A number of changes will come into effect on 1 April 2014 which may benefit Australian entities with IP interests in Germany (DE). Where patenting strategy is concerned, some of the more relevant changes and implications are summarised below:
- The period for opposing a granted DE-patent, which was 3 months, is now harmonised with the 9-month period applicable to European (EP) patents. This allows opponents more time to prepare and submit a properly reasoned opposition brief. The new time line applies to all patent applications filed on or after 1 January 2014.
- The time limit to submit a DE translation of an English language specification used in filing a national DE patent application has been extended to 12 months from the filing date, or 15 months from the earliest applicable and claimed priority date. No more rushed and last minute translation jobs!
- A preliminary patentability opinion can now be requested and will be provided to the patent applicant together with the prior art search report. Where the search request is made at filing of a patent application which itself does not claim priority, the opinion will be sent to the applicant with sufficient time to allow determination of patentability prospects before expiry of the 12 month priority deadline.
- Where the initial DE patent application was filed in the English language, it will be left to the discretion of the search examiner at the German Patent Office (DPMA) as to whether to request submission of the required DE translation ahead of the deadline mentioned at (ii) prior to preparing and issuing the opinion. This measure is squarely aimed competing against the EPO and/or other International Searching Authorities under the PCT. It allows astute applicants, who simultaneously file an initial patent application at EPO, DPMA and a PCT application, to obtain independently performed, preliminary patentability assessments by EPO, ISA and DPMA at an earlier stage in the patenting process, prior to nationalisation of the PCT application when substantial patent specification translation costs may follow.
- The DPMA has now made available an electronic patent file inspection facility. It is not known when this will be implemented for trade marks and designs, but this will certainly reduce costs, as it removes the need to request file inspection.