Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

Patentable inventions must be new and eligible for industrial application, and involve an inventive step. Under Sections 1 to 3 of the Patent Act, patents must have absolute novelty. For further details and utility models, see the “grace period” section below.

When determining novelty, only direct and unambiguous disclosure is relevant. However, this requirement is broadly interpreted when compared to the practice before the European Patent Office (EPO).

With respect to the inventive step, some similarities exist between German and EPO practice. However, the EPO problem-solution approach – although generally known by German patent law practitioners – is of considerably lower importance. The decisive question in Germany is often whether the prior art can provide any motivation or incentive to add further features to an already-known solution of the prior art.

There is no difference between the inventive steps of patents and utility models.

What are the limits on patentability?

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

  • discoveries, scientific theories and mathematical methods;
  • ecstatic 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.

To what extent can inventions covering software be patented?

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. 

To what extent can inventions covering business methods be patented?

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.

To what extent can inventions relating to stem cells be patented?

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.

Are there restrictions on any other kinds of invention?

Yes, 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 which concern:

  • processes for cloning humans;
  • processes for modifying the germ line genetic identity of humans;
  • 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 which 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.

Grace period

Does your jurisdiction have a grace period? If so, how does it work?

In principle, Germany does not provide a grace period for patents. However, pursuant to Section 3(5) of the Patent Act, the disclosure of an invention will not be taken into consideration if:

  • it occurred no earlier than six months before the filing of the application; and
  • it was due to or in consequence of:

o an evident abuse in relation to the applicant or its legal predecessor; or

o the fact that the applicant or its legal predecessor had displayed the invention at an official or officially recognised international exhibition (few international exhibitions fall under this exception).

However, a grace period does apply to utility models. Use of the invention or description published in the six months before the priority date is not deemed to be detrimental to novelty, provided that it is based on the applicant’s own work or that of its predecessor in title.

Oppositions

What types of patent opposition procedure are available in your jurisdiction?

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 request of a party or if the patent division deems this to be expedient.  

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Patents cannot be challenged before the civil courts, but rather through an opposition or a nullity case. Nullity actions are dealt with at the Federal Patent Court and can be lodged by any third party over the lifecycle of a patent.

The first phase of the proceedings is in writing, after which the Federal Patent Court will generally send a summons for an oral hearing with an unbinding first opinion on the case. The decision is made by five judges after the oral hearing. Appeals can be brought before the German Supreme Court.

If an opposition proceeding is already pending, a party which has received a cease and desist letter or against which a claim for patent infringement has been brought may intervene in the pending proceedings if the term for filing an opposition has expired. Such a party will be a full independent party of the opposition proceedings.

Further, the German patent procedure allows for third-party observations to be filed during examination of a patent. Third parties may bring forward any facts or arguments; however, they will not be an official party to the proceedings.

Cancellation actions against utility models can be brought before the German Patent and Trademark Office (GPTO). After a cancellation request has been submitted, the utility model owner will be notified and must oppose the cancellation request within one month. If it fails to do so, the utility model will be cancelled automatically. If the utility model owner opposes the cancellation request, a full cancellation procedure will commence.

How can patent office decisions be appealed in your jurisdiction?

Decisions in patent opposition proceedings can be appealed within one month of receipt of the decision. This term cannot be extended. The appeal must be filed with the GPTO and the prescribed appeal fee must be paid within the term for filing the appeal. A separate appeal fee is due for each appellant. An appeal reasoning, which is not mandatory but advisable, can be filed at a later date. Patents can be defended in appeal proceedings by filing main and auxiliary requests.

Oral proceedings take place:

  • upon request of the parties;
  • if evidence is taken before the Federal Patent Court; or
  • if the Federal Patent Court deems oral proceedings to be appropriate.

It is advisable to request oral proceedings. A decision is passed at the end of the oral proceedings and a written decision is issued at a later stage. Federal Patent Court decisions can be appealed to the Federal Court of Justice if an appeal is admitted in the decision. The due date for filing an appeal is one month after receipt of the Federal Patent Court decision. The filing of a reasoning is mandatory. If the appeal is not expressly admitted in the Federal Patent Court decision, an appeal to the Federal Court of Justice is allowed only under extraordinary circumstances (eg, a violation of the right to be heard).

The rejection of a patent application in examination proceedings can also be appealed. The procedure is similar to that for patent opposition proceedings. However, contrary to patent opposition proceedings, the GPTO can redress the appeal within one month if it is considered to be justified. Otherwise, the GPTO will forward the appeal to the Federal Patent Court.

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

According to the GPTO, patent application grants or rejections take an average of 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 the 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 – depend 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.