Dipl.-Ing. Josef Bockhorni
The revision of the German Patent Act significantly strengthens competitiveness of the German Patent and Trademark Office (GPTO) compared with the European Patent Office (EPO). This is mainly due to the fact that now, a substantiated search report is issued by the GPTO within the priority year also for application documents in English or French language, too. This search report is formulated like an official action and thus offers a well-priced and early basis for a decision for subsequent applications within the priority year.
The revised law thereby unambiguously targets the broad scepticism among experts towards the EU unitary patent court and the community patent with unitary effect. With this revision, the GPTO hopes that the number of first applications increases significantly and that the EPO can possibly be overhauled.
The reason for that might be the following changes:
The search by the GPTO was adapted to international search standards, i.e. the content of the search report was extended significantly. This corresponds essentially with the previous first office action and can therefore be compared with the extended search report in the EP and PCT procedure, which is generated by the European Patent Office and also contains a meaningful office action besides the search result.
That means that the German search report now also comments on novelty and inventive step, sufficient disclosure and unity of the invention in detail. In case the examiner detects lack of unity of the claims, only the first-mentioned invention is searched and assessed.
Despite this extensive search report, the application fee is € 300 and thus far below the search fee of the European Patent Office, which is currently € 1,165.00.
In case of foreign language patent applications, the substantiated search report is also issued, albeit in German language. The costs for a translation into the English or French language, however, should be below the fee for the search report by the EPO.
This is particularly convincing considering the amended translation arrangements, as in the event of a patent application being filed in English or French, the translation must only be filed within a deadline of 12 months from the application date, in case a first application is concerned. When a priority is claimed, the translation must be filed within 15 months from the priority date.
Thus, the GPTO will base the search on the foreign language application documents provided that the application is filed in an official language of the EPO.
If the search request is filed early, in particular along with the filing of the application or up to 3 months after application date of the first application, the GPTO will issue the substantiated search report within the priority year.
With the change of the translation regulations and the issuance of a substantiated search report, the German application procedure has become very attractive compared with the application procedure of the EPO, in particular for first applicants. Due to the fact that a substantiated search report is also issued for applications in the English or French language, companies from outside Germany might also use this offer as thereby, an extensive, first search report is issued comparably quick and inexpensive and a reliable evaluation regarding legal validity of the application and hence a sufficient basis for making a decision regarding subsequent applications is created. The difference in the search fee between the GPTO and the EPO of at least €915 creates another incentive. Even if the substantiated search report is only available in German language and has to be translated into English or French, the translation costs will probably not amount to more than €200, so that overall, the way via the GPTO definitely pays off in case of a first application in German, English or French.
The revised law creates good conditions for the GPTO to catch up or to even overtake the EPO with regard to the number of first applications. Here, it has to be observed that in 2012, 57,000 national patent applications as first applications where received by the GPTO compared with 64,000 direct EP first applications in the same period of time received by the EPO.
With the announcement of the revised law, there will furthermore be the possibility to an inspection into the electronically maintained files concerning patent applications via the internet. Since June 2011, the GPTO has managed its files completely electronically so that principally, the files should be accessible via the internet, something that has already been possible with the files of the European Patent Office for quite some time now.
A further essential amendment of the revised law is that the term for filing an opposition is extended from currently three months to nine months, which is also the case at the EPO. The extension of the term for filing an opposition is also valid for the current opposition periods when the revised law comes into effect.
In former Updates, we already pointed out the advantages of a German patent application compared with a European patent application. With this revised law, the current scepticism towards the European unitary patent might further increase the trend towards a national German patent application.
Author: Dipl.-Ing. Josef Bockhorni (Patent Attorney), Update 2/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
