Scope and ownership of patents

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

General limits on patentability

According to section 1 of the Patent Act, the following are not regarded as inventions:

  • discoveries, scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules, methods for performing mental acts, playing games or doing business and computer programs; and
  • presentations of information.

 

However, this applies only where protection is sought for the subject matter or activities referred to as such.

Software

Under section 1(3) of the Patent Act, ‘programs for computers’ will not be regarded as inventions. However, this applies only to the extent that protection is sought for the subject matter as such.

Another restriction on software is the requirement under section 1(1) of the Patent Act that patents are granted to inventions or fields of technology, excluding any subject matter considered to be non-technological.

In practice, it is seldom difficult to establish novelty. However, when considering the inventive step, non-technical or software features are not usually considered.

Business methods

Under section 1(3) of the Patent Act, ‘methods for doing business’ will not be regarded as inventions. However, this applies only to the extent that protection is sought for the subject matter as such.

Another restriction on business methods is the requirement under section 1(1) of the Patent Act that patents are granted to inventions or fields of technology, excluding any subject matter considered to be non-technological.

Again, in practice, it is seldom difficult to establish novelty. However, when considering the inventive step, non-technical or business method features are not usually considered.

Stem cells

The patenting of stem cells is not prohibited; however, it is only possible if the stem cells can be obtained without the destruction of human embryos.

Other restrictions

The human body at all stages of its formation and development, including germ cells and the simple discovery of one of its elements (including the sequence or partial sequence of a gene) cannot constitute a patentable invention.

In addition, patents will not be granted for inventions that concern:

  • processes for cloning humans;
  • processes for modifying the germ line genetic identity of humans;
  • the use of human embryos for industrial or commercial purposes; or
  • processes for modifying the genetic identities of animals which are likely to cause them suffering without any substantial medical benefit to humans, animal or animals resulting from such processes.

 

Finally, patents will not be granted in respect of:

  • any plant or animal varieties;
  • essentially biological processes for the production of plants or animals;
  • methods for the treatment of human or animal bodies by surgery or therapy; or
  • diagnostic methods practised on human or animal bodies.

 

The latter provision does not apply to products, in particular substances or compositions, used in any of these methods.

However, patents can be granted for inventions that concern:

  • plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety; and
  • microbiological or other technical processes, or a product obtained by means of such a process, other than a plant or animal variety.

 

The Patent Act defines the following terms:

  • ‘Biological material’ – any material containing genetic information and capable of reproducing itself or being reproduced in a biological system.
  • ‘Microbiological process’ – any process involving, performed on or resulting in microbiological material.
  • ‘Essentially biological process’ – a process for the production of plants or animals consisting entirely of natural phenomena (eg, crossing or selection).
  • ‘Plant variety’ – a variety as defined under the EU Community Plant Variety Rights Regulation (2100/94), as amended.
Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

General

The owner of the patent is the original applicant or his or her successor in title. However, the right to a patent belongs to the inventor or his or her successor in title (section 6, Patent Act). If the inventor differs from the owner, the inventor may lodge a claim for assignment of the patent to him (section 8, Patent Act). If this is (eg, after a court’s decision) successful, the inventor becomes the new owner.

 

Company employees

The German Employee Inventions Act (GEIA) distinguishes between ‘service inventions’ and ‘free inventions’ (section 4, GEIA). Service inventions result from the obligatory duties of the employee, or are decisively based on know-how or resources of the employer. All other inventions are free inventions that are at the free disposal of the employee, with the only exception that the employee must offer to the employer a non-exclusive licence under reasonable conditions if the invention falls within the range of the employer’s actual or planned activities.

The right to service inventions transfers ‘automatically’ to the employer if:

  • the employer communicates an explicit claim in writing to the employee before the end of a four-month period from the employee’s invention report; or
  • the employer remains silent within the four-month period (this is understood as an implicit claim to the invention).

 

The employer may also actively release the claim to the invention within the four-month period. If not, the employer becomes automatically the owner of the invention with a bundle of (potentially costly) duties such as the duty to file a patent application.

 

Independent contractors

The right to the patent is freely negotiable, either before the invention is made or afterwards. Care must be taken not only as to whether any explicit agreement in the contract may have the consequence of a transferal of the right to the patent but that also whether the circumstances and the ‘nature’ of the contract (and the invention made) may have the consequence that a German court would assume an implicit assignment.

 

Multiple inventors or joint ventures

If two or more persons have jointly made an invention, the right to the patent shall belong to them jointly. If two or more persons have made the invention independently of each other, the right shall belong to the person who is the first to file the application in respect of the invention with the German Patent and Trade Mark Office (section 6, German Patent Act). For joint ventures, the same applies in principle, subject to any potentially differing contractual agreement.

 

Recording and transferring patent ownership

The ownership is recorded in the Register of the German Patent and Trade Mark Office. The German Patent and Trade Mark Office records in the Register a change in the person, name or place of residence of the applicant or proprietor of the patent if proof thereof is furnished to the German Patent and Trade Mark Office. Until the change has been entered, the (former) applicant or proprietor of the patent remains subject to the rights and obligations of the German Patent Act (section 30, German Patent Act).

The Register has only a declaratory effect. If the Register is not in agreement with the ‘real’ situation (eg, because a contractual transferal of the patent has not been recorded yet), the incorrectly recorded owner is not entitled to raise a claim based on the patent at issue.

Patent office proceedings

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

According to the German Patent and Trademark Office (GPTO), the grant or rejection of a patent application takes on average two-and-a-half years, provided that a request for examination was filed at the time of the application. A first-office action containing comments on patentability is usually issued within nine months of the filing date if the application was first filed in Germany.

The total costs – from the filing of the patent application to the grant of the patent by the GPTO – depends on:

  • the complexity of the application;
  • the number of prior art documents cited by the GPTO; and
  • the length of the examination proceedings.

 

On average, the total costs (including official and attorney fees) vary between €4,000 and €6,000, excluding the drafting of the application.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Request for acceleration

According to the Examination Guidelines of the German Patent and Trademark Office (GPTO), No. 2.3.2, accelerated proceedings may be expected ‘upon a justified request for acceleration’. In such a case, the GPTO pursues the application as a matter of priority ‘if the otherwise expected duration of the procedure would lead to considerable disadvantages for the applicant’. Applications for acceleration are in principle only valid for the next procedural step; however, the further procedure will be accelerated if the request for acceleration indicates so.

 

Global Patent Prosecution Highway

An acceleration request under the Global Patent Prosecution Highway (GPPH) is possible. This is a fast-track way to apply for and have your invention examined internationally. Participation in the GPPH at the GPTO is free of charge.

The prerequisite for participating is that you have already filed, at a GPPH partner office, a patent application with the same content and the same filing date or priority date. Furthermore, the office of first filing must have considered the invention to be patentable – at least for one patent claim. This means, for example, that you must have received a patent or a positive Patent Cooperation Treaty search report.

 

Other measures

Requesting examination and paying the examination fee upfront accelerates the proceedings. The examination request may be postponed for a maximum of seven years. Filing informal letters to the examiner or contacting the examiner by telephone is helpful, at least inasmuch one usually obtains information as to when a further office action may be expected.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (section 34, German Patent Act). An invention is, in principle, sufficiently disclosed if at least one way is clearly indicated enabling the person skilled in the art to carry out the invention. Second, it is necessary that the skilled person can put the invention into practice over the whole scope of the claim. Hence, one example only may not be sufficient, in particular for chemical or pharmaceutical inventions. The general approach of the GPTO, however, is not overly strict, in this regard.

Clear and plausible information on the effects of the features of the claimed invention is often very helpful for inventive step discussions with the examiner. This is also important (and very often missing) for features of the dependent claims or features from the description, when incorporated in the independent claim in a fallback situation.

Also – even if the GPTO is far less strict than the European Patent Office in this regard – care should be taken regarding the disclosure of any feature of the invention that may serve as a fallback position during prosecution. Even if certain generalisations are often accepted as being implicitly disclosed, it may be detrimental if they are not explicitly disclosed. 

Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

No.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

As long as the patent application is pending, a divisional application may be filed (with different and/or additional claims). The patent application is considered to be pending up to:

  • withdrawal of the application; or
  • a final decision (either grant or refusal) plus one month (which is the deadline for filing an appeal; it is not necessary to actually file an appeal).

 

Moreover, within the first 10 years, a utility model application may be branched off (with different and/or additional claims).

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Yes, appeals against decisions of the GPTO (typically in examination, opposition or restoration proceedings) are handled by the Federal Patent Court in Munich. Under certain circumstances, a further appeal (revision) can be brought to the German Supreme Court.

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

In Germany, the opposition process occurs after grant of the patent. A third party may file an opposition within nine months of the publication of a grant. The opposition may be based on one or more of the following grounds:

  • lack of novelty or inventive step;
  • the subject matter is not patentable in another respect;
  • the patent does not disclose the invention in a sufficiently concise and complete way to enable a person skilled in the art to carry it out in practice;
  • essential elements of the patent were taken without consent from a third party; or
  • the subject matter extends beyond the content of the patent application as originally filed.

 

The grounds for opposition must be substantiated within the nine-month opposition period. Oppositions are handled before the competent ‘patent division’ consisting of a panel of three examiners deciding on the case. A hearing will take place on the request of a party or if the patent division deems this to be expedient.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

If two or more persons have made the invention independently of each other, the right shall belong to the person who is the first to file the application in respect of the invention with the GPTO, (section 6, German Patent Act).

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

At the request of the proprietor of the patent, the patent may be revoked or limited with retroactive effect by amending the patent claims. The patent office may not refuse a limitation request because the limited claims do not define a patentable invention (eg, vis-à-vis prior art cited by the patentee). By law (section 22 of the German Patent Act), the scope of protection may not be extended. According to case law, the scope of protection must be reduced so that a mere change of the wording is not allowable.

The patent may not be amended in an infringement procedure before the infringement court. However, before the infringement court, it is generally possible to enforce the patent in a limited version. Inter omnes, the patent may be amended by the Federal Patent Court in a nullity action (being separate from the infringement proceedings).

Patent duration

How is the duration of patent protection determined?

The maximum term of protection is 20 years from the filing date.

Law stated date

Correct on

Give the date on which the information above is accurate.

9 March 2021.