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Legislative Implementation of Flexibilities - Germany

Title:Sections 42, 43 and 44 of the Patent Act of 16/12/1980 as last amended by Act of 31/07/2009
Field of IP:Patents
Type of flexibility:Substantive examination
Summary table:PDF

Provisions of Law

Section 42

(1) Should an application obviously not comply with the requirements of Sections 34, 36, 37 and 38, the Examining Section shall request the applicant to remedy the defects within a specified period. If an application does not comply with the provisions on form or other requirements for applications (Section 34(6)), the Examining Section may refrain from objecting to the defects until the start of the examination procedure (Section 44).

(2) Should the subject matter of an application obviously

1. not, by reason of its nature, constitute an invention;

2. not be susceptible of industrial application;

3. be excluded from grant as a patent under Section 2 or

4. not be directed, in the case of the second sentence of Section 16(1), towards an improvement or further development of another invention,

the Examining Section shall notify the applicant thereof, stating its reasons, and shall invite the applicant to submit observations within a specified period. The same shall apply if, in the case of the second sentence of Section 16(1), the application for a patent of addition has not been filed within the specified period.

(3) The Examining Section shall reject an application if the defects objected to in subsection (1) are not remedied or if the application is maintained although the invention is obviously not patentable (subsection (2), nos. 1 to 3) or if the requirements of the second sentence of Section 16(1) are obviously not met (subsection (2), first sentence, no. 4, second sentence). If rejection is to be based on facts that have not yet been communicated to the applicant, said applicant shall first be given an opportunity to submit observations thereon within a specified period.

Section 43

(1) The Patent Office shall, upon request, ascertain those publications available to the public to be taken into consideration when assessing the patentability of the invention for which an application has been filed (search). When the search for such publications has been transferred, in part or entirely, to an international institution (subsection (8), no. 1) for all or for certain technical fields, a request may be submitted that the search be conducted in such a way that the applicant can use the result of the search also for a European application.

(2) The request may be filed by the patent applicant, or by a third party who shall not thereby become a participant in the procedure. The request must be filed in writing. Section 25 shall be applied mutatis mutandis. If the request is filed in connection with an application for a patent of addition (Section 16(1), second sentence), the Patent Office shall invite the applicant to file a request as specified in subsection (1) before expiration of one month after the invitation in connection with the application for the main patent; if no request is filed, the application for the patent of addition shall be regarded as an application for an independent patent.

(3) The filing of the request shall be published in the Patent Gazette [Patentblatt], but not before publication of the notification pursuant to Section 32(5). If the request is filed by a third party, the applicant shall also be notified of the filing of the request. Any person shall be entitled to inform the Patent Office of publications which might prejudice the grant of a patent.

(4) The request shall be deemed not to have been filed if a request pursuant to Section 44 had already been filed. In such a case, the Patent Office shall notify the person making the request of the date of filing of the request pursuant to Section 44. The fee as prescribed by the Patent Cost Act paid for the search pursuant to Section 43 shall be refunded.

(5) When a request pursuant to subsection (1) has been filed, subsequent requests shall be deemed not to have been filed. The second and third sentences of subsection (4) shall apply mutatis mutandis.

(6) Where a request filed by a third party is found to be without effect after notification of the applicant (subsection (3), second sentence), the Patent Office shall also advise the applicant thereof in addition to said third party.

(7) The Patent Office shall notify the applicant regarding the publications ascertained in accordance with subsection (1) and, if the request has been filed by third party, said third party and the applicant, without a guarantee as to completeness, and shall publish in the Patent Gazette [Patentblatt] the fact that such notification has been made. If the publications have been ascertained by an international institution and if the applicant has so requested (subsection (1), second sentence), this shall be stated in the notification.

(8) To accelerate the patent granting procedure, the Federal Minister of Justice shall be empowered to direct by statutory order that

1. the search for the publications specified in subsection (1) be assigned to a division of the Patent Office other than the Examining Section (Section 27(1)) or to another national or international institution, either as a whole or for certain technical fields or certain languages, provided that the institution concerned appears competent to search for publications to be taken into consideration;

2. the Patent Office shall provide foreign or international authorities with data from the files of patent applications for reciprocal information on the results of examination procedures and searches of the state of the art when the applications concerned relate to inventions for which the grant of a patent has also been applied to such foreign or international authorities;

3. the examination of patent applications according to Section 42 and the supervision of fees and time limits shall be transferred in whole or in part to divisions of the Patent Office other than the Examining Sections or Patent Divisions (Section 27(1)).

Section 44

(1) The Patent Office shall examine on request whether an application complies with the requirements of Sections 34, 37 and 38 and whether the subject matter of said application is patentable under Sections 1 to 5.

(2) The request may be filed by the applicant, or by any third party who will not by this become a participant in the examination procedure, prior to the expiration of seven years after the filing of the application. The deadline for payment of the examination fee, as prescribed by the Patent Cost Act, shall be three months after the due date (Sec 3(1) Patent Cost Act). This deadline shall, however, end with expiry of the seven years following filing of the application.

(3) When a request pursuant to Section 43 has already been filed, the examination procedure shall begin only after disposal of the request pursuant to Section 43. In other respects, Section 43(2), second, third and forth sentences, and subsections (3), (5) and (6) shall apply mutatis mutandis. If a request filed by a third party is without effect, the applicant may file a request within a period of three months from service of the notification, provided that such period expires later than the period specified in subsection (2). If the applicant does not file a request, a notice shall be published in the Patent Gazette [Patentblatt] referring to the publication of the request filed by the third party and stating that this request is without effect.

(4) The examination procedure shall be continued even if the request for examination is withdrawn. In the case given in the third sentence of subsection (3), the procedure shall be continued from the point which it had reached at the time the applicant's request for examination was filed.

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