Wednesday, 16 May 2012

Proposal for Patent Law Reform in Gemany

Leutheusser-Scharrenberger looking forward to a bright new
future for the German patent law
The German Federal Government Cabinet has agreed to a proposal of the Minister of Justice Sabine Leutheusser-Schnarrenberger to reform the German patent law.

Key points include:
  • The prolongation of the opposition period from 3 months to 9 months.
  • The search report will include a written opinion similar to the European Search Opinion.
  •  Oral proceedings in the examination procedure will become mandatory if the applicant requests it (for the current situation, see here)
  • The prolongation of the delay for filing German translations of applications originally filed in English of French language from 3 months to 12 months from the filing date but not later than 15 months from the priority date. The examiner may invite the applicant to file the translation earlier in exceptional cases of particular complexity.
  • Applications for which the translation is not timely filed are no longer deemed to be not filed but deemed to be withdrawn. The consequence is that the priority may still be claimed.
According to the explanatory remarks of the proposal (page 27, 1st paragraph), the DPMA will carry out the search and issue the search opinion for applications filed in English or French even if the translations are not yet provided.

The new language regime and the new legal consequence of the missing translation opens the possibility for new and very interesting filing strategies. Applicants may file their first applications in English language and will obtain a preliminary opinion prior to the expiry of the due date for filing the translation into German and decide on the basis of this opinion on his further strategy. The (slightly increased) search fees of EUR 300 are a very competitive price for a reasoned opinion and if the applicant decides to file an EP application to be validated in Germany later on, the original German application may be dropped and no translation of the full specification into German will ever be necessary.

The proposal has yet to be ratified by the Bundestag and Bundesrat.

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