Dipl. Biotechnol. Vanessa Bockhorni
The patent amendment act, which was expected to enter into force on 1st March 2013 (1st January 2013 was previously planned), brings along some changes for the practice which are supposed to facilitate the examination procedure and contribute to a debureaucratization at the GPTO. In the following, we may briefly summarize the basic changes which will enter into force six months after announcement, i.e. approximately in September/ October 2013:
I Opposition
It is pleasing that the term for filing an opposition will be extended from the current three months to nine months in order to be consistent with the European Patent Office. From the day of enforcement of the changes, the public can also take part in hearings during opposition procedures.
II Search
Besides naming of the relevant state of the art, the search report of the German Patent and Trademark Office will also provide a preliminary estimate of protectability which will be very helpful for the applicant when it comes to an evaluation of subsequent applications. Furthermore, non-unity of invention during the search procedure can be contested, too.
So far, a search request could always be applied for by a third party, too, which will from then on no longer be possible. This tool is abolished because of the fact that it was hardly used. However, this change only concerns the search request but not the examination request, which can still be filed by a third party in order to bring forward the examination of the patent application with regard to legal validity.
III Translation
Furthermore, a new regulation with regard to foreign-language applications is created which will mitigate the current legal consequences in case of a delayed submission of the translation. Before the German Patent and Trademark Office, a patent application can be filed in every language of the United Nations, a translation into German has to be filed subsequently within three months. This regulation will remain effective, however, the legal consequences with regard to a delayed submission of the translation change, and this will be advantageous for the applicant. According to that, the application is not deemed to be “not granted” but to be “withdrawn”, which is why the priority is preserved and subsequent applications can be filed with the possibility to claim the original application date.
Furthermore, there is an extension of term for translations of French or English applications. Here, a German translation does not have to be filed within three months at the GPTO but only after a generous term of 12 months. This bears the advantage that before the expiration of these 12 months, a search report is submitted and then, the decision can be made whether to file a subsequent application or not.
IV Naming of inventors
The new principle will be positive for employee inventors that without the naming of inventors, no patent is granted. A naming of an inventor after the grant of a patent is thus no longer possible as the deadline for naming the inventor can no longer be extended beyond the point in time of grant of a patent. This is supposed to further strengthen the inventor’s personal rights.
V Claim fees
It is now also legally regulated that the claim fees with an international application entering the national phase have to be paid in the same amount as the claim fees in the procedure before the international bureau, i.e. with a multiplication of the original number of claims of the international application, higher fees have to be paid in the national procedure in accordance with the multiplication of the claims.
Author: Dipl. Biotechnol. Vanessa Bockhorni (Patent Attorney), Update 1/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
