On May 28, 2009, the Bundestag approved the Federal Government’s draft Act on the Simplification and Modernization of the Patent Law. The Modernizing Act focuses on the acceleration of patent revocation proceedings. Moreover, the Act provides for the simplification of proceedings with regard to employees’ inventions.
Currently, the duration of revocation proceedings is very slow, which is mainly attributable to the duration of appeal proceedings at the Federal Supreme Court (currently often exceeding four years).
Because in patent infringement proceedings the defendant cannot merely change the validity of the patent in suit, the defendant often has no other choice than to file nullity action against the patent in suit. If, in the opinion of the infringement court, there is a high likelihood that the patent is deemed invalid and will therefore hardly survive the nullity proceeding, it will suspend the infringement proceedings until the Federal Patent Court or the Federal Supreme Court has decided the validity. Considering the current duration of the proceedings for annulment, it may well be that the patent revocation proceedings will remain suspended by more than six years.
The Patent Right Modernization Act is aimed at reducing the duration of actions for annulment of patents. In the future, the Federal Patent Court, acting as court of first instance in an action of nullity, shall draw the attention of the parties to questions that are material for the decision of the court, and that have not yet been addressed sufficiently in the parties in their written statements. In this manner, the parties will be able to focus on those details that are of particular importance in the opinion of the court. At the same time, the Federal Patent Court shall have the possibility to impose binding deadlines. The parties will therefore be required to present all facts of the case long before the date of the oral hearing.
In order to speed up the appeal proceedings before the Federal Court of Justice, the appeal proceedings now permitting the hearing of evidence shall in the future be limited to the review of legal mistakes. Legal expert witnesses who are currently used by the Federal Court of Justice – other than the Federal Patent Court that is manned with technical judges – will be used in the future only in exceptional cases in appeal proceedings. This too shall contribute to reduce the average duration of appeal proceedings by one-half.
Another important change refers to the issue of employee inventions. Under the current law, the claiming of an employee invention is a strictly formalistic procedure, which is likely to result in errors. Procedural errors may have the detrimental effect that an invention of possibly great importance to the company may not be claimed and registered on behalf of the company without further ado. In this context, a fictitious claiming of the invention shall be introduced to avoid mistakes. The employee invention shall automatically pass over to the employer four months after the reporting of it, provided it is not released by the employer.