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The Law for Simplifying and Modernising the Patent Law (Patent Law Modernization Law – BGBl I p. 2521) entered into force on October 1, 2009. The Law brings with it changes in the patent and trademark procedures and in the law to employee’s inventions, the most relevant of which shall be briefly stated in the following:

Patent Invalidation Procedure

According to the changes in the patent invalidation procedure the German Federal Patent Court (BPatG) can give, at an early time, qualified hints to the parties to file additional statements. Thereby the German Supreme Court (BGH) shall be relieved from the fact finding to accelerate the invalidation appeal procedure. In the future the BGH, in the appeal procedure, shall only inspect the correct application of the law.

Accordingly, in the appeal procedure at the BGH a defense with amended claims will only be admissible if the opponent agrees or if the BGH considers the amendments to be pertinent and the amendments are supported by facts which would form the basis of the BGH's decision anyhow.

Filing Fees for Patents

The filing fee for electronically filed patent applications is reduced from 50 € to 40 €. The fee for patent applications in paper still is 60 €. If a patent application contains more than 10 claims, the filing fee increases for each further claim by 20 €  for electronic applications and by 30 € for applications in paper.

It is to be noted with respect to the additional filing fees for an application containing more than 10 claims that the application is deemed to be withdrawn if the additional fees are not paid (in contrast to European applications for which the non-payment of claim fees is deemed as an abandonment of the additional patent claims).

Trademark Law

Against decisions of the German Patent and Trademark Office which have been issued by a public official in the upper grade of the civil service or an employee of comparable rank, as legal remedy alternatively the commemoration or (new!) the appeal to the German Federal Patent Court is admissible.

Within the opposition procedure in the future also marking rights obtained through use (use marks and business names) as well as the enhanced protection of trademarks well-known in Germany can be asserted. Such extension of the opposition grounds is valid only for oppositions against trademark registrations with a filing date after October 1, 2009.

Law to Employee’s Inventions

The reformation of the law to employee’s inventions causes a simplification for the employer when claiming an invention: no explicit claim of an employee’s invention is necessary anymore to obtain the rights to the invention. Rather, an employee’s invention is deemed to be claimed if the employer does not, within four month after receiving a proper invention disclosure, releases the invention. In this respect the possibility for the employer to claim an employee's invention only in a limited fashion has been abolished.

In addition, in the future declarations by the employee and the employer must only comply with the text form (and no longer must be in writing including a signature, as it was the case so far).

The regulations of the amended law to employee’s inventions apply to inventions which are disclosed by invention disclosure after October 1, 2009. For inventions that have been disclosed before still the old law applies, meaning that for example such inventions must be claimed in writing by the employer.