Patent and Trade Mark Office must be paid exclusively to the account of the DPMA. Further information and a list of companies known to the DPMA are available here.

Pursuant to Section 5(2) of the German Act on Copyright and Related Rights (Urheberrechtsgesetz, UrhgG), patent documents (first publications of applications, patent specifications and utility model specifications) are excluded from copyright protection from the time of their official publication. Please note that you must cite the source correctly when you publish the paper. The obligation to cite the source comprises the name of the authority and the reference. Examples of a correct citation of a patent document:

• DE 27 03 353 A1 or
• DE 10 2005 051 128 B4.

For further examples on how to cite, please see our publication DPMAinformativ no. 3 (IPIA) (in German). You are not allowed to alter the text, the title, the drawings and the name of the patent applicant (see Sec. 62(1), first and second sentences, in conjunction with Sec. 39 Copyright Act: prohibition of alteration, and Sec. 63(1) and (2) Copyright Act: acknowledgement of source).

We are often faced with the question of whether it is possible to protect a food recipe or formulation. As a rule, you cannot apply for a patent or utility model for formulations consisting of standard basic ingredients or mixtures of known basic ingredients.

A patent is granted for a technical invention only if it involves an inventive step and is new and industrially applicable. This also applies to filing applications for recipes.

An application for a patent or utility model in the field of food and recipes is therefore only possible if:

• the preparation of a dish or a drink goes beyond the normal cooking practices. This is the case, for example, if you use unusual process steps. In addition, you must achieve a special effect that cannot be readily expected (for example, a particularly extended shelf life).
• unusual basic ingredients or unusual mixtures of basic ingredients (including spices) are used to achieve an unforeseen effect.

In addition, the composition or the preparation method must be described in such a way that a chef or hobby chef can easily prepare the dish. And this description must be made available to the public by the DPMA. Of course, these patents and utility models also have a limited life. This means that, afterwards, the recipe can be used by anyone. Many food and beverage producers therefore keep their formulations secret and only protect the name or logo under which they offer the product (for example Coca-Cola, Red Bull, Maggi, Underberg) by a trade mark.

The question of whether an app is patentable cannot be answered with a clear "yes" or "no". Here too, the same applies as to protecting computer-implemented inventions: It depends ...

In general, the German Patent Act (Patentgesetz) excludes schemes, rules and methods for performing mental acts, playing games or doing business from patent protection. This also applies to programs for computers as such. Thus the idea and the concept for an app are not eligible for protection. However, if the app software has a technical character, patent protection for a computer-implemented invention may be a possibility. However, the app should be capable of showing an outwardly perceptible success, for example through the control of a robot. This is unlikely to be the case for most apps.

By using the International Patent Classification in our DEPATISnet database, particularly the IPC symbol G06Q and its related subgroups a.o. (data processing systems or methods, specially adapted for administrative, commercial, financial or managerial purposes ...) you can perform a search for examples of apps having a technical aspect for which a patent or utility model has been applied for as a computer-implemented invention.

You can have the name of the app registered as a trade mark but also the icon identifying the app that is used to open the app on the smartphone screen or the slogan that you use to advertise your app (of course only if the trade mark is eligible for protection).

Some app developers have had the layout of the screen interfaces registered as a design in class of goods 14-04 with the product indication a.o. "Screen displays", "Graphical user interfaces" [computer screen layout] or/and "Icons" [for computer].

You can obtain only very limited protection for board games and entertainment games at the German Patent and Trade Mark Office. If the game only consists of new rules or a new division of the game board, it is not patentable. Because an idea for a game does not constitute a technical innovation. Ideas are not eligible for protection under patent law. This applies to business and organisational ideas and plans (sales systems, advertising ideas, etc.) as well as to scientific theories, mathematical methods, game systems and rules for performing mental acts.

If the entertainment game includes play equipment or the game includes a new technical invention, it is possible to apply for a patent and/or utility model. In our DEPATISnet database you will find card games, board games, roulette games; indoor games using small moving playing bodies; video games; games in class A63F.

If you want to mark the game with a special name (e.g. "Memory" or "Catan"), filing an application for a trade mark is an option. However, trade mark protection only covers the name of the game, not the design of the game equipment nor the version of the rules of the game.

You can apply for a design for the outer shape of the playing tokens, the surface of the game board or the pictures of playing cards. In DPMAregister you can find registered designs with these product designations: board games, card games, playing cards, game boards, learning games, tokens for games. Subclass 21-01 can be used to search for the class of goods (Locarno).

The game may also be protected by copyright. Copyright arises with the creation of the work; an application is neither required nor possible. The German Patent and Trade Mark Office is not responsible for these copyright issues. Please consult a lawyer for legal advice on this matter.

The German Games Archive Nuremberg and the Deutsches Spielemuseum e.V. (German Games Museum) in Chemnitz provide information about games. There you will also find further links to associations of game creators and game archives.

The abbreviation "D.R.G.M." or "DRGM" means utility model of the German Reich (Deutsches Reichsgebrauchsmuster) and refers to utility models applied for between 1891 and 1945. Utility model documents (description, claims, any drawings) up to registration number 1 286 499 are not available and therefore not searchable via DEPATISnet. They were destroyed as required by the statutory provisions applicable at that time. Only since 1936, after a legal reform, has the examination of patents for novelty referred to utility models as state of the art.

As a result of the war, the documents for registration numbers from 1 534 500 to 1 539 210 (last entry in the register on 16 January 1945) are not available either.

As regards registration numbers from 1 to 1 286 499 and from 1 534 500 to 1 539 210, the customer service of the DPMA – IDZ Berlin can provide excerpts from the utility model register of the former Reichspatentamt (Patent Office of the German Reich), maintained by the German Patent and Trade Mark Office, for a fee of 10.00 euros plus expenses (per excerpt). An excerpt from this register contains the following information:

• Serial number - class - description - name and address of the applicant - date of application - date of registration - file number - note of cancellation - comments.

Alternatively, the excerpt can also be sent electronically as a JPEG file (2 pages). This type of excerpt reproduces the original entry – partially handwritten in Sütterlin script.

A list of tools to search for historical IP rights can be found at here.