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GERMANY
Patent Act
as amended by the Act on Improvement of Enforcement of Intellectual
Property Rights of 31 July 2009
TABLE OF CONTENTS
Part 1 The Patent
Section 1
Section 1a
Section 2
Section 2a
Section 3
Section 4
Section 5
Section 6
Section 7
Section 8
Section 9
Section 9a
Section 9b
Section 9c
Section 10
Section 11
Section 12
Section 13
Section 14
Section 15
Section 16
Section 16a
Section 17
Sections 18 and 19 (void)
Section 20
Section 21
Section 22
Section 23
Section 24
Section 25
Part 2 The Patent Office
Section 26
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Section 27
Section 28
Section 29
Section 30
Section 31
Section 32
Section 33
Part 3 Proceedings before the Patent Office
Section 34
Section 34a
Section 35
Section 36
Section 37
Section 38
Section 39
Section 40
Section 41
Section 42
Section 43
Section 44
Section 45
Section 46
Section 47
Section 48
Section 49
Section 49a
Section 50
Section 51
Section 52
Section 53
Section 54
Section 55
Section 56
Section 57 (void)
Section 58
Section 59
Section 60 (void)
Section 61
Section 62
Section 63
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Section 64
Part 4 The Patent Court
Section 65
Section 66
Section 67
Section 68
Section 69
Section 70
Section 71
Section 72
Part 5 Proceedings before the Patent Court
1. Appeal [Beschwerde] Proceedings
Section 73
Section 74
Section 75
Section 76
Section 77
Section 78
Section 79
Section 80
2. Nullity and Compulsory License Proceedings
Section 81
Section 82
Section 83
Section 84
Section 85
Section 85a
3. Common Procedural Provisions
Section 86
Section 87
Section 88
Section 89
Section 90
Section 91
Section 92
Section 93
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Section 94
Section 95
Section 96
Section 97
Section 98 (void)
Section 99
Part 6 Proceedings before the Federal Court of Justice
1. Procedures regarding Appeals on a Point of Law [against court
orders: Rechtsbeschwerde]
Section 100
Section 101
Section 102
Section 103
Section 104
Section 105
Section 106
Section 107
Section 108
Section 109
2. Procedures regarding Appeals [against judgments: Berufung]
Section 110
Section 111
Section 112
Section 113
Section 114
Section 115
Section 116
Section 117
Section 118
Section 119
Section 120
Section 121
3. Procedures regarding Specific Appeals [Beschwerde]
Section 122
4. Common Procedural Provisions
Section 122a
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Part 7 Common Provisions
Section 123
Section 123a
Section 124
Section 125
Section 125a
Section 126
Section 127
Section 128
Section 128a
Part 8 Legal Aid
Section 129
Section 130
Section 131
Section 132
Section 133
Section 134
Section 135
Section 136
Section 137
Section 138
Part 9 Infringements
Section 139
Section 140
Section 140a
Section 140b
Section 140c
Section 140d
Section 140e
Section 141
Section 141a
Section 142
Section 142a
Section 142b
Part 10 Patent Litigation Proceedings
Section 143
Section 144
Section 145
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Part 11 Allegation of Entitlement to a Patent [Patentberühmung]
Section 146
Part 12 Transitional Provisions
Section 147
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Part 1 The Patent
Section 1
(1) Patents shall be granted for inventions in any technical field
if they are novel, involve an inventive step and are susceptible of
industrial application.
(2) Patents shall be granted for inventions within the terms of
subsection (1) even if the subject matter concerns a product
consisting of or containing biological material or a process by
means of which biological material is produced, processed or used.
Biological material that has been isolated from its natural
environment or produced by means of a technical process may be the
subject matter of an invention even if it had previously occurred in
nature.
(3) In particular, the following shall not be regarded as inventions
within the terms of subsection (1):
1. discoveries, scientific theories and mathematical methods;
2. aesthetic creations;
3. schemes, rules and methods for performing mental acts, playing
games or doing business as well as programs for computers;
4. presentations of information.
(4) The provisions of subsection (3) shall constitute a bar to
patentability only when protection is sought for said subject
matters or activities as such.
Section 1a
(1) The human body at its various stages of 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.
(2) An element isolated from the human body or otherwise produced by
means of a technical process, including the sequence or partial
sequence of a gene, may constitute a patentable invention even if
the structure of that element is identical to that of a natural
element.
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(3) The industrial application of a sequence or a partial sequence
of a gene shall have to be specifically disclosed in the application
by indicating the function fulfilled by the sequence or partial
sequence.
(4) Where the subject matter of an invention is a sequence or a
partial sequence of a gene, the structure of which is identical to
the structure of a natural sequence or partial sequence of a human
gene, the use thereof, for which industrial application is
specifically described in subsection (3), shall have to be included
in the patent claim.
Section 2
(1) Patents shall not be granted for inventions if their commercial
exploitation is contrary to public order or morality; however, such
a contravention may not be deduced simply from the fact that the
exploitation is prohibited by law or administrative regulation.
(2) Patents shall especially not be granted for
1. processes for cloning human beings;
2. processes for modifying the genetic identity of the germ line of
human beings;
3. uses of human embryos for industrial or commercial purposes;
4. processes for modifying the genetic identity of animals, which
are likely to cause said animals suffering without any substantial
medical benefit to man or said animal, nor shall patents be granted
for animals resulting from such processes.
When applying nos. 1 through 3, the corresponding provisions of the
Embryo Protection Act [Embryonenschutzgesetz] shall be decisive.
Section 2a
(1) Patents shall not be granted for
1. plant or animal varieties or for essentially biological processes
for breeding plants or animals;
2. methods for the surgical or therapeutic treatment of the human or
animal body or for diagnostic methods used on the human or animal
body. This shall not apply to products, in particular substances or
substance mixtures, for use in one of the above-mentioned methods.
(2) Patents can be granted for inventions
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1. having as subject matter plants or animals if the technical
realization of the invention is not restricted to a particular plant
or animal variety;
2. having as subject matter a microbiological or other technical
process or a product obtained by means of such a process, unless a
plant or animal variety is concerned.
Section la(3) shall apply mutatis mutandis.
(3) In accordance with this Act:
1. “biological material” shall denote any material containing
genetic information and capable of reproducing itself or being
reproducible in a biological system;
2. “microbiological process” shall denote any process involving the
use of or intervention in microbiological material or by which
microbiological material results;
3. “an essentially biological process” shall denote any process for
breeding plants or animals based entirely on natural phenomena such
as crossing or selection;
4. “plant variety" shall denote a variety in accordance with the
definition of Regulation (EC) No. 2100/94 of the Council of July 27,
1994 on Community Plant Variety Types (OJ L 227, p. 1) in the valid
version.
Section 3
(1) An invention shall be considered to be novel if it does not form
part of the state of the art. The state of the art includes all
knowledge made available to the public by written or oral
description, by use or by any other manner before the date relevant
for the priority of the application.
(2) Additionally, state of the art shall also be deemed to be the
content of the following patent applications with earlier relevant
filing dates which have been made available to the public only on or
after the date relevant for the priority of the later application:
1. national applications as originally filed with the Patent Office;
2. European applications as originally filed with the competent
authority where protection is sought for the Federal Republic of
Germany and if the designation fee for the Federal Republic of
Germany has been paid in accordance with Article 79(2) of the
European Patent Convention, and if it is an application for a
regular European patent based on an international application
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(Article 153(2) EPC) that fulfills the conditions set out in Article
153(5) of the European Patent Convention;
3. international applications under the Patent Cooperation Treaty as
originally filed with the receiving office when the Patent Office
has been designated for the application.
When the earlier date relevant for priority of an application is
based on a claim to priority of a prior application, the first
sentence of subsection (2) shall be applicable only to the extent
that the content of the application to be considered in accordance
therewith does not go beyond the content of the prior application.
Patent applications under no. 1 of the first sentence of subsection
(2), which are the subject of an order under Section 50(1) or (4) of
this Act, shall be considered to have been made available to the
public upon expiry of the eighteenth month following their filing.
(3) The provisions of subsections (1) and (2) shall not exclude from
patentability any substance or substance mixture included in the
state of the art when such is intended for use in a process cited in
Section 2a(1), no. 2, and its use for such a process is not included
in the state of the art.
(4) Where this use is not part of the state of the art, such
substances and substance mixtures as cited in subsection (3) for a
specific use in one of the processes cited in Section 2a(1), no. 2,
shall not be excluded from protection by subsections (1) and (2)
either.
(5) With regard to the application of subsections (1) and (2),
disclosure of the invention shall not be considered if this occurred
no earlier than six months preceding the filing of the application
and if this was directly or indirectly
1. due to an evident abuse to the detriment of applicant or his
legal predecessor or
2. in consequence of the fact that the applicant or his legal
predecessor had displayed the invention at official or officially
recognized exhibitions falling within the terms of the Convention on
International Exhibitions signed in Paris on November 22, 1928.
Sentence 1, no. 2, shall apply only if the applicant states, when
filing the application, that the invention has actually been
displayed and if applicant files certification of this within four
months following the filing. Notification of the exhibitions
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referred to in sentence 1, no. 2, shall be published by the Federal
Minister of Justice in the Federal Law Gazette [Bundesgesetzblatt].
Section 4
An invention shall be deemed to involve an inventive step if it is
not obvious to a person skilled in the art from the state of the art.
Should the state of the art also include documents within the terms
of Section 3(2), these documents shall not be considered when
assessing the inventive step.
Section 5
An invention shall be deemed to be susceptible of industrial
application if its subject matter can be produced or used in any
industrial field, including agriculture.
Section 6
The right to a patent shall belong to the inventor or his successor
in title. If two or more persons have jointly made an invention, the
right to the patent shall belong to them jointly. If a number of
persons have made an invention independently of each other, the
right shall belong to that person who first files an application for
the invention with the Patent Office.
Section 7
(1) To avoid delay of substantive examination of a patent
application owing to the need to determine the identity of the
inventor, in the proceedings before the Patent Office the applicant
shall be the party deemed entitled to request grant of a patent.
(2) When a patent is revoked by reason of an opposition based on
usurpation (Section 21(1), no. 3) or when said opposition results in
a waiver of the patent right, the opponent may file an application
for the invention within one month after the official notification
of said waiver, and claim the priority of the earlier patent.
Section 8
An entitled person whose invention has been applied for by a person
not entitled to do so, or a person injured by usurpation, may demand
that the patent applicant surrenders to him the right to the grant
of a patent. If the application has already resulted in a patent,
the entitled person may demand that the patentee assigns the patent
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to him. This right may only be asserted, subject to sentences 4 and
5, by legal action within two years of publication of the grant of
the patent (Section 58(1)). Should the injured person have filed an
opposition on the grounds of usurpation (Section 21(1), no. 3), said
injured person may bring the legal action within one year of the
final conclusion of the opposition proceedings. The third and fourth
sentences shall not apply if the patentee did not act in good faith
when obtaining the patent.
Section 9
A patent shall have the effect that the patentee alone shall be
authorized to use the patented invention within the applicable laws.
A third party not having the consent of the patentee shall be
prohibited
1. from making, offering, putting on the market or using a product
which is the subject matter of the patent, or from importing or
possessing said product for such purposes;
2. from using a process which is the subject matter of the patent,
or, when said third party knows or it is obvious from the
circumstances that use of the process without the consent of the
patentee is prohibited, from offering the process for use within the
territory to which this Act applies;
3. from offering, putting on the market or using or importing or
possessing for such purposes the product produced directly by a
process which is the subject matter of the patent.
Section 9a
(1) Where a patent concerns biological material possessing specific
characteristics as a result of an invention, the effects of Section
9 shall extend to any biological material derived from said
biological material through multiplication or propagation in an
identical or divergent form and possessing those same
characteristics.
(2) Where a patent concerns a process that enables a biological
material to be produced possessing specific characteristics as a
result of an invention, the effects of Section 9 shall extend to the
biological material possessing the same characteristics and directly
obtained through said process and shall extend to any other
biological material derived from the directly obtained biological
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material through propagation or multiplication in an identical or
divergent form.
(3) Where a patent concerns a product consisting of or containing
genetic information as a result of an invention, the effects of
Section 9 shall extend to any material in which the product is
incorporated and in which the genetic information is contained and
performs its function. Section 1a(1) shall not be effected thereby.
Section 9b
Should the patentee or a third party with the consent of patentee
put biological material possessing certain characteristics owing to
the invention on the market within the territory of a Member State
of the European Union or in a contracting state of the European
Economic Area Agreement and should further biological material be
produced from this biological material by multiplication or
propagation, the effects of Section 9 shall not come into force if
the propagation of the biological material was the reason why this
was put on the market. This shall not apply if the material produced
by this means is used thereafter for a further multiplication or
propagation.
Section 9c
(1) Where plant propagating material is sold to a farmer for
agricultural use by the patentee or with his consent by a third
party, said farmer may, contrary to Sections 9, 9a and 9b, sentence
2, use his harvest for his own multiplication or propagation on his
own farm. Article 14 of Council Regulation (EC) No. 2100/94, in the
valid version, shall apply mutatis mutandis to the conditions and
extent of this right as shall also the implementing provisions
issued on this basis. Should the patentee derive rights herefrom,
these must be asserted in accordance with the implementing
provisions issued on the basis of Article 14(3) of Council
Regulation (EC) No. 2100/94.
(2) Where livestock or animal reproductive material is sold by the
patentee, or with his consent by a third party, to a farmer, said
farmer may, contrary to Sections 9, 9a and 9b, sentence 2, use said
livestock or said animal reproductive material for agricultural
purposes. This right shall extend also to the provision of the
livestock or other animal reproduction material so as to conduct
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said farmer’s agricultural activities, however, this shall not
extend to sales as part of a commercial reproduction activity or
with the intent to commercially reproduce.
(3) Section 9a(1) to (3) shall not apply to biological material
which was obtained coincidentally or technically unavoidably as part
of an agricultural activity. A farmer may as a rule therefore not be
sued if he has planted seeds or seed stock not subject to this
patent protection.
Section 10
(1) A patent shall have the further effect that any third party not
having the consent of the patentee shall be prohibited from offering
or supplying within the territory to which this Act applies to any
other persons, other than such persons authorized to use the
patented invention, means relating to an essential element of said
invention for use of the invention within the territory to which
this Act applies, if said third party knows or it is obvious from
the circumstances that such means are suitable and intended for use
of the invention.
(2) Subsection (1) shall not apply when the means are products
generally available in commerce, except if said third party
intentionally induces the person supplied to commit acts prohibited
by the second sentence of Section 9.
(3) Persons performing the acts referred to in Section 11, nos. 1 to
3, shall not be considered within the terms of subsection (1) as
persons entitled to use the invention.
Section 11
The effects of a patent shall not extend to:
1. acts done privately for non-commercial purposes;
2. acts done for experimental purposes relating to the subject
matter of the patented invention;
2a. the use of biological material for breeding, discovery and
development of a new plant variety type;
2b. studies and trials and the resulting practical requirements
necessary for obtaining a marketing authorization to place a
medicinal product on the market in the European Union or a marketing
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approval for a medicinal product in the Member States of the
European Union or in third countries;
3. the extemporaneous preparation of medicinal products in
individual cases in a pharmacy in accordance with a medical
prescription, or acts concerning the medicinal products so prepared;
4. the use of the subject matter of the patented invention on board
of vessels of another member state of the Paris Convention for the
Protection of Industrial Property, in the body of the vessel, in the
machinery, tackle, gear and other accessories, should such vessel
temporarily or accidentally enter waters to which the territory of
application of this Act extends, on the condition that this subject
matter is used exclusively for the needs of said vessel;
5. the use of the subject matter of the patented invention in the
construction or operation of aircraft or land vehicles of another
member state of the Paris Convention for the Protection of
Industrial Property or the use of accessories for such aircraft or
land vehicles should these temporarily or accidentally enter the
territory to which this Act applies;
6. the acts specified in Article 27 of the Convention on
International Civil Aviation of December 7, 1944 (Federal Law
Gazette [Bundesgesetzblatt], 1956, II, p. 411), where such acts
concern the aircraft of another state to which the provisions of
that Article are applicable.
Section 12
(1) A patent shall have no effect against a person who, at the time
of filing the application, had already begun to use the invention in
Germany, or had made the necessary arrangements to do so. Said
person shall be entitled to use the invention for the needs of his
own business in his own workshops or the workshops of others. This
right may only be bequeathed or transferred together with the
business. If the applicant or his predecessor in title, before
applying for a patent, disclosed the invention to other persons and
reserved his rights in the event of a patent being granted, said
person learning of the invention as a result of such disclosure
cannot invoke measures under the provisions of the first sentence,
which he has taken within six months after the disclosure.
(2) When the patentee is entitled to a priority right, the date of
the prior application shall be decisive and not the date of
application referred to in subsection (1). However, this provision
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shall not apply to nationals of a foreign country that does not
guarantee reciprocity in this respect, when said national has
claimed the priority of a foreign application.
Section 13
(1) A patent shall have no effect should the Federal Government
order that the invention is to be used in the interest of public
welfare. Nor shall the effect of a patent extend to any use of the
invention ordered in the interests of the security of the Federal
Republic by the competent highest federal authority or, on the
latter’s instructions, by a subordinate agency.
(2) Should an order under subsection (1) be challenged, the Federal
Administrative Court [Bundesverwaltungsgericht] shall have
jurisdiction if said order was issued by the Federal Government or
the competent highest federal authority.
(3) In those cases referred to in subsection (1), the patentee shall
have a claim against the Federal Republic for reasonable
compensation. In the event of dispute as to the amount, legal action
may be brought before the ordinary civil courts. Any order by the
Federal Government under the first sentence of subsection (1) shall
be communicated to the person recorded as patentee in the Register
(Section 30(1)) before the invention is used. If the highest federal
authority that has issued an order or an instruction under the
second sentence of subsection (1) becomes aware that a claim for
compensation has arisen under the first sentence, said highest
federal authority shall communicate this to the person recorded in
the Register as patentee.
Section 14
The scope of protection conferred by a patent or a patent
application shall be determined by the patent claims. Nevertheless,
the description and drawings shall have to be consulted when
interpreting the claims.
Section 15
(1) The right to a patent, the right to the grant of a patent and
the rights to be derived from a patent shall pass to the heirs.
These rights may be assigned to others with or without restrictions.
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(2) The rights under subsection (1) may be licensed in whole or in
part, exclusively or non-exclusively, for the whole or part of the
territory to which this Act applies. Should a licensee breach a
restriction of his license covered by the first sentence, the right
conferred by the patent may be asserted against him.
(3) The assignment of rights or the grant of a license shall not
affect licenses previously granted to other parties.
Section 16
(1) The duration of a patent shall be 20 years, beginning on the day
following the filing of the application for the invention. If the
purpose of an invention is the improvement or further development of
another invention for which the applicant has already secured patent
protection, said applicant may apply, within 18 months from the date
of filing of the application or, insofar as an earlier date is
claimed as relevant for the application from that date, for a patent
of addition, which shall expire at the same time as the patent for
the earlier invention.
(2) When the main patent lapses due to revocation, declaration of
nullity or due to relinquishment, the patent of addition shall
become an independent patent; its duration shall be determined by
the date of commencement of the main patent. Where there are several
patents of addition, only the first shall become independent; the
others shall be deemed patents of addition to that patent.
Section 16a
(1) Subject to regulations of the European Communities concerning
the creation of supplementary protection certificates, notification
of which must be made in the Federal Law Gazette [Bundesgesetzblatt],
supplementary protection may be requested for a patent that shall
follow immediately upon the expiry of the term of the patent under
Section 16(1). Annual fees shall have to be paid for supplementary
protection.
(2) Unless otherwise provided by the laws of the European
Communities, the provisions of this Act concerning the entitlement
of the applicant (Sections 6 to 8), the effects of the patent and
exceptions thereto (Sections 9 to 12), the order to use the patent,
and compulsory licenses (Sections 13, 24), scope of protection
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(Section 14), licenses and their registration (Sections 15, 30),
lapse of the patent (Section 20), nullity (Section 22), willingness
to grant licenses (Section 23), domestic representatives (Section
25), the Patent Court and proceedings before the Patent Court
(Sections 65 to 99), proceedings before the Federal Court of Justice
(Sections 100 to 122a), reinstatement (Section 123), obligation to
abide by the truth (Section 124), electronic documents (Section
125a), the official language, service of documents and legal
assistance (Sections 126 to 128), infringements (Sections 139 to
141a, 142a and 142b), concentration of actions and allegation of
entitlement to a patent (Sections 145 and 146) shall apply mutatis
mutandis to supplementary protection.
(3) licenses and declarations under Section 23 that are effective
for a patent shall also apply to supplementary protection.
Section 17
(1) For each application and each patent an annual fee for the third
year and each subsequent year following the date of filing shall
have to be paid.
(2) No annual fees shall have to be paid for a patent of addition
(second sentence of Section 16(1)). If a patent of addition is
converted to an independent patent, it shall become subject to the
payment of fees; the due date and the annual amount shall be
determined by the date of commencement of the preceding main patent.
The first sentence and the first half of the second sentence shall
apply mutatis mutandis to an application for a patent of addition
subject to the proviso that, where an application for a patent of
addition is regarded as an application for an independent patent,
such annual fees shall have to be paid as will be due for an
application that is independent from the outset.
Subsections (3) through (6) deleted.
Sections 18 and 19 (void)
Section 20
(1) A patent shall lapse if
1. the patentee relinquishes it by written declaration to the Patent
Office;
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2. the declarations prescribed in Section 37(1) are not made in due
time after service of the official notification (Section 37(2)) or
3. the annual fee or the difference are not paid in due time
(Section 7(1), Section 13(3) or Section 14(2) and (5) Patent Cost
Act [Patentkostengesetz], Section 23(7), sentence 4, of this Act).
(2) The decision whether the declarations prescribed under Section
37(1) and the payments have been made in due time shall rest solely
with the Patent Office; Sections 73 and 100 shall remain unaffected.
Section 21
(1) A patent shall be revoked (Section 61) if it arises that
1. the subject matter of the patent is not patentable according to
Sections 1 through 5;
2. the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by a person
skilled in the art;
3. the essential contents of the patent have been taken from the
descriptions, drawings, models, appliances or equipment of another,
or from a process used by another, without the consent of said
person (usurpation);
4. the subject matter of the patent extends beyond the content of
the application as originally filed with the authority competent for
the filing of the application; the same shall apply if the patent
was based on a divisional application or on a new application filed
in accordance with Section 7(2) and the subject matter of the patent
extends beyond the content of the earlier application as originally
filed with the authority competent for the filing of the earlier
application.
(2) Where the grounds for revocation affect only a part of the
patent, the patent shall be maintained with a corresponding
limitation. The limitation may be effected in the form of an
amendment to the claims, the description or the drawings.
(3) In the event of revocation, the effects of the patent and of the
application shall be deemed not to have existed ab initio. This
provision shall apply mutatis mutandis to limited maintenance.
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Section 22
(1) Nullity of a patent shall be declared on request (Section 81) if
it arises that one of the grounds given in Section 21(1) exists or
if the scope of the patent has been extended.
(2) Section 21(2) and (3) shall apply mutatis mutandis.
Section 23
(1) When the applicant for a patent or the person recorded as
patentee in the Register (Section 30(1)) declares to the Patent
Office in writing that he is prepared to allow anyone the use of the
invention in return for reasonable compensation, the annual fees
falling due for said patent after receipt of the declaration shall
be reduced by half. The effect of such a declaration made in respect
of a main patent shall extend to all its patents of addition. The
declaration shall be recorded in the Register and published in the
Patent Gazette [Patentblatt].
(2) Such a declaration shall be inadmissible if an entry concerning
the grant of an exclusive license (Section 30(4)) is recorded in the
Register or a request for recordation of such an entry has been
filed with the Patent Office.
(3) A person who wishes to use the invention after the declaration
has been recorded shall notify the patentee of his intention.
Notification shall be deemed to have been effected if it has been
dispatched by registered mail to the person recorded in the Register
as patentee or to the registered representative thereof or
authorized party for service (Section 25). A statement of how the
invention is to be used shall have to be given in the notification.
After such notification, the notifying person shall be entitled to
use the invention in the manner stated. Said person shall be obliged,
at the end of every calendar quarter, to provide the patentee with
the particulars of the use that has been made and to pay
compensation therefor. If said person fails to meet this obligation
in due time, the person recorded in the Register as patentee may
grant said notifying person a reasonable extension of time and, if
the extension of time expires without result, may prohibit further
use of the invention.
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(4) The compensation shall be fixed by the Patent Division upon
written request by one of the parties. Sections 46, 47 and 62 shall
apply mutatis mutandis to the proceedings. The request can be
directed against several parties. The Patent Office can order, when
fixing the compensation, that the costs of the fixing procedure be
reimbursed in whole or in part by the adversaries to the request.
(5) After the expiration of one year from the last fixing of the
compensation, any party affected thereby may apply for it to be
changed if, in the meantime, circumstances have arisen or have
become known which show that the amount of compensation fixed is
obviously inappropriate. In other respects, the provisions of
subsection (4) shall apply mutatis mutandis.
(6) Where the declaration has been made in regard to an application,
the provisions of subsections (1) through (5) shall apply mutatis
mutandis.
(7) The declaration may be withdrawn at any time by a written
communication to the Patent Office as long as no intent to use the
invention has been notified to the patentee. Withdrawal shall take
effect upon filing. The amount by which the annual fees have been
reduced shall have to be paid within one month after withdrawal of
the declaration. Should the difference not be paid within the time
limit laid down in sentence 3, it may still be paid with a surcharge
for late payment up until expiry of a further time limit of four
months.
Section 24
(1) A non-exclusive authorization to commercially use an invention
shall be granted by the Patent Court in individual cases in
accordance with the following provisions (compulsory license) if
1. the person seeking a license has unsuccessfully endeavored during
a reasonable period of time to obtain from the patentee consent to
use the invention under reasonable conditions usual in trade; and
2. public interest commands the grant of a compulsory license.
(2) When the person seeking a license is unable to exploit an
invention for which he holds protection under a patent of later date
without infringing the patent of earlier date, said person shall be
22
entitled to the grant of a compulsory license from the owner of the
patent of earlier date if
1. the condition stipulated in subsection (1), no. 1, is fulfilled
and
2. the invention of said person includes, in comparison with the
invention under the patent of earlier date, an important technical
progress of considerable commercial significance.
The patentee may request the grant of a counter-license under
reasonable conditions by the person seeking a license for the use of
the patented invention of later date.
(3) Subsection (2) shall apply mutatis mutandis if a plant breeder
cannot obtain or exploit a plant variety patent without infringing
an earlier patent.
(4) A compulsory license under the provisions of subsection (1) may
only be granted for a patented invention in the field of
semiconductor technology if said grant is necessary to remove an
anti-competitive practice on the part of the patentee that has been
established in judicial or administrative proceedings.
(5) When a patentee does not work the patented invention or does not
work it predominantly in Germany, compulsory licenses under the
provisions of subsection (1) may be granted to ensure an adequate
supply of the patented product to the domestic market. Importing
shall insofar be deemed to constitute working of the patent in
Germany.
(6) The grant of a compulsory license to a patent shall become
permissible only after the patent has been granted. The license may
be granted subject to restrictions and made dependent upon
conditions. The scope and duration of use shall be restricted to the
purpose for which said license has been granted. The patentee shall
be entitled to remuneration from the holder of a compulsory license
commensurate with the circumstances and taking into consideration
the commercial value of the compulsory license. With regard to the
recurring remuneration due in the future, should there be a
significant change in the circumstances decisive for the
determination of the amount of this remuneration, each party shall
be entitled to demand a corresponding adjustment. If the
circumstances on which the grant of a compulsory license was based
23
no longer apply and if it is unlikely that they will reoccur, the
patentee may demand that the compulsory license be revoked.
(7) A compulsory license to a patent may only be transferred
together with the business concerned with the exploitation of the
invention. A compulsory license to an invention that is the subject
matter of a patent of earlier date may only be transferred together
with the patent of later date.
Section 25
(1) A person who has neither domicile nor registered office nor
establishment in Germany may take part in proceedings regulated by
this Act before the Patent Office or the Patent Court and may assert
rights derived from a patent only if he has appointed in Germany an
attorney-at-law or a patent attorney as his representative who is
authorized to represent said person in proceedings before the Patent
Office, the Federal Patent Court, and in civil suits affecting the
patent.
(2) Within the terms of subsection (1), citizens of a Member State
of the European Union or of any other contracting state of the
European Economic Area Agreement may be appointed as representative
for services as stipulated in the European Economic Community
Foundation Agreement if said representative is entitled to practice
his/her profession under one of the professional titles listed in
the Annex to Section 1 of the Law Regulating the Activity of
European Lawyers in Germany [Gesetz über die Tätigkeit europäischer
Rechtsanwälte in Deutschland] of 9 March 2000 (Federal Law Gazette
[Bundesgesetzblatt], I, p. 182) or in Section 1 of the Law on the
Exams to be Passed to be Admitted as a Patent Attorney [Gesetz über
die Eignungsprüfung für die Zulassung zur Patentanwaltschaft] of 6
July 1990 (Federal Law Gazette [Bundessetzblatt], I pp 1349, 1351),
in the valid versions thereof.
(3) The place where a representative appointed under Subsection (1)
has his business premises shall be deemed, within the terms of
Section 23 of the Code of Civil Procedure [Zivilprozessordnung], to
be the place where the asset is located; if there are no business
premises, that place where the representative has his/her domicile
in Germany shall be relevant and, in the absence thereof, the place
where the Patent Office has its seat.
24
(4) Termination of the appointment of a representative in accordance
with subsection (1) by a legal act shall only then become effective
if the Patent Office or the Patent Court has been informed of both
the termination as well as also the appointment of another
representative.
25
Part 2 The Patent Office
Section 26
(1) The German Patent and Trademark Office is an independent higher
federal authority within the portfolio of the Federal Ministry of
Justice. It has its seat in Munich.
(2) The Patent Office has a President and other members. These
members must possess the qualifications required for judicial office
(legal members) under the German Law Relating to Judges [Deutschen
Richtergesetz] or they must have expertise in a branch of technology
(technical members). The members shall be appointed for life.
(3) As a rule, only a person who in Germany has passed a final state
or academic examination in a technical or scientific subject at a
university, a university of applied science or agricultural
university or a mining academy, who has worked professionally for at
least five years thereafter in a scientific or technical field and
who is in possession of the requisite legal knowledge shall be
appointed a technical member. Final examinations in another Member
State of the European Union or in another Contracting State to the
Agreement on the European Economic Area shall be deemed equivalent
to German final examinations in accordance with European Community
law.
(4) When there is a presumably temporary need, the President of the
Patent Office may appoint persons having the qualifications required
for members (subsections (1) and (2)) to perform the duties of a
member of the Patent Office (assistant members). The appointment may
be for a specified period or for as long as is needed and cannot be
terminated during such period. In other respects, the provisions
regarding members shall also apply to assistant members.
Section 27
(1) There shall be established in the Patent Office
1. Examining Sections for processing patent applications and for
providing information on state of the art (Section 29(3));
2. Patent Divisions for all matters concerning granted patents, for
the fixing of compensation (Section 23(4) and (6)) and for the
approval of legal aid in proceedings before the Patent Office. Each
26
Patent Division shall also be responsible for providing opinions
(Section 29(1) and (2)) on matters within its competence.
(2) The responsibilities of the Examining Sections shall be
performed by a technical member of the Patent Division (examiner).
(3) The Patent Division shall be competent to make decisions when at
least three members participate, who shall include two technical
members when the Division handles an opposition procedure. If the
case involves particular legal difficulties and if none of the
members participating is a legal member, one of the legal members
belonging to the Patent Division is to assist in rendering the
decision. A decision, by which a request to call in a legal member
is refused, cannot be independently appealed.
(4) The presiding member of the Patent Division may alone handle all
matters of the Patent Division, with the exception of decisions on
maintenance, revocation or limitation of a patent or fixation of
compensation (Section 23(4)) or he may delegate these functions to a
technical member of the Division; this shall not apply to a hearing.
(5) The Federal Ministry of Justice shall have power to establish by
statutory order that civil servants of the higher and intermediate
grades as well as comparable employees shall be entrusted with the
handling of matters that are the responsibility of the Examining
Sections or the Patent Divisions and present no particular technical
or legal difficulties; with the exception, however, of the grant of
a patent and the rejection of a patent application on grounds which
the applicant has contested. The Federal Ministry of Justice may
delegate such power by statutory order to the German Patent and
Trademark Office.
(6) As to the exclusion and challenge of Examiners and other members
of the Patent Divisions, Sections 41 to 44, the second sentence of
Section 45(2) and Sections 47 to 49 of the Code of Civil Procedure
[Zivilprozessordnung] relating to exclusion and challenge of members
of a court shall apply mutatis mutandis. The same shall apply to
civil servants of the higher and intermediate grades and to
employees, insofar as they have been entrusted under subsection (5)
with the handling of matters within the competence of the Examining
27
Sections or Patent Divisions. When a challenging petition requires a
decision, such decision shall be rendered by the Patent Division.
(7) Experts who are not members may be consulted during the
deliberations of the Patent Divisions; they may not take part in the
voting.
Section 28
The Federal Ministry of Justice shall regulate by statutory order
not requiring the approval of the Bundesrat (body of the German
legislature representing the German states) the establishment and
the business procedure of the Patent Office and shall determine the
form of procedure in patent matters, insofar as provisions therefor
have not been made by law.
Section 29
(1) The Patent Office shall be required to provide opinions at the
request of the courts or the public prosecutor’s office on questions
affecting patents if divergent expert opinions have been submitted
in proceedings.
(2) In other respects, the Patent Office shall not have the power to
render decisions or provide opinions outside its statutory scope of
activities without the approval of the Federal Ministry of Justice.
(3) The Federal Ministry of Justice shall have the power, for the
purpose of making available to the public the utilization of the
documentation of the Patent Office, to prescribe by statutory order,
without the approval of the Bundesrat (body of the German
legislature representing the German states) having to be obtained,
that the Patent Office shall provide information on state of the art,
without guaranteeing that the information is complete. In this
regard, the Federal Ministry of Justice can stipulate in particular
the conditions, the manner and the volume of the information to be
provided as well as the technical fields involved. The Federal
Ministry of Justice may by statutory order delegate such authority
to the German Patent and Trademark Office, without the approval of
the Bundesrat (body of the German legislature representing the
German states) being required.
28
Section 30
(1) The Patent Office shall maintain a Register in which shall be
recorded the titles of patent applications, the files of which may
be inspected by any person, and of granted patents, supplementary
protection certificates (Section 16a) and the names and addresses of
applicants or patentees and their representatives, possibly
appointed under Section 25, or authorized parties for service,
whereby it shall suffice to enter either one representative or one
authorized party for service. The commencement, expiration, lapse,
order of limitation, revocation, declaration of nullity of patents
and supplementary protection certificates (Section 16a) as well as
the filing of oppositions and nullity actions shall also be recorded
therein.
(2) The President of the Patent Office may determine that further
particulars be entered in the Register.
(3) The Patent Office shall record in the Register a change in the
identity of the person, the name or the address of the applicant or
the patentee and of its representative and authorized party for
service, if the Patent Office has received proof thereof. As long as
the change has not been recorded, the former applicant, patentee,
representative or authorized party for service shall remain subject
to the rights and obligations as provided in this Act.
(4) The Patent Office shall enter in the Register, at the request of
the patentee or the licensee, the grant of an exclusive license on
condition that the consent of the other party is proven. The request
under the first sentence shall not be admissible as long as
willingness to license is declared (Section 23(1)). The entry shall
be cancelled upon a request by the patentee or the licensee. The
request for cancellation by the patentee shall require proof of the
consent of the licensee designated in the entry or of the successor
in title of said licensee.
(5) (void)
Section 31
(1) The Patent Office shall permit any person so requesting to
inspect the files and the models and samples belonging to said files
if and to the extent that a legitimate interest has been credibly
29
shown. However, any person may freely inspect the Register and the
patent files, including the files of limitation or revocation
proceedings (Section 64).
(2) Any person may freely inspect the files of patent applications
1. if the applicant has expressed to the Patent Office his consent
to the inspection of files and has designated the inventor or
2. if 18 months have elapsed since the filing date of the
application (Section 35(2)) or, if an earlier date is claimed with
respect to the application since that date,
and a notification has been published under Section 32(5).
(3) Where inspection of the files is open to any person, the
inspection of models and samples belonging to the files shall also
be open to any person.
(4) When so requested by the inventor designated by the applicant,
inspection of the document designating the inventor (Section 37(1))
shall be allowed only in accordance with the first sentence of
subsection (1); the fourth and fifth sentences of Section 63(1)
shall apply mutatis mutandis.
(5) Inspection of the files of patent applications and patents which,
pursuant to Section 50, shall not be published in any form, can be
permitted by the Patent Office only after hearing the competent
highest federal authority if and to the extent a special interest,
warranting protection, of the person making the request appears to
justify allowing inspection and no risk of serious detriment to the
external security of the Federal Republic of Germany is to be
expected. If a patent application or a patent under the third
sentence of Section 3(2) is cited in proceedings as state of the art,
the first sentence shall apply mutatis mutandis to the part of the
file pertaining to this citation.
Section 32
(1) The Patent Office shall publish
1. laid-open publications [Offenlegungsschriften];
2. patent specifications; and
3. the Patent Gazette [Patentblatt].
Publication may be in electronic form.
30
(2) The Offenlegungsschrift (laid-open publication) shall contain
those elements of the application open to public inspection under
Section 31(2) and the abstract (Section 36) as originally filed or
in the amended form accepted for publication by the Patent Office.
An Offenlegungsschrift shall not be published if the patent
specification has already been published.
(3) The patent specification shall include the patent claims,
description and drawings, on the basis of which the patent was
granted. The patent specification shall also state the publications
which the Patent Office has taken into account when assessing the
patentability of the invention being the subject matter of the
application (Section 43(1)). If the abstract (Section 36) has not
yet been published, it shall be included in the patent specification.
(4) The Offenlegungsschrift or the patent specification shall also
be published according to the provisions of Section 31(2) if the
application has been withdrawn, rejected, deemed to have been
withdrawn or if the patent has lapsed after the technical
preparations for publication have been completed.
(5) The Patent Gazette [Patentblatt] shall regularly contain
summaries of the entries in the Register, except where they concern
only the normal expiry of patents or the entry and cancellation of
exclusive licenses, and references to the possibility of inspection
of patent application files.
Section 33
(1) As of the date of publication of the notification pursuant to
Section 32(5), the applicant can demand from that person who has
used the subject matter of the application, although he knew or
should have known that the invention used by him was the subject
matter of the application, compensation appropriate to the
circumstances; further claims shall not be permitted.
(2) No claim to compensation shall arise if the subject matter of
the application is obviously not patentable.
(3) The provisions of Part 5 of Book 1 of the Civil Code
[Bürgerliches Gesetzbuch] shall apply mutatis mutandis to the period
of limitation, subject to the proviso that the period of limitation
31
shall commence at the earliest one year after the grant of the
patent. Should the obligated person have gained something due to the
infringement and at the cost of the entitled person, Section 852 of
the Civil Code shall apply mutatis mutandis.
32
Part 3 Proceedings before the Patent Office
Section 34
(1) Applications for the grant of a patent for an invention shall be
filed with the Patent Office.
(2) Applications may also be filed through a Patent Information
Center if the Federal Ministry of Justice has designated said Center
in an announcement in the Federal Law Gazette [Bundesgesetzblatt] as
an office to receive patent applications. Applications that may
contain a state secret (Section 93 of the Criminal Code
[Strafgesetzbuch]) may not be filed at a Patent Information Center.
(3) An application shall contain:
1. the name of the applicant;
2. a request for the grant of a patent, in which the invention shall
be clearly and concisely designated;
3. one or more claims defining the subject for which protection is
sought;
4. a description of the invention;
5. the drawings referred to in the claims or the description.
(4) An 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.
(5) An application may include only one invention or a group of
inventions so linked as to form a single general inventive concept.
(6) The Federal Ministry of Justice shall have power to issue by
statutory order regulations concerning the form and other
requirements of applications. It may delegate such power by
statutory order to the German Patent and Trademark Office.
(7) At the request of the Patent Office, the applicant shall
indicate the state of the art fully and truthfully to the best of
his knowledge and incorporate it in the description (subsection (3)).
(8) The Federal Ministry of Justice shall have power to issue by
statutory order regulations concerning the deposit of biological
material, access to such material, including those persons entitled
33
to have access, and the repeated deposit of biological material
should an invention include the use of biological material or
concern such material that is not accessible to the public and
cannot be described in the application in such a way that a person
skilled in the art could carry out the invention (subsection (4)).
It may delegate such power by statutory order to the German Patent
and Trademark Office.
Section 34a
Should an invention be based on biological material of plant or
animal origin or if such material is used therefor, the patent
application is to include information on the geographical origin of
such material, if known. This shall not prejudice the examination of
applications or the validity of rights arising from granted patents.
Section 35
(1) Should an application not be drafted in German or should parts
not be drafted in German, the applicant shall be required to file a
German translation within three months of the filing of the
application. If an application contains a reference to drawings and
no drawings accompany the application, the Patent Office shall
invite the applicant to file the drawings within one month of
service of the invitation, or to declare that any reference to
drawings be deemed not to have been made.
(2) The filing date of a patent application shall be the date on
which the documents referred to in Section 34(3), nos. 1 and 2, have
been received and, if they contain any statements that would appear
to constitute a description, the date on which documents referred to
in Section 34(3), no. 4, have been received
1. at the Patent Office; or
2. at a Patent Information Center if said Center has been designated
for said purpose in an announcement by the Federal Ministry of
Justice in the Federal Law Gazette [Bundesgesetzblatt].
Should the documents not be drafted in German, this shall apply only
if a German translation is received by the Patent Office within the
time limit referred to in the first sentence of subsection (1); if
no such translation is filed, the application shall be deemed not to
have been filed. If the applicant files the omitted drawings after
having been invited to do so in accordance with the second sentence
of subsection (1), the date of receipt of the drawings at the Patent
34
Office shall constitute the filing date; if such is not done, any
reference to the drawings shall be deemed not to have been made.
Section 36
(1) Applications must be accompanied by an abstract which can be
filed up to 15 months from the filing date or, where an earlier date
is claimed as relevant for the application, up to 15 months from
that date.
(2) Abstracts shall merely serve for use as technical information.
They shall contain
1. the title of the invention;
2. a concise summary of the disclosure as contained in the
application indicating the technical field of the invention drafted
in such a manner that it permits a clear understanding of the
technical problem, its solution and the main use or uses of the
invention;
3. a drawing mentioned in the concise summary; if several drawings
are mentioned, that drawing is to be included that, in the opinion
of the applicant, most clearly identifies the invention.
Section 37
(1) Within a period of 15 months from the filing date or, if an
earlier date is claimed as relevant to the application, within 15
months from such date, the applicant shall designate the inventor or
inventors and affirm that to his knowledge no other person has
contributed to the invention. If the applicant is not the inventor
or not the sole inventor, said applicant shall also state how he
acquired the right to the patent. The correctness of such statements
shall not be verified by the Patent Office.
(2) When the applicant can credibly show that he has been prevented
by exceptional circumstances from submitting in due time the
declarations prescribed in subsection (1), the Patent Office shall
grant said applicant a reasonable extension of the time limit. The
time limit should not be prolonged beyond the date of issuance of
the decision to grant a patent. If by this date the aforesaid
preventative circumstances still exist, the Patent Office shall
grant another extension. Six months before expiration of the time
limit, the Patent Office shall notify the patentee that the patent
35
will lapse if he does not submit the prescribed declarations within
six months of service of the notification.
Section 38
Up to the time of the decision to grant a patent, the contents of an
application may be amended on condition that the scope of the
subject matter of the application is not extended; however, until a
request for examination is filed (Section 44), only the correction
of obvious mistakes, the removal of defects pointed out by the
Examining Section or amendments to claims shall be admissible. No
rights may be derived from amendments which extend the scope of the
subject matter of the application.
Section 39
(1) An applicant may at any time divide his application. The
division shall be declared in writing. If the division is declared
after the filing of the request for examination (Section 44), the
divided-out part shall be deemed an application for which a request
for examination has been filed. The date of the original application
and any claimed priority shall be retained for each divisional
application.
(2) For the period up to division, the same fees which were payable
for the original application shall have to be paid for the
divisional application. This shall not apply to the fee prescribed
by the Patent Cost Act [Patentkostengesetz] for a search in
accordance with Section 43 if the division was declared prior to the
filing of the request for examination (Section 44), unless a request
in accordance with Section 43 is filed for the divisional
application.
(3) Should the application documents required under Sections 34
through 36 not be filed for the divisional application within three
months of receipt of the declaration of division, or if the fees for
the divisional application have not been paid within this period,
the declaration of division shall be deemed not to have been made.
Section 40
(1) Within a period of 12 months from the filing date of an earlier
patent or utility model application filed with the Patent Office,
the applicant is entitled to a priority right with respect to the
36
application for the same invention unless a domestic or foreign
priority was already claimed for the earlier application.
(2) The priority of more than one application for a patent or
utility model filed with the Patent Office may be claimed for the
application.
(3) Priority may only be claimed for those features of the
application which are clearly disclosed in the entirety of the
application documents for the earlier application.
(4) Priority may only be claimed within two months of the filing
date of the later application; the declaration of priority shall
only be deemed to have been made if the file number of the earlier
application is given.
(5) Where the earlier application is still pending before the Patent
Office, it shall be deemed withdrawn at the time the declaration of
priority is made under the provision of subsection (4). This shall
not apply if the earlier application concerns a utility model.
(6) If inspection is requested (Section 31) of the file for a later
application that claims the priority of an earlier patent or utility
model application, the Patent Office shall include a copy of the
earlier patent or utility model application in the file of the later
application.
Section 41
(1) Any person who, in accordance with an international treaty,
claims the priority of an earlier foreign application for the same
invention shall, before the end of the sixteenth month following the
priority date, state the date, country and file number of the
earlier application and shall file a copy of the earlier application
should such not have already been done. Particulars may be altered
within this period. If the particulars are not provided in due time,
the priority claim for the application shall be forfeited.
(2) Where the earlier foreign application has been filed in a state
not party to an international treaty on the recognition of priority,
the applicant may claim a right of priority corresponding to that
under the Paris Convention, provided that, after publication by the
37
Federal Ministry of Justice in the Federal Law Gazette
[Bundesgesetzblatt], the other state grants a right of priority on
the basis of a first filing with the Patent Office, which is,
according to its requirements and contents, comparable to that under
the Paris Convention; subsection (1) shall be applicable.
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
38
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
39
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
40
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.
Section 45
(1) Should an application not satisfy the requirements of Sections
34, 37 and 38 or if the requirements of Section 36 are obviously not
fulfilled, the Examining Section shall request the applicant to
remedy the defects within a specified time limit. The first sentence
shall not apply to defects concerning the abstract if the abstract
has already been published.
(2) Should the Examining Section come to the conclusion that the
invention is not patentable under Sections 1 to 5, it shall notify
the applicant thereof, stating its grounds, and shall invite the
applicant to submit observations within a specified time limit.
41
Section 46
(1) The Examining Section may at any time summon and hear the
parties, question witnesses, experts and the parties, whether under
oath or not, and may make other inquiries necessary for
clarification of the matter. Up until that time when a decision on
grant is rendered, the applicant shall be given a hearing on request,
where expedient. The request shall be filed in writing. If the
request is not filed in the prescribed form or if the Examining
Section does not consider a hearing to be expedient, it shall reject
the request. The decision rejecting a request cannot be
independently appealed.
(2) Minutes shall be taken of the hearings and interrogations shall
be made that reproduce the essentials of the proceedings and contain
those declarations of the participants that are legally relevant.
Sections 160a, 162 and 163 of the Code of Civil Procedure
[Zivilprozessordnung] shall apply mutatis mutandis. The participants
shall receive a copy of the minutes.
Section 47
(1) The decisions of the Examining Sections shall be reasoned, in
writing and shall be served on the participants ex officio. The
decisions may also be pronounced at the end of a hearing; the first
sentence shall remain unaffected. Reasons need not be given if the
applicant is the sole party to the proceedings and his request is
allowed.
(2) The written copy shall be accompanied by a statement instructing
the parties of the possibility to appeal the decision, of the
authority where an appeal may be lodged, of the time limit for
lodging an appeal and of the appeal fee. The time limit for lodging
an appeal (Section 73(2)) shall commence only when the parties have
been instructed in writing. If they have not been instructed or have
been incorrectly instructed, an appeal may only be lodged within one
year from service of the decision, except where instruction has been
given in writing that an appeal is not permissible; Section 123
shall apply mutatis mutandis.
Section 48
The Examining Section shall reject an application if the defects
objected to under Section 45(1) have not been remedied or if
42
examination shows that the invention is not patentable under
Sections 1 to 5. The second sentence of Section 42(3) shall apply.
Section 49
(1) If an application satisfies the requirements of Sections 34, 37
and 38, if defects in the abstract objected to under Section 45(1)
have been remedied and if the subject matter of the application is
patentable in accordance with Sections 1 to 5, the Examining Section
shall order the grant of a patent.
(2) The decision to grant shall be deferred at the request of the
applicant for a period of 15 months beginning either with the date
on which the application is filed with the Patent Office or, if an
earlier date has been claimed as relevant for the application,
beginning with such earlier date.
Section 49a
(1) Should the person registered as patentee request supplementary
protection, the Patent Division shall examine whether the
application complies with the relevant Council regulation of the
European Communities and with subsection (5) and Section 16a.
(2) If the application satisfies those requirements, the Patent
Division shall grant a supplementary protection certificate for the
duration of its term. In the contrary case, the Patent Division will
invite the applicant to rectify any defect within a time limit to be
set by the Patent Division, which shall be of at least two months.
If the defects are not remedied, the Patent Division shall reject
the application by a decision.
(3) Where a regulation of the European Communities provides for an
extension of the term of a supplementary protection certificate,
subsections (1) and (2) shall apply mutatis mutandis.
(4) The Patent Division shall decide by order on the requests
provided in the regulations of the European Communities
1. to correct the term of a supplementary protection certificate if
the date of the first authorization for marketing a product in the
application for the certificate is incorrect;
2. to revoke the extension of the term of a supplementary protection
certificate.
43
(5) Section 34(6) shall apply. Sections 46 and 47 shall apply to the
proceedings before the Patent Division.
Section 50
(1) When a patent is sought for an invention which is a state secret
(Section 93 of the Criminal Code), the Examining Section shall order
ex officio that no publication shall take place. The competent
highest federal authority shall be heard before the order is issued.
This federal authority may request that an order be issued.
(2) The Examining Section shall cancel ex officio or at the request
of the competent highest federal authority or of the applicant or
patentee an order under subsection (1) when the relevant grounds
cease to exist. The Examining Section shall examine at yearly
intervals whether the grounds for the order under subsection (1)
continue to exist. Before an order under subsection (1) is cancelled,
the competent highest federal authority shall be heard.
(3) The Examining Section shall notify the parties if no appeal has
been lodged within the time limit for appeal (Section 73(2)) against
a decision of the Examining Section refusing a request for the
issuance of an order under subsection (1) or canceling an order
under subsection (1).
(4) Subsections (1) to (3) shall apply mutatis mutandis to
inventions which have been kept secret by a foreign country for
reasons of national defense and have been entrusted to the Federal
Government with its consent and on condition that it maintain
secrecy.
Section 51
The Patent Office shall permit the competent highest federal
authority to inspect the files in order to examine whether, in
accordance with Section 50(1), no publication shall take place or
whether an order issued under Section 50(1) shall be cancelled.
Section 52
(1) A patent application containing a state secret (Section 93 of
the Criminal Code) may only be filed, outside the territory to which
this Act applies, with the written consent of the competent highest
federal authority. Consent may be given subject to conditions.
44
(2) Any person who
1. files a patent application in violation of the first sentence of
subsection (1) or
2. acts in violation of a condition under the second sentence of
subsection (1)
shall be liable to imprisonment not exceeding five years or to a
fine.
Section 53
(1) Should no order under Section 50(1) be served on the applicant
within a period of four months after the filing of the application
with the Patent Office, the applicant or any other person having
knowledge of the invention may assume, if in doubt as to whether the
invention is required to be kept secret (Section 93 of the Criminal
Code), that the invention need not be kept secret.
(2) When examination as to whether, in accordance with Section 50(1),
publication of an application is not to take place cannot be
concluded within the time limit mentioned in subsection (1), the
Patent Office may, by means of a notice to be served on the
applicant within the period mentioned in subsection (1), extend this
period by a maximum of two months.
Section 54
If a patent is granted for an application, for which an order under
Section 50(1) was issued, the patent shall be recorded in a Special
Register. The first sentence of Section 31(5) shall apply mutatis
mutandis to the inspection of the Special Register.
Section 55
(1) An applicant, a patentee or the successor in title thereof who,
as a result of an order under Section 50(1), refrains from using or
ceases to use an invention patentable under Sections 1 to 5 for
peaceful purposes shall have a claim to compensation, owing to the
damages thereby incurred, against the Federal Republic if and to the
extent that said party cannot reasonably be expected to bear the
damages itself. When determining the extent to which said party can
reasonably be expected to do so, account shall be taken, in
particular, of the financial position of the injured party, the
amount of expenditure incurred by said party for the invention or
for acquiring title thereto, the degree of probability that the
45
invention might have to be kept secret that could have been
recognized by said party at the time the expenditure was incurred,
and the profit derived by the injured party from another
exploitation of the invention. The claim cannot be asserted until
after a patent has been granted. Compensation may be claimed only
after it has become due and for periods which shall not be shorter
than one year.
(2) The claim shall be asserted before the competent highest federal
authority. Legal action may be instituted before the ordinary civil
courts.
(3) Compensation under subsection (1) shall be awarded only if the
first application for the invention has been filed with the Patent
Office and the invention had not already been kept secret by a
foreign country for reasons of defense before the issuance of an
order under Section 50(1).
Section 56
The Federal Government shall have power to determine by statutory
order the competent highest federal authority within the terms of
Sections 31(5), 50 to 55 and 74(2).
Section 57 (void)
Section 58
(1) The grant of a patent shall be published in the Patent Gazette
[Patentblatt]. The patent specification shall be published at the
same time. The legal effects of the patent shall come into force
with publication in the Patent Gazette [Patentblatt].
(2) If an application is withdrawn after publication of the
reference to the possibility of inspection of the files (Section
32(5)) or is refused or is deemed withdrawn, the effects under
Section 33(1) shall be deemed not to have come into force.
(3) If no request for examination is filed before expiration of the
period prescribed in Section 44(2) or if the annual fee payable for
the application is not paid in due time (Section 7(1) of the Patent
Cost Act), the application shall be deemed to have been withdrawn.
46
Section 59
(1) Within three months of publication of grant, any person, but
only the injured party in the case of usurpation, may give notice of
opposition to the patent. Opposition shall be lodged in writing and
grounds shall be stated. The opposition may be based only on the
assertion that one of the grounds for revocation mentioned in
Section 21 exists. The facts which justify the opposition shall be
stated in detail. The particulars must, if not already contained in
the opposition brief, be subsequently provided in writing before
expiration of the opposition period.
(2) In the event of opposition to a patent, a third party who proves
that legal action has been filed against him on the grounds of
infringement of said patent may, after the opposition period has
expired, intervene in the opposition proceedings as opponent,
provided said opponent gives notice of intervention within three
months of the date on which the infringement action was instituted.
The same shall apply to any third party who proves that, after
patentee demands that he cease and desist the alleged infringement,
he, has filed a legal action against said patentee requesting a
ruling declaring that he is not infringing the patent. Notice of
intervention shall be filed in writing and shall state the reasons
for said intervention before expiration of the time limit mentioned
in the first sentence. The third to fifth sentences of subsection
(1) shall apply mutatis mutandis.
(3) A hearing shall be held in opposition proceedings if a party
requests such a hearing or if the Patent Division considers this to
be expedient. The Patent Division should point out in the summons
those issues it considers need to be discussed for the decision to
be reached.
(4) In other respects, the third sentence of Section 43(3) and
Sections 46 and 47 shall apply mutatis mutandis in opposition
proceedings.
Section 60 (void)
Section 61
(1) The Patent Division shall issue a decision whether and to what
extent the patent shall be maintained or revoked. The proceedings
47
shall be continued ex officio without the opponent if the opposition
is withdrawn.
(2) Notwithstanding subsection (1), the Board of Appeal of the
Federal Patent Court shall issue a decision
1. if a party requests the decision and no other party has filed an
opposition within two months after service of the request, or
2. upon the request of only one party if at least 15 months have
lapsed since expiry of the opposition time limit, or in the case of
a request of an intervening party if at least 15 months have lapsed
since declaration of intervention.
This shall not apply if the Patent Division has served a summons to
a hearing or the decision on the opposition within three months of
receipt of the request for a decision by the Patent Court. In other
respects, Sections 59 to 62, 69 to 71 and 86 to 99 shall apply
mutandis mutandis.
(3) When a patent is revoked or maintained only to a limited extent,
this shall be published in the Patent Gazette [Patentblatt].
(4) When a patent is maintained to a limited extent, the patent
specification shall be correspondingly amended. The amendment of the
patent specification shall be published.
Section 62
(1) In its decision according to Sec. 61(1), the Patent Division may
at its equitable discretion determine to what extent the costs
arising due to a hearing or the taking of evidence shall be borne by
a party. This shall also apply if the opposition is withdrawn in
part or in full or if the patent is relinquished. The Patent
Division can order that the opposition fee, as prescribed by the
Patent Cost Act, be reimbursed in full or in part, should this
comply with the principles of equity.
(2) The costs shall include, in addition to the expenses of the
Patent Office, the costs incurred by the parties to the extent that
they were necessary for the appropriate defense of their claims and
rights. The amount of the costs to be reimbursed shall be determined
by the Patent Office upon request. The provisions of the Code of
Civil Procedure [Zivilprozessordnung] relating to the procedure for
the fixation of costs (Sections 103 to 107) and execution of
48
decisions regarding the fixation of costs (Sections 724 to 802)
shall apply mutatis mutandis. An objection [Erinnerung] shall take
the place of an appeal [Beschwerde] against the decision regarding
the fixation of costs; Section 73 is to be applied subject to the
proviso that the appeal is lodged within two weeks. The enforceable
copy shall be issued by the registrar of the Patent Court.
Section 63
(1) The inventor shall be mentioned in the laid-open publication
[Offenlegungsschrift] (Section 32(2)), in the patent specification
(Section 32(3)) and in the publication of the grant of the patent
(Section 58(1)) if he has already been designated. This designation
shall be entered in the Register (Section 30(1)). It shall be
omitted if the inventor designated by the applicant so requests. The
request may be withdrawn at any time; in the event of withdrawal,
mention shall be effected thereafter. Waiver of his right to be
mentioned by the inventor shall have no legal effect.
(2) When the identity of the inventor is incorrectly given or, in
the case of the third sentence of subsection (1), is not given at
all, the applicant or the patentee or the person wrongly designated
shall be under an obligation to the inventor to declare to the
Patent Office that they consent to having the mention provided for
in the first and second sentences of subsection (1) corrected or
subsequently made. The consent shall be irrevocable. The procedure
for the grant of the patent shall not be delayed by the bringing of
an action for a declaration of consent.
(3) Subsequent mention of the inventor (subsection (1), fourth
sentence, and subsection (2)) or the correction (subsection (2))
shall not be made in official publications that have already been
published.
(4) The Federal Ministry of Justice shall have power to issue by
statutory order regulations regarding the implementation of the
foregoing provisions. It may delegate this power by statutory order
to the German Patent and Trademark Office.
Section 64
(1) A patent may be revoked at the request of the patentee or
limited with retroactive effect by amending the patent claims.
49
(2) The request shall be filed in writing and substantiated.
(3) The Patent Division shall decide on the request. Sections 44(1)
and 45 to 48 shall apply mutatis mutandis. Should the patent be
revoked, this shall be published in the Patent Gazette [Patentblatt].
If the patent is limited, the patent specification shall be adapted
to the limitation in the decision whereby the request is granted;
the amendment of the patent specification shall be published.
50
Part 4 The Patent Court
Section 65
(1) A Patent Court is established as an autonomous and independent
federal court to hear appeals from decisions of the Examining
Sections or Patent Divisions of the Patent Office and to decide
actions for declaration of nullity of patents and in compulsory
license proceedings (Sections 81, 85 and 85a). It has its seat at
the seat of the Patent Office. It is designated the “Federal Patent
Court”.
(2) The Patent Court shall be composed of a president, presiding
judges and further judges. They must possess the qualifications
required for judicial office (legal members) under the German Law
Relating to Judges [Richtergesetz] or must be experts in a branch of
technology (technical members). Section 26(3) shall apply mutatis
mutandis for the technical members, provided they have passed a
state or academic final examination.
(3) The judges shall be appointed for life by the President of the
Federal Republic, except where otherwise provided in Section 7l.
(4) The President of the Patent Court shall exercise official
supervision over the judges, officials, employees and workers.
Section 66
(1) There shall be established in the Patent Court
1. boards for hearing appeals [Beschwerden] (Boards of Appean( �
2. boards for deciding actions for declaration of nullity of patents
and compulsory license proceedings (Nullity Boards).
(2) The number of boards shall be determined by the Federal Minister
of Justice.
Section 67
(1) A Board of Appeal shall render decisions in the composition of
1. one legal member as presiding judge and two technical members, in
cases under Sections 23(4) and 50(1) and (2);
2. one technical member as presiding judge, two further technical
members and one legal member in those cases
a) in which an application was rejected,
51
b) in which an opposition was dismissed as inadmissible,
c) pursuant to Section 61(1), sentence 1, and Section 64(1),
d) pursuant to Section 61(2) as well as
e) pursuant to Sections 130, 131 and 133;
3. one legal member as presiding judge, an additional legal member
and a technical member in cases pursuant to Section 31(5);
4. three legal members in all other cases.
(2) A Nullity Board shall render decisions in cases pursuant to
Sections 84 and 85(3), in the composition of one legal member as
presiding judge, one additional legal member and three technical
members and in other cases with a composition of three judges, of
whom one must be a legal member.
Section 68
The provisions of Part 2 of the Judiciary Act
[Gerichtsverfassungsgesetz] shall apply mutatis mutandis to the
Patent Court subject to the following:
1. Where an election does not result in a judge, who is a legal
member, being elected to the Presiding Board [Präsidium], that legal
member shall be considered as elected who obtains the most votes of
the legal members;
2. A challenge of an election (Section 21b(6) of the Judiciary Act)
shall be decided by a board of the Patent Court consisting of three
judges who are legal members;
3. The Federal Minister of Justice shall appoint the permanent
substitute for the President.
Section 69
(1) Proceedings before the Boards of Appeal shall be public if
notice of the possibility of inspecting the files under Section
32(5) has been given or if the patent specification has been
published under Section 58(1). Sections 172 to 175 of the Judiciary
Act shall apply mutatis mutandis subject to the following:
1. At the request of one of the parties, the public may be excluded
from the proceedings if the public nature of the proceedings
threatens to endanger the interests warranting protection of the
party making the request;
2. The public shall be excluded from the pronouncement of the
decisions until publication of a notice of the possibility of
52
inspecting the files under Section 32(5) or until publication of the
patent specification under Section 58(1).
(2) The proceedings before the Nullity Boards, including the
pronouncement of decisions, shall be public. The second sentence of
subsection (1), no. 1, shall apply mutatis mutandis.
(3) The maintenance of order in the sessions of the boards shall be
the responsibility of the presiding judge. Sections 177 to 180, 182
and 183 of the Judiciary Act relating to the maintenance of order in
court shall apply mutatis mutandis.
Section 70
(1) Decisions in the boards shall be made on the basis of
deliberation and the taking of votes. In this respect, only the
number of members of the boards prescribed by law may participate.
During the deliberation and voting there may be present, in addition
to the members of the boards, only persons occupied at the Patent
Court for training purposes, provided that the presiding judge
permits them to be present.
(2) The decisions of the boards shall require a majority vote; if
the votes are equally divided, the presiding judge shall have the
casting vote.
(3) The members of the boards shall vote according to seniority of
service and, when seniority is equal, according to age, the younger
voting before the older. If a reporting judge has been appointed, he
shall vote first. The presiding judge shall vote last.
Section 71
(1) Commissioned judges may be employed at the Patent Court. The
third sentence of Section 65(2) shall apply.
(2) Commissioned judges and delegated judges may not preside.
Section 72
A registrar’s office shall be established at the Patent Court, which
shall be staffed by the necessary number of registrars. The
establishment of the registrar’s office shall be determined by the
Federal Minister of Justice.
53
Part 5 Proceedings before the Patent Court
1. Appeal [Beschwerde] Proceedings
Section 73
(1) The decisions of the Examining Sections and Patent Divisions may
be appealed.
(2) An appeal must be filed in writing with the Patent Office within
one month after service of the decision. Copies of the appeal and of
all briefs shall be attached for the other parties. The appeal and
all briefs containing requests pertaining to the matter or the
declaration of withdrawal of the appeal or of a request shall be
served ex officio upon the other parties; other briefs shall be
conveyed informally where service has not been ordered.
(3) Where the authority whose decision is being appealed considers
the appeal to be well-founded, it shall rectify its decision. Said
authority may order that the appeal fee, as prescribed by the Patent
Cost Act, be refunded. If the appeal is not remedied, it shall be
remitted to the Patent Court without comment as to its merits before
the expiration of one month.
(4) Should the appellant be opposed by another party to the
proceedings, the provision of the first sentence of subsection (3)
shall not be applicable.
Section 74
(1) An appeal may be lodged by the parties to the proceedings before
the Patent Office.
(2) In the cases of Sections 31(5) and 50(1) and (2), an appeal may
also be lodged by the competent highest federal authority.
Section 75
(1) An appeal shall have a suspensive effect.
(2) An appeal shall, however, have no suspensive effect when it is
directed against a decision of the Examining Section by which an
order under Section 50(1) has been issued.
54
Section 76
The President of the Patent Office may, if he considers it
appropriate so as to safeguard public interest, submit written
statements in appeal proceedings to the Patent Court, be present at
hearings and make observations therein. The Patent Court shall
provide the parties with any written statements by the President of
the Patent Office.
Section 77
The Patent Court may, if it considers it appropriate in connection
with a question of law of principal importance, give the President
of the Patent Office the opportunity to intervene in appeal
proceedings. Upon receipt of the notice of intervention, the
President of the Patent Office shall become a party.
Section 78
A hearing shall be held if
1. one of the parties so requests;
2. evidence is to be taken before the Patent Court (Section 88(1));
or
3. the Patent Court considers it expedient.
Section 79
(1) An appeal shall be decided by court order.
(2) Where an appeal is not permissible or not lodged in the form
provided by law and within the prescribed period, it shall be
dismissed as not permissible. The court order may be issued without
a hearing.
(3) The Patent Court may reverse the appealed decision without
itself deciding the case on its merits if
1. the Patent Office has not yet decided the case on its merits;
2. the proceedings before the Patent Office suffer from a
substantial defect;
3. new facts or evidence become known which are essential to the
decision.
The Patent Office shall base its decision also on the legal
assessment on which the reversal is based.
55
Section 80
(1) Where more than one person is party to the proceedings, the
Patent Court may decide that the costs of the proceedings shall be
imposed in full or in part on one of the parties, if equitable. It
may, in particular, also order that the costs incurred by the
parties shall, to the extent that they were necessary for the
appropriate protection of the claims and rights involved, be
reimbursed in full or in part by one of the parties.
(2) Costs may be imposed on the President of the Patent Office only
if he has filed requests after his intervention in the proceedings.
(3) The Patent Court may order that the appeal fee, as prescribed by
the Patent Cost Act, be refunded.
(4) Subsections (1) to (3) shall also be applicable if, either in
whole or in part, the appeal, the application or the opposition is
withdrawn or if the patent is relinquished.
(5) In other respects, the provisions of the Code of Civil Procedure
[Zivilprozessordnung] relating to the procedure for the fixation of
costs (Sections 103 to 107) and the execution of decisions regarding
the fixation of costs (Sections 724 to 802) shall apply mutatis
mutandis.
2. Nullity and Compulsory License Proceedings
Section 81
(1) Proceedings regarding a declaration of nullity of a patent or a
supplementary protection certificate or regarding the grant or
withdrawal of a compulsory license or regarding the adaptation of
the remuneration determined by a judgment for a compulsory license
shall be instituted by bringing legal action. The action shall be
directed against the person recorded in the Register as patentee or
against the holder of the compulsory license. An action against a
supplementary protection certificate may be joined with an action
against the underlying patent and may also be based on the fact that
there is a nullity ground with respect to the underlying patent
(Section 22).
56
(2) An action for declaration of nullity of a patent may not be
brought as long as opposition may still be filed or opposition
proceedings are pending. A legal action requesting declaration of
nullity of a supplementary protection certificate may not be filed
if requests can be made pursuant to Section 49a(4) or if proceedings
deciding these requests are pending.
(3) In the case of usurpation, only the injured party shall be
entitled to bring an action.
(4) An action shall be filed to the Patent Court in writing. Copies
of the action and of all briefs shall be attached for the adversary.
The action and all briefs shall be served on the adversary ex
officio.
(5) An action shall designate the plaintiff, the defendant and the
matter at issue and shall contain a specific request. The facts and
evidence used as grounds are to be stated. If the action does not
fully comply with these requirements, the presiding judge shall
invite the plaintiff to file the necessary supplements within a
specified period.
(6) Plaintiffs who do not have their usual place of residence in a
Member State of the European Union or in a Contracting State to the
Agreement on the European Economic Area shall provide security, at
the demand of the defendant, with respect to the costs of the
proceedings; Section 110(2), nos. 1 to 3, of the Code of Civil
Procedure shall apply mutatis mutandis. The Patent Court shall
determine, at its equitable discretion, the amount of the security
and shall determine a time limit within which said amount shall have
to be furnished. If the time limit is not observed, the action shall
be deemed to have been withdrawn.
Section 82
(1) The Patent Court shall serve the legal action on the defendant
and invite him to respond thereto within one month.
(2) Should the defendant fail to respond in due time, a decision
complying with the legal action may be rendered forthwith without a
hearing and every fact asserted by the plaintiff may be assumed to
be proved.
57
(3) Should the defendant file a counterstatement within the time
limit, the Patent Court shall inform the plaintiff of said
counterstatement and shall set a date for a hearing. If the parties
agree, a hearing does not need to be held. Subsection (2) shall
remain unaffected.
Section 83
(1) In proceedings regarding a declaration of nullity of a patent or
a supplementary protection certificate, the Patent Court shall
notify the parties as early as possible as to any aspects that might
be of particular importance for the decision or that will contribute
to concentrating the proceedings on the questions essential for the
decision. Such a notification will not be required if the aspects to
be discussed appear to be evident from that stated by the parties.
Section 139 Code of Civil Procedure shall apply mutatis mutandis.
(2) The Patent Court can set a time limit for the parties, within
which they may file statements regarding the notification stipulated
in subsection (1) by submitting expedient requests or by
supplementing their submissions, and within which they may also
otherwise file conclusive statements. The time limit can be extended
if said party should present considerable reasons for this. These
reasons shall have to be credibly shown.
(3) The powers as stipulated in subsections (1) and (2) may also be
exercised by the presiding judge or by a member of the Court that
has been designated by the presiding judge.
(4) The Patent Court can reject means of attack or defense by one
party or an amendment to a legal action or a defendant’s defense
using an amended version of the patent that have been filed only
after expiry of a time limit as stipulated herefor in subsection (2),
and the Patent Court can render a decision without any further
investigation if
1. considering the new submission would require postponement of the
date for the hearing already scheduled and
2. said party has not provided sufficient grounds for the delay and
3. said party was instructed as to the consequences of not observing
a time limit.
The reasons given for the excuse will have to be credibly shown.
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Section 84
(1) The decision on a legal action shall be rendered in the form of
a judgment. A decision on the admissibility of the action may be
rendered in the form of an interim judgment.
(2) A decision shall be included in the judgment also on the costs
of the proceedings. The provisions of the Code of Civil Procedure
[Zivilprozessordnung] concerning procedural costs shall apply
mutatis mutandis insofar as equity does not require otherwise; the
provisions of the Code of Civil Procedure relating to the procedure
for the fixation of costs and execution of decisions regarding the
fixation of costs shall apply mutatis mutandis. Section 99(2) shall
remain unaffected.
Section 85
(1) In proceedings regarding the grant of a compulsory license, the
plaintiff may, at his request, be allowed by provisional disposition
to use the invention if he credibly shows that the conditions laid
down in Section 24(1) to (6) have been met and that an immediate
grant of permission is urgently required in the public interest.
(2) The issuance of a provisional disposition can be made dependent
on the posting of security by the petitioner due to the detriment
facing respondent.
(3) The Patent Court shall render its decision on the basis of a
hearing. The provisions of the second sentence of Section 82(3) and
of Section 84 shall apply mutatis mutandis.
(4) The effect of a provisional disposition shall end with the
withdrawal or dismissal of the legal action regarding grant of a
compulsory license (Sections 81 and 85a); the decision as to costs
may be amended if a party applies for amendment within one month
after the withdrawal or after the dismissal becomes final.
(5) Should the issuance of a provisional disposition prove to have
been unjustified ab initio, petitioner shall be required to
compensate the respondent for damages which he has suffered due to
the execution of the provisional disposition.
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(6) The judgment granting the compulsory license may, on request, be
declared provisionally enforceable with or without security, if such
is in the public’s interest. If the judgment is reversed or altered,
the petitioner shall be obliged to compensate the respondent for the
damages he has suffered through the enforcement.
Section 85a
(1) The procedures as stipulated in Article 5(c), Article 6, Article
10(8) and Article 16(1) and (4) of the Regulation (EC) No. 816/2006
of the European Parliament and of the Council of 17 May 2006 on
compulsory licensing of patents relating to the manufacture of
pharmaceutical products for export to countries with public health
problems (OJ, L 157, p. 1) shall be instituted by legal action
pursuant to Section 81(1), sentence 1.
(2) Where the procedures are not determined by Regulation (EC) No.
816/2006, Sections 81 to 85 are to be applied mutatis mutandis.
3. Common Procedural Provisions
Section 86
(1) Sections 41 to 44 and 47 to 49 of the Code of Civil Procedure
[Zivilprozessordnung] shall apply mutatis mutandis to the exclusion
and challenge of members of the Court.
(2) The following shall also be excluded from exercising the office
of judge
1. in appeal proceedings, persons who have participated in the
previous proceedings before the Patent Office;
2. in proceedings regarding declaration of nullity of a patent,
persons who have participated in the proceedings before the Patent
Office or Patent Court relating to the grant of the patent or the
opposition.
(3) A decision on the challenge of a judge shall be rendered by the
board to which the judge who is being challenged belongs. If, as a
result of the withdrawal of the member who has been challenged, the
board is without a quorum, a board of appeal of the Patent Court
consisting of three legal members shall render the decision.
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(4) The decision on the challenge of a registrar shall be rendered
by the board in whose scope of activities the matter falls.
Section 87
(1) The Patent Court shall investigate ex officio the facts of the
case. It shall not be bound by the factual statements and the
requests to take evidence of the parties.
(2) The presiding judge or a member to be designated by him shall,
before the hearing or, in the absence of a hearing, before the
decision is rendered by the Patent Court, make all arrangements
necessary for the matter to be dealt with, if possible, in one
hearing or in one session. In other respects, Section 273(2), (3),
first sentence, and (4), first sentence, of the Code of Civil
Procedure shall apply mutatis mutandis.
Section 88
(1) The Patent Court shall take evidence during the hearing. In
particular, it may undertake inspections, examine witnesses, experts
and the parties involved and consult documents.
(2) In suitable cases, the Patent Court may, prior to the hearing,
have evidence taken by one of its members as commissioned judge or,
specifying particular questions regarding evidence, request another
court to take such evidence.
(3) The parties shall be notified of all dates on which evidence is
to be taken and may attend the taking of evidence. They may put
relevant questions to witnesses and experts. If a question is
objected to, the Patent Court shall decide.
Section 89
(1) As soon as a date for the hearing has been fixed, the parties
shall be summoned with at least two weeks’ notice. In urgent cases,
the presiding judge may shorten this period.
(2) It shall be pointed out in the summons that if a party involved
fails to appear, the case may be heard and decided in his absence.
Section 90
(1) The presiding judge shall open and conduct the hearing.
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(2) After the case is called, the presiding judge or the reporting
judge shall state the essential content of the files.
(3) Thereupon, the parties involved shall be given leave to speak in
order to make and substantiate their requests.
Section 91
(1) The presiding judge shall discuss with the parties involved the
facts and legal aspects of the case.
(2) The presiding judge shall, upon request, permit each member of
the board to ask questions. If a question is objected to, the board
shall decide.
(3) After the discussion of the case, the presiding judge shall
declare the hearing closed. The board may decide to reopen the
hearing.
Section 92
(1) A registrar of the Court shall be called to act as recording
clerk at the hearing and whenever evidence is taken. If, by order of
the presiding judge, no recording clerk is to be called, one of the
judges shall record the minutes.
(2) Minutes of the hearing shall be taken and whenever evidence is
taken. Sections 160 to 165 of the Code of Civil Procedure shall
apply mutatis mutandis.
Section 93
(1) The Patent Court shall make its decisions on the basis of its
independent conviction reached in the light of the results of the
proceedings as a whole. The decision shall state the grounds which
determined the judges’ conviction.
(2) The decision may be based only on facts and the results of
evidence, on which the parties had an opportunity to make
representations.
(3) Where there has been a previous hearing, a judge who had not
been present at the last hearing may participate in the rendering of
the decision only if the parties consent.
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Section 94
(1) Final decisions of the Patent Court shall, if a hearing has
taken place, be pronounced in the court session in which the hearing
was concluded or in a session to be scheduled forthwith. This shall
not be scheduled for later than three weeks except when important
reasons, in particular the volume or the difficulty of the case, so
require. Final decisions shall be served ex officio on the parties.
They may be served on the parties instead of being pronounced in
court. If the Patent Court makes its decision without a hearing,
pronouncement of the decision shall be replaced by service thereof
on the parties.
(2) Decisions of the Patent Court by which a request is refused or a
decision on a legal remedy is made shall state the grounds upon
which the decision is based.
Section 95
(1) Clerical errors, errors in calculation and similar obvious
errors in a decision may at any time be corrected by the Patent
Court.
(2) The correction may be decided without a previous hearing. The
order concerning the correction shall be recorded on the decision
and on the copies of said decision.
Section 96
(1) Where the statement of facts as set out in the decision contains
other mistakes or ambiguities, correction may be requested within
two weeks after service of the decision.
(2) The Patent Court shall decide on this by court order without
taking evidence. In such decisions, only judges who have taken part
in the rendering of the decision whose correction is requested shall
participate. The order concerning the correction shall be recorded
on the decision and the copies of said decision.
Section 97
(1) A party may act itself in a lawsuit before the Patent Court. The
provisions of Section 25 shall remain unaffected.
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(2) A party can be represented by an attorney at law or a patent
attorney as authorized representative. In addition, only the
following shall have the right to act before the Patent Court as
authorized representative:
1. employees of the party or a company affiliated with said party
(Section 15 of Companies Act [Aktiengesetz]); authorities and legal
entities of public law including the combined entities formed by
these parties to meet their public duties can also be represented by
employees of other authorities or legal entities of public law
including the combined entities formed by said parties to meet their
public duties,
2. family members of full age (Section 15 of the Fiscal Code
[Abgabenordnung], Section 11 of the Life Partnership Act
[Lebenspartnerschaftsgesetz]), persons having the qualifications for
judicial office and joint litigants if representation is not in
connection with paid actions.
Authorized representatives that are not natural persons shall act
through their organs and representatives appointed to legal
representation in court.
(3) The Court shall reject by a non-appealable order those
authorized representatives who do not have a right to represent
under the provisions of subsection (2). Any actions in proceedings
by a representative not having a right to represent and any service
of process or delivery of notifications to said representative shall
be effective until said representative is rejected. The Court can
prohibit the representative designated in subsection (2), sentence 2,
from any further representation by non-appealable order if said
representative is not in a position to present the factual and legal
circumstances of the case in an appropriate manner.
(4) Judges may not act as authorized representatives before that
Court to which they belong.
(5) The power of attorney shall be filed in writing at the Court. It
may be filed later; the Patent Court may set a time limit for this
purpose.
(6) The lack of a power of attorney may be raised at any stage of
the proceedings. The Patent Court shall take into account the lack
64
of a power of attorney ex officio, however, not if an attorney at
law or patent attorney acts as the authorized representative.
Section 98 (void)
Section 99
(1) In the absence of provisions in this Act concerning proceedings
before the Patent Court, the Judiciary Law
[Gerichtsverfassungsgesetz] and the Code of Civil Procedure
[Zivilprozessordnung] shall apply mutatis mutandis unless the
special nature of the proceedings before the Patent Court does not
so permit.
(2) The decisions of the Patent Court may only be appealed to the
extent permitted under this Act.
(3) Section 31 shall apply mutatis mutandis to the grant of
permission to a third party to inspect the file of a case. The
request for permission shall be decided upon by the Patent Court.
Permission to inspect the files of proceedings with regard to a
declaration of nullity of a patent shall not be granted if and to
the extent that the patentee proves a conflicting interest
warranting protection.
(4) The first sentence of Section 227(3) of the Code of Civil
Procedure shall not apply.
65
Part 6 Proceedings before the Federal Court of Justice
1. Procedures regarding Appeals on a Point of Law [against court
orders: Rechtsbeschwerde]
Section 100
(1) An appeal on a point of law may be filed with the Federal Court
of Justice from an order issued by a Board of Appeal of the Patent
Court on an appeal under Section 73 or on the maintenance or the
revocation of a patent according to Section 61(2) if the Board of
Appeal in its order has given leave to appeal on a point of law.
(2) An appeal on a point of law shall be permitted if
1. an issue of law of principal importance is to be decided or
2. the further development of the law or the assurance of consistent
case law requires a decision by the Federal Court of Justice.
(3) Leave to appeal on a point of law from an order of a Board of
Appeal of the Patent Court shall not be required if one of the
following procedural deficiencies is involved and objected to:
1. if the court which rendered the order was not properly
constituted;
2. if a judge participated in rendering the order who was excluded
by law from exercising the office of judge or was successfully
challenged on reasonable grounds of suspicion of partiality;
3. if a party to the proceedings was refused the right to be heard;
4. if a party to the proceedings was not represented according to
the provisions of the law, unless he expressly or tacitly agreed
with the conduct of the proceedings;
5. if the order was rendered on the basis of a hearing in which the
provisions on the public nature of proceedings were violated, or
6. if the order does not state the grounds therefor.
Section 101
(1) Any party to proceedings regarding an appeal shall have the
right to lodge an appeal on a point of law.
(2) An appeal on a point of law may only be based on the argument
that the court order is based on a breach of the law. Sections 546
and 547 of the Code of Civil Procedure shall apply mutatis mutandis.
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Section 102
(1) An appeal on a point of law must be lodged in writing with the
Federal Court of Justice within one month after service of the court
order.
(2) In proceedings regarding an appeal on a point of law before the
Federal Court of Justice, the provisions of Section 144 on the
fixation of the value in dispute shall apply mutatis mutandis.
(3) An appeal on a point of law shall state the grounds on which it
is based. The period allowed for stating the grounds shall be one
month; it shall commence with the filing of the appeal on a point of
law and may, upon request, be extended by the presiding judge.
(4) The statement of the grounds for the appeal on a point of law
must contain
1. a declaration as to the extent to which the court order is being
appealed and the extent the modification or reversal thereof is
requested;
2. an indication of the legal rule breached;
3. where the basis for the appeal on a point of law is the argument
that the law in respect of procedure was breached, a statement of
the facts constituting the defect.
(5) The parties must be represented before the Federal Court of
Justice by an attorney at law admitted to practice before this Court
as authorized representative. At the request of any party, said
party’s patent attorney shall be given leave to speak. Section
143(3) shall apply mutatis mutandis.
Section 103
An appeal on a point of law shall have suspensive effect. Section
75(2) shall apply mutatis mutandis.
Section 104
The Federal Court of Justice shall examine ex officio whether an
appeal on a point of law is in itself permissible and whether it has
been filed and the grounds for the appeal have been stated in the
form provided by law and within the prescribed time limit. If any of
these requirements is not met, the appeal on a point of law shall
have to be dismissed as inadmissible.
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Section 105
(1) Where more than one person is party to the proceedings regarding
an appeal on a point of law, the notice of appeal and the statement
of the grounds for the appeal shall be served on the other parties
with the invitation to file declarations, if any, in writing with
the Federal Court of Justice within a given period after service.
The date on which the appeal was filed shall be communicated with
the service of the appeal on a point of law. The appellant shall
file the required number of certified copies together with the
notice of appeal or the statement of the grounds for the appeal.
(2) When the President of the Patent Office is not a party to
proceedings regarding an appeal on a point of law, Section 76 shall
apply mutatis mutandis.
Section 106
(1) In proceedings regarding an appeal on a point of law, the
provisions of the Code of Civil Procedure concerning exclusion and
challenge of members of the Court, authorized representatives and
legal assistants, ex-officio service of documents, summonses,
sessions and time limits, and reinstatement shall apply mutatis
mutandis. In the case of reinstatement, Section 123(5) to (7) shall
apply mutatis mutandis.
(2) As to the public nature of proceedings, Section 69(1) shall
apply mutatis mutandis.
Section 107
(1) The decision on an appeal on a point of law shall be rendered by
court order; it can be made without a hearing.
(2) The Federal Court of Justice shall be bound, when rendering its
decision, by the facts established in the appealed court order,
except when admissible and substantiated grounds for an appeal on a
point of law are put forward with regard to such facts.
(3) The decision shall state the grounds on which it is based and
shall be served on the parties ex officio.
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Section 108
(1) In the event of reversal of the appealed court order, the case
shall be remanded to the Patent Court for a further hearing and
decision.
(2) The Patent Court shall be bound to base its decision on the
legal assessment on which the remand is based.
Section 109
(1) Where more than one person is party to the proceedings regarding
an appeal on a point of law, the Federal Court of Justice may decide
that the costs necessary for the appropriate final disposal of the
matter shall be borne in whole or in part by one of the parties if
and to the extent that this is equitable. If the appeal is rejected
or dismissed as inadmissible, the costs incurred owing to the appeal
on a point of law shall be imposed on the appellant. Costs arising
from gross negligence by one of the parties shall be imposed on said
party.
(2) Costs may be imposed on the President of the Patent Office only
if he lodged the appeal on a point of law or filed requests in the
proceedings.
(3) In other respects, the provisions of the Code of Civil Procedure
relating to the procedure for the fixation of costs and execution of
decisions regarding the fixation of costs shall apply mutatis
mutandis.
2. Procedures regarding Appeals [against judgments: Berufung]
Section 110
(1) An appeal from a judgment [Berufung] of a Nullity Board of the
Patent Court (Section 84) can be filed to the Federal Court of
Justice.
(2) The appeal [Berufung] may be filed by submission of a notice of
appeal to the Federal Court of Justice.
(3) The time limit for said appeal shall be one month. It shall
commence with service of the full text of the judgment, but at the
latest upon expiry of five months after pronouncement.
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(4) The notice of appeal shall contain
1. the designation of the judgment against which the appeal is
directed;
2. a statement that the appeal is filed against said judgment.
(5) The general provisions of the Code of Civil Procedure regarding
the preparatory briefs are to be applied also to the notice of
appeal.
(6) The notice of appeal is to be accompanied by an original or a
certified copy of the contested judgment.
(7) Orders of the nullity boards shall be subject to appeal only
together with their judgments (Section 84); Section 71(3) Code of
Civil Procedure shall not apply.
(8) Sections 515, 516 and 521 (1) and (2), sentence 1, Code of Civil
Procedure shall apply mutatis mutandis.
Section 111
(1) An appeal may be based only on the fact that the decision of the
Patent Court was based on a breach of federal law or that such facts
to be considered pursuant to Section 117 justify a different
decision.
(2) The law is breached if a legal rule has not been applied or not
correctly applied.
(3) A decision is always to be considered as based on a breach of
the law
1. if the Patent Court was not properly constituted;
2. if a judge participated in the rendering of the decision who was
excluded by law from exercising the office of judge unless this bar
was unsuccessfully asserted by a challenging petition;
3. if a judge participated in the rendering of the decision although
he had been challenged on grounds of suspicion of partiality and the
challenging petition was declared to be substantiated;
4. if a party to the proceedings was not represented according to
the provisions of law, unless said party expressly or tacitly agreed
with the conduct of the proceedings;
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5. if the decision was rendered on the basis of a hearing in which
the provisions on the public nature of proceedings were violated;
6. if the decision does not state the grounds therefor, contrary to
the provisions of the law.
Section 112
(1) The appellant shall state the grounds of the appeal.
(2) When not already contained in the notice of appeal, the grounds
of the appeal shall be filed in a brief to the Federal Court of
Justice. The time limit for submitting the grounds of appeal shall
be three months. It shall commence on the date of service of the
full text of the judgment, at the latest, however, upon expiry of
five months after pronouncement. The time limit may be extended by
the presiding judge upon request if the adversary should consent. If
adversary should not consent, the time limit may be extended by up
to one month if the presiding judge is independently convinced that
the lawsuit will not be delayed by the extension or if the appellant
can show significant grounds. If the appellant cannot be permitted
inspection of the court files for an appropriate time period within
this time limit, the presiding judge may extend, upon a request, the
time limit by up to two months after the files have been forwarded.
(3) The grounds of appeal shall contain:
1. a statement as to the extent to which the judgment is being
appealed and the reversal thereof being requested (appeal requests);
2. stipulation of the grounds of appeal, i.e.
a) by presenting the circumstances that gave rise to the breach of a
right;
b) where the appeal is based on the assertion that the law has been
breached with regard to the procedure by presenting the facts
resulting in the defect;
c) by presenting new means of attack and defense as well as facts,
on the basis of which the new means of attack and defense are to be
permitted pursuant to Section 117.
(4) Section 110(5) is to be applied mutatis mutandis to the grounds
of appeal.
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Section 113
Parties shall be represented before the Federal Court of Justice by
an attorney at law or by a patent attorney as authorized
representative. The authorized representative shall be permitted to
appear accompanied by a technical advisor.
Section 114
(1) The Federal Court of Justice shall examine ex officio whether an
appeal is permissible as such and whether it has been filed in the
statutory form and within the statutory time limit and grounds were
given. In the event of failure to comply with any one of these
requirements, the appeal shall be dismissed as inadmissible.
(2) A decision may be taken by means of a court order.
(3) When an appeal is not dismissed as inadmissible by a court order,
a date for the hearing shall be scheduled and the parties advised
thereof.
(4) Section 525 Code of Civil Procedure shall apply mutatis mutandis.
Sections 348 to 350 Code of Civil Procedure are not to be applied.
Section 115
(1) A respondent may file a cross-appeal. Such a cross-appeal shall
even then be permissible if the respondent has relinquished his
right to appeal or has allowed the deadline for appeal to lapse.
(2) A cross-appeal shall be made by filing the brief announcing the
cross-appeal to the Federal Court of Justice, and this must be
declared by the end of the two months following service of the
grounds of appeal. Where a respondent has been awarded a time limit
to respond to an appeal, a cross-appeal shall be permissible up
until this time limit expires.
(3) The cross-appeal must be substantiated in the brief announcing
said cross-appeal. Sections 110(4), (5) and (8) as well as 112(3)
shall apply mutatis mutandis.
(4) The cross-appeal shall not be effective if the appeal is
withdrawn or dismissed.
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Section 116
(1) The Federal Court of Justice shall only examine the requests
filed by the parties.
(2) An amendment of a legal action or, in proceedings to declare the
nullity of a patent or a supplementary protection certificate, a
defense with an amended version of the patent shall only then be
admissible if
1. the adversary consents or the Federal Court of Justice considers
the amendment of the requests to be expedient and
2. the amended requests can be based on facts which the Federal
Court of Justice shall have to use as a basis for its hearing and
decision on the appeal pursuant to Section 117.
Section 117
Sections 529, 530 and 531 Code of Civil Procedure shall apply
mutatis mutandis to the scope of examination by the court of appeal,
and to the late-filed, rejected and new means of attack and defense.
Section 112 shall take the place of Section 520 Code of Civil
Procedure.
Section 118
(1) A judgment by the Federal Court of Justice shall be rendered on
the basis of a hearing. Section 69(2) shall apply mutatis mutandis.
(2) A summons shall be served with at least two weeks’ notice.
(3) A hearing may be dispensed with if
1. the parties consent; or
2. only the costs are to be decided.
Should none of the parties appear at the hearing, the judgment may
be rendered based on the files.
Section 119
(1) Should the grounds of a contested judgment include a breach of
the law, but the decision itself is for other reasons correct, the
appeal shall have to be rejected.
(2) Should the appeal be considered to be substantiated, the
contested judgment shall have to be set aside. Should the judgment
be set aside due to a procedural defect, said procedure shall also
73
have to be discontinued to the extent that it was affected by the
defect.
(3) When a judgment is set aside, the matter shall have to be
remanded for a new hearing and decision to the Patent Court. The
case may be remanded to a different nullity board.
(4) The Patent Court shall also have to base its decision on the
legal assessment that was the basis for the reversal.
(5) The Federal Court of Justice may decide the case on its merits
where this is expedient. The Federal Court of Justice must decide
if a case is ripe for final decision.
Section 120
The decision does not have to be reasoned should the Federal Court
of Justice consider the objections to procedural defects to not be
valid. This shall not apply to objections pursuant to Section 111(3).
Section 121
(1) The provisions of Section 144 concerning fixation of the value
in dispute shall apply mutatis mutandis in proceedings before the
Federal Court of Justice.
(2) A decision on the costs of the proceedings shall be included in
the judgment. The provisions of the Code of Civil Procedure
[Zivilprozessordnung] concerning the costs of the law suit (Sections
91 to 101) shall apply mutatis mutandis unless equity should require
a different decision; the provisions of the Code of Civil Procedure
on the procedure for the fixation of costs (Sections 103 to 107) and
execution of decisions regarding the fixation of costs (Sections 724
to 802) shall apply mutatis mutandis.
3. Procedures regarding Specific Appeals [Beschwerde]
Section 122
(1) A specific appeal [Beschwerde] may be filed to the Federal Court
of Justice appealing a judgment of a Nullity Board of the Patent
Court regarding the issuance of a provisional disposition in
proceedings relating to the grant of a compulsory license (Sections
85 and 85a). Section 110(7) shall apply mutatis mutandis.
74
(2) The appeal shall be lodged in writing with the Federal Court of
Justice within one month after service of the decision.
(3) The time limit for appeal shall commence with service of the
full text of the judgment, but at the latest upon expiry of five
months after it has been pronounced.
(4) Sections 74(1), 84 and 110 to 121 shall apply mutatis mutandis
with respect to the proceedings before the Federal Court of Justice.
4. Common Procedural Provisions
Section 122a
Upon an objection by a party adversely affected by a decision, the
proceedings shall be continued if the Court has violated said
party’s right to be heard in a manner significant for the decision.
The objection may not be brought against a decision preceding the
final decision. Section 321a(2)-(5) of the Code of Civil Procedure
shall apply mutatis mutandis.
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Part 7 Common Provisions
Section 123
(1) Any person who, through no fault of his own, has been prevented
from observing a time limit vis-à-vis the Patent Office or the
Patent Court, the failure of observing it being detrimental to his
rights according to the provisions of the law, shall, on request,
have his rights reinstated. This provision shall not apply to the
time limits
1. for filing an opposition (Section 59(1)) or for payment of the
opposition fee (Section 6(1), sentence 1, of the Patent Cost Act),
2. allowed an opponent for filing an appeal [Beschwerde] against the
maintenance of a patent (Section 73(2)) or for payment of the appeal
fee (Section 6(1), sentence 1, of the Patent Cost Act) or
3. for filing patent applications for which a priority under Section
7(2) and Section 40 may be claimed.
(2) Reinstatement must be requested in writing within two months
after the removal of the impediment. The request shall state the
facts justifying the reinstatement; these facts must be credibly
shown in the request or in the proceedings concerning the request.
The omitted act must be completed within the time limit for the
request; if this is done, reinstatement may be granted without a
request. After one year from the expiration of the time limit which
has not been observed, reinstatement may no longer be requested and
the omitted act may no longer be completed.
(3) A decision on the request shall be taken by the authority that
is required to decide on the action to be completed.
(4) The decision on reinstatement shall not be appealable.
(5) Any person who, in Germany, has in good faith commenced to use
the subject matter of a patent which as a result of reinstatement
has re-entered into force, in the period between the lapse and the
re-entry into force of the patent or has, in this period, made the
necessary arrangements for such purpose, shall be entitled to
continue to use the subject matter of the patent for the needs of
his own business in workshops of his own or others. This entitlement
may only be bequeathed or transferred together with the business.
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(6) Subsection (5) shall apply mutatis mutandis if, as a result of
reinstatement, the provisions of Section 33(1) again become
effective.
(7) Any person who, in Germany, has in good faith used the subject
matter of an application which, as a result of reinstatement, claims
the priority of an earlier foreign application (Section 41), in the
period between the expiry of the 12-month time limit and the re-
entry into force of the priority right, or has, within this period,
made the necessary arrangements for such purpose, shall also be
entitled in accordance with subsection (5).
Section 123a
(1) When a patent application is rejected after a time limit set by
the Patent Office has not been observed, the decision to reject will
become ineffective without expressly having to be set aside if the
applicant requests the further processing of the application and
completes the omitted act.
(2) The request shall be filed within a time limit of one month
after service of the decision on rejection of the patent application.
The omitted act must be completed within this time limit.
(3) Reinstatement is not possible if the time limit pursuant to
subsection (2) or the time limit to pay the further processing fee
as prescribed by Section 6(1), sentence 1, of the Patent Cost Act is
not observed.
(4) That Section shall decide on the request which must decide on
the act to be completed.
Section 124
In proceedings before the Patent Office, the Patent Court and the
Federal Court of Justice, the parties shall make their statements on
the factual circumstances fully and truthfully.
Section 125
(1) Where an opposition or legal action regarding declaration of
nullity of a patent is based on the assertion that the subject
matter of the patent is not patentable under Section 3, the Patent
Office or the Patent Court may require that originals, photocopies
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or certified copies of the publications mentioned in the opposition
or in the legal action which are not available at the Patent Office
or Patent Court be submitted, with one copy each for the Patent
Office or Patent Court and for the parties to the proceedings.
(2) Uncertified or certified translations of publications in a
foreign language shall have to be provided when required by the
Patent Office or Patent Court.
Section 125a
(1) To the extent that in proceedings before the Patent Office the
written form is required for applications, requests and other
actions, the provisions of Sections 130a(1), sentences 1 and 3 as
well as (3) of Code of Civil Procedure shall apply mutatis mutandis.
(2) The case records of the Patent Court and of the Federal Court of
Justice may be kept in electronic form. The provisions of the Code
of Civil Procedure regarding electronic documents, electronic files
and the electronic conduct of proceedings shall apply in other
respects unless otherwise provided in this law.
(3) The Federal Ministry of Justice shall determine by a statutory
order not requiring approval by the Bundesrat (body of the German
legislature representing the German states)
1. the date after which electronic documents may be submitted to the
Patent Office and the courts, and the form suited for processing the
documents and the electronic signature to be used;
2. the date after which the case records pursuant to subsection (2)
may be kept electronically as well as the general organizational and
technical conditions to be applied here for the formation,
processing and storage of the electronic case records.
Section 126
The language of the Patent Office and Patent Court shall be German,
where not otherwise provided. In other respects, the provisions of
the Judiciary Act [Gerichtsverfassungsgesetz] concerning the
language of the courts shall be applicable.
Section 127
(1) Regarding service of documents in proceedings before the Patent
Office, the provisions of the Law on Service in Administrative
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Procedures [Verwaltungszustellungsgesetz] shall apply, subject to
the following:
1. If acceptance of service by registered letter is refused without
such grounds as are provided by law, service shall nevertheless be
deemed to have been effected;
2. Service to an addressee who resides abroad and who has not,
contrary to the requirement of Section 25, appointed a German
representative may be effected by registered letter mailed from a
post office. The same shall apply to addressees who are themselves
German representatives within the terms of Section 25(2). Section
184(2), sentences 1 and 4, of the Code of Civil Procedure shall
apply mutatis mutandis;
3. For the purposes of service upon holders of certificates of
representation (Section 177 of the Patent Attorney Regulations
[Patentanwaltsordnung]), Section 5(4) of the Law on Service in
Administrative Procedures shall apply mutatis mutandis;
4. Documents may be served on addressees for whom a mail box has
been installed at the Patent Office also by depositing the documents
in the mail box of the addressee. A written statement regarding the
deposit shall be made in the files of the case. The time of the
deposit shall be recorded on the document. Service shall be deemed
to have been effected on the third day after deposit in the mail box.
5. (void)
(2) The provisions of the Code of Civil Procedure shall apply to
service in proceedings before the Federal Patent Court.
Section 128
(1) The courts shall be required to furnish legal assistance to the
Patent Office and the Patent Court.
(2) In proceedings before the Patent Office, the Patent Court shall,
at the request of the Patent Office, prescribe disciplinary means or
coercive means [Ordnungs- oder Zwangsmittel] against witnesses or
experts who fail to appear or who refuse to give evidence or to give
it under oath. Enforcement of the summons served on a witness who
has failed to appear shall likewise be ordered.
(3) A Board of Appeal of the Patent Court composed of three legal
members shall decide on the request under subsection (2).
Pronouncement in such a case shall take the form of a court order.
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Section 128a
Witnesses shall receive compensation and experts shall receive
remuneration according to the Court Payment and Reimbursement Act
[Justizvergütungs- und entschädigungsgesetz].
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Part 8 Legal Aid
Section 129
In proceedings before the Patent Office, the Patent Court and the
Federal Court of Justice, parties shall be granted legal aid in
accordance with the provisions of Sections 130 to 138.
Section 130
(1) In proceedings regarding the grant of a patent, an applicant for
a patent shall, on request, subject to the application mutatis
mutandis of Sections 114 to 116 of the Code of Civil Procedure, be
granted legal aid if there are adequate prospects that the patent
will be granted. Legal aid can also be granted upon the request of
the applicant or patentee for the annual fees pursuant to Section
17(1). Payments shall be made to the Federal Treasury.
(2) The grant of legal aid shall have the effect that the legal
consequences resulting from the non-payment of the fees which are
the subject of legal aid shall not come into effect. In other
respects, Section 122(1) of the Code of Civil Procedure shall apply
mutatis mutandis.
(3) Where more than one person applies for a patent jointly, legal
aid shall be granted all only if all the applicants for the patent
meet the requirements of subsection (1).
(4) Where the applicant or patentee is not the inventor or his sole
successor in title, legal aid shall be granted only if the inventor
also meets the requirements of subsection (1).
(5) On request, as many annual fees shall be included in the legal
aid as are necessary to avoid a limitation opposing a grant of legal
aid under Section 115(3) of the Code of Civil Procedure. The
installments paid shall be set off against the annual fees only when
the costs of the patent-granting procedure, including costs possibly
arising for an assigned representative, are covered by the payment
of the installments. Where the annual fees can be considered as paid
by the payment of the installments, Section 5(2) of the Patent Cost
Act shall apply mutatis mutandis.
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(6) In cases specified in Sections 43 and 44, subsections (1) to (3)
shall apply mutatis mutandis to the third party filing the request
if said third party can credibly show a personal interest warranting
protection.
Section 131
In proceedings regarding limitation or revocation of a patent
(Section 64), the provisions of Section 130(1), (2) and (5) shall
apply mutatis mutandis.
Section 132
(1) In proceedings regarding opposition (Sections 59 to 62), a
patentee shall, on request, be granted legal aid, subject to the
application mutatis mutandis of Sections 114 to 116 of the Code of
Civil Procedure and Section 130(1), second sentence, and (2), (4)
and (5). In this respect, it shall not be examined whether the legal
defense offers an adequate prospect of success.
(2) The first sentence of subsection (1) shall apply mutatis
mutandis to the opponent and to the third party intervening under
Section 59(2) as well as to the parties in proceedings regarding
nullity of a patent or regarding a compulsory license (Sections 81,
85 and 85a) if the petitioner can credibly show a personal interest
warranting protection.
Section 133
A party who has been granted legal aid in accordance with the
provisions of Sections 130 to 132 may, on request, be assigned a
patent attorney or attorney at law of his choice who is prepared to
represent him, or, on express demand, a holder of a certificate of
representation, if such assignment appears necessary for the proper
handling of the proceedings or a party with conflicting interests is
represented by a patent attorney, an attorney at law or a holder of
a certificate of representation. Section 121(4) and (5) of the Code
of Civil Procedure shall apply mutatis mutandis.
Section 134
Should a request for the grant of legal aid in accordance with
Sections 130 to 132 be filed prior to the expiration of a time limit
prescribed for the payment of a fee, said time limit shall be
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interrupted until the expiration of one month after service of the
decision on the request.
Section 135
(1) A request for the grant of legal aid shall be filed in writing
with the Patent Office, the Patent Court or the Federal Court of
Justice. In proceedings under Sections 110 and 122, the request may
also be declared and recorded at the registrar’s office of the
Federal Court of Justice. Section 125a shall apply mutatis mutandis.
(2) The decision on a request shall be made by the Section competent
for the proceedings in respect of which legal aid is sought.
(3) Decisions rendered under Sections 130 to 133 shall not be
appealable except for decisions of the Patent Division refusing the
grant of legal aid or the assignment of a representative under
Section 133; an appeal on a point of law is precluded. Section
127(3) of the Code of Civil Procedure shall apply mutatis mutandis
to proceedings before the Patent Court.
Section 136
The provisions of Sections 117(2) to (4), 118(2) and (3), 119 and
120(1), (3) and (4) as well as Sections 124 and 127(1) and (2) of
the Code of Civil Procedure shall apply mutatis mutandis, and
Section 127(2) of the Code of Civil Procedure shall apply subject to
the proviso that the appeal is permissible irrespective of the value
in dispute. In opposition proceedings and in proceedings to obtain a
declaration of nullity of a patent or a compulsory license (Sections
81, 85 and 85a), the same shall also apply to Sections 117(1),
second sentence, 118(1), 122(2), and Sections 123, 125 and 126 of
the Code of Civil Procedure.
Section 137
Legal aid may be withdrawn if the invention filed or protected by a
patent, regarding which legal aid was granted, is commercially
exploited through transfer, use, licensing or in any other manner,
and the income earned thereby has changed the circumstances relevant
for the grant of legal aid such that the payment of the costs of
proceedings can reasonably be expected of the party concerned; this
shall also apply after the expiry of the time limit laid down in
Section 124, no. 3, of the Code of Civil Procedure. The party to
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whom legal aid has been granted shall be obliged to report on any
commercial exploitation of the relevant invention to the authority
which made the decision on the grant.
Section 138
(1) In proceedings relating to appeals on a point of law against
court orders (Section 100), legal aid shall be granted to a party,
upon request, under application of Sections 114 to 116 of the Code
of Civil Procedure mutatis mutandis.
(2) The request for the grant of legal aid shall be filed in writing
with the Federal Court of Justice; it may also be declared and
recorded at the registrar’s office of the Court. The Federal Court
of Justice shall decide on the request.
(3) In other respects, the provisions of Sections 130(2), (3), (5)
and (6), 133, 134, 136 and 137 shall apply mutatis mutandis, subject
to the proviso that only an attorney at law admitted to practice
before the Federal Court of Justice may be assigned to a party that
has been granted legal aid.
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Part 9 Infringements
Section 139
(1) Any person who uses a patented invention in contravention of
Sections 9 through 13 may, if there is danger of repetition, be sued
by the injured party for injunctive relief. This claim shall also
apply if there is a danger of first perpetration.
(2) Any person who intentionally or negligently undertakes such an
act shall be liable to the injured party for compensation of the
damages incurred thereby. When assessing the damages, the profit
which the infringer has made by infringing the right may also be
taken into account. The claim for compensation of damages may also
be calculated on the basis of the amount the infringer would have
had to pay as an adequate remuneration had he obtained the
authorization to use the invention.
(3) Where the subject matter of a patent is a process for obtaining
a new product, the same product made by another shall, in the
absence of proof to the contrary, be deemed to have been made using
the patented process. When taking contrary evidence, the legitimate
interests of the defendant in protecting his manufacturing and
business secrets are to be taken into account.
Section 140
If, prior to the grant of the patent, rights based on an application,
the files of which may be inspected by any person (Section 31(1),
second half of sentence 2, and (2)), are asserted in court
proceedings, and if deciding the lawsuit depends on whether there is
a claim under Section 33(1), the court may order that the
proceedings be stayed until a decision on grant of the patent is
rendered. If a request for examination has not been filed pursuant
to Section 44, the court must, upon the request of the adversary,
set a time-limit to the party claiming rights from the application
for filing the request for examination. If the request for
examination is not filed within said time-limit, the rights derived
from the application may not be asserted in the lawsuit.
Section 140a
(1) Any person who uses a patented invention in contravention of
Sections 9 through 13 may be sued by the injured party for
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destruction of the products in the possession or ownership of the
infringer that are the subject matter of the patent. The provision
of sentence 1 is also to be applied if said products have been
directly made by a process that is a subject matter of the patent.
(2) The provisions of subsection (1) are to apply mutatis mutandis
to the materials and apparatuses in the ownership of the infringer
that served predominantly to make these products.
(3) Any person who uses a patented invention in contravention of
Sections 9 through 13 can be sued by the injured party for recall of
the products that are a subject matter of the patent or for their
definitive removal from the distribution channels. The provision of
sentence 1 is also to be applied where products are concerned that
have been directly made by a process that is a subject matter of the
patent.
(4) The claims pursuant to subsections (1) through (3) shall be
precluded if in the specific case such a claim is disproportionate.
When assessing proportionality, the legitimate interests of third
parties shall also be taken into account.
Section 140b
(1) Any person who uses a patented invention in contravention of
Sections 9 through 13 may be sued by the injured party for prompt
information as to the origin and the distribution channel of the
products used.
(2) In cases where the infringement is obvious or in cases where the
injured party has filed a legal action against the infringer, the
claim also applies, irrespective of subsection (1), against any
person that, on a commercial scale,
1. had infringing products in its possession,
2. made use of infringing services,
3. provided services used for infringing acts, or
4. participated, according to the statement of one of the persons
referred to in nos. 1, 2 or 3, in the manufacture, production or
distribution of said products or the provision of said services,
except if said person is entitled to refuse to give evidence against
the infringer in the lawsuit pursuant to Sections 383 to 385 Code of
Civil Procedure. If the claim to information provided for in
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sentence 1 is asserted in court, the court may, upon request, stay
the lawsuit pending against the infringer until the lawsuit
regarding the claim to information is disposed of. The person
required to provide information can demand from the injured party
reimbursement of the expenditures required for providing said
information.
(3) The person required to provide information must specify
1. the names and addresses of the manufacturers, suppliers and other
previous possessors of the products or users of the services as well
as the commercial customers and sales outlets, for which said
products were intended, and
2. the quantities of products manufactured, delivered, received or
ordered as well as the prices paid for the respective products or
services.
(4) The claims pursuant to subsections (1) and (2) shall be
precluded if in the specific case such a claim is disproportionate.
(5) Where the person required to provide information intentionally
or with gross negligence provides information that is incorrect or
incomplete, said person shall be liable to compensate the injured
party for any damages incurred due to this.
(6) The person that has provided correct information without being
required to do so pursuant to subsections (1) or (2) shall be liable
vis-à-vis a third party only if said providing person knew that he
was not required to provide the information.
(7) In such cases where the infringement of a right is obvious, the
requirement to provide information can be ordered by a provisional
disposition pursuant to Sections 935 to 945 of the Code of Civil
Procedure.
(8) Such knowledge may be used against the person required to give
information or against a relative as indicated in Section 52(1) of
the Code of Criminal Procedure in criminal proceedings or in
proceedings under the Regulatory Offences Act (Gesetz über
Ordnungswidrigkeiten) prosecuted with regard to an act committed
before the information was provided only with the consent of the
person required to give the information.
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(9) Where the information can only be provided by use of
communication data (Section 3, No. 30, of the Law on
Telecommunications), a prior court order regarding the admissibility
of the use of the communication data shall be required, to be
requested by the injured party. The Regional Court in the district
where the party required to provide information has its domicile,
its seat or branch office shall have exclusive jurisdiction for the
issuance of this order, irrespective of the value in dispute. The
decision shall be rendered by the civil chamber. The rules and
provisions of the Act Relating to Matters of Non-contentious
Jurisdiction (Gesetz über die Angelegenheiten der freiwilligen
Gerichtsbarkeit) shall apply mutatis mutandis to this procedure,
with the exception of Section 28(2) and (3). The costs of the court
order shall be borne by the injured party. The decision of the
Regional Court may be appealed by an immediate appeal to the Higher
Regional Court. The sole admissible basis for such an immediate
appeal shall be a point of law. The decision of the Higher Regional
Court shall be final. In other respects, the rules and provisions
regarding protection of personal data shall not be affected.
(10) The basic right to secrecy of telecommunications (Article 10 of
the Basic Constitutional Law) is restricted by subsection (2) in
conjunction with subsection (9).
Section 140c
(1) A person who, with sufficient degree of certainty, uses a
patented invention in contravention of Sections 9 to 13 can be sued
by the right-holder or by another authorized party for production of
a document or inspection of an object which is at said person’s
disposal, or inspection of a process that is the subject matter of
the patent, if this is required to substantiate the right holder's
or other authorized party's claims. If there is sufficient certainty
of an infringement committed on a commercial scale, the claim shall
also extend to the production of bank, financial or commercial
documents. Should the presumed infringer assert that the information
is confidential, the court shall take the necessary steps to ensure
the proper protection in the specific case.
(2) The claim pursuant to subsection (1) shall be precluded if it is
disproportionate in the specific case.
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(3) The obligation to produce a document or to accept inspection of
an object may be ordered by a provisional disposition pursuant to
Sections 935 to 945 Code of Civil Procedure. The court shall take
the necessary steps to ensure protection of confidential information.
This shall apply in particular when the provisional disposition is
issued without a prior hearing of the adversary.
(4) Section 811 Civil Code as well as Section 140b(8) shall apply
mutatis mutandis.
(5) Where there was no infringement or threat of infringement, the
presumed infringer may demand from the person that has requested
production or inspection pursuant to subsection (1), compensation of
the damages he has incurred due to the request.
Section 140d
(1) In the case of an infringement committed on a commercial scale,
the injured party may sue the infringer in the cases stipulated in
Section 139(2) also for production of bank, financial and commercial
documents or for suitable access to the corresponding documents
which are at the disposal of the infringer and are required to
enforce the claim to compensation of damages if, without said
production, satisfaction of the claim to compensation of damages
might be questionable. Should the infringer assert that the
information is confidential, the court shall take the necessary
steps to ensure the proper protection in the specific case.
(2) The claim pursuant to subsection (1) shall be precluded if it is
disproportionate in the specific case.
(3) The obligation to produce the documents stipulated in subsection
(1) may be ordered by a provisional disposition pursuant to Sections
935 to 945 Code of Civil Procedure, if the claim to compensation of
damages obviously exists. The court shall take the necessary steps
to ensure protection of confidential information. This shall apply
in particular in those cases when the provisional disposition is
issued without prior hearing of the adversary.
(4) Section 811 Civil Code as well as Section 140b(8) shall apply
mutatis mutandis.
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Section 140e
When a legal action has been brought on the basis of this Act, it
may be ordered in the judgment in favor of the prevailing party that
said party may make the judgment public at the expense of the losing
party, if the prevailing party can show a legitimate interest
therein. The type and extent of publication shall be determined in
the judgment. The permission shall expire if use is not made thereof
within three months after the judgment becomes final. Said
pronouncement pursuant to sentence 1 shall not be provisionally
enforceable.
Section 141
As regards the period of limitation for claims due to infringement
of a patent right, the provisions of Part 5 of Book 1 of the Civil
Code shall apply mutatis mutandis. If the infringer has gained
something through the infringement at the expense of the entitled
party, Section 852 of the Civil Code shall be applicable mutatis
mutandis.
Section 141a
Claims based on other statutory provisions shall not be affected
hereby.
Section 142
(1) Any person shall be punished by imprisonment not exceeding three
years or by a fine, who, without the required consent of the
patentee or of the owner of a supplementary protection certificate
(Sections 16a, 49a),
1. makes or offers, puts on the market, uses or imports or possesses
for said purposes a product which is the subject matter of the
patent or of the supplementary protection certificate (Section 9,
sentence 2, no. 1); or
2. uses or offers for use within the territory to which this Act
applies a process which is the subject matter of the patent or of
the supplementary protection certificate (Section 9, sentence 2, no.
2);
The provision of sentence 1, no. 1, is also to be applied if the
product has been directly made by a process which is the subject
matter of the patent or of the supplementary protection certificate
(Section 9, sentence 2, no. 3).
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(2) When the offender is acting on a commercial scale, the penalty
shall be imprisonment for up to five years or a fine.
(3) The attempt is punishable.
(4) In the cases referred to in subsection (1), the act shall only
be prosecuted on demand, unless the criminal prosecution authority
deems that prosecution ex officio is justified due to a particular
public interest.
(5) Objects to which the criminal act relates may be confiscated.
Section 74a of the Criminal Code shall apply. Where the claims
referred to in Section 140a are granted in proceedings under the
provisions of the Code of Criminal Procedure (Strafprozessordnung)
regarding compensation of the injured party (Sections 403 to 406c),
the provisions on confiscation shall not be applied.
(6) When a penalty is imposed, the court shall, at the request of
the injured party and if the latter can show a legitimate interest,
order publication of the judgment. The form of publication shall be
determined in the judgment.
Section 142a
(1) A product that infringes a patent protected by this Act shall be
subject upon import or export, upon the application of the right
holder and upon his posting of security, to seizure by the customs
authorities when infringement is obvious and if Council Regulation
(EC) No. 1383/2003 of 22 July 2003 Concerning Customs Action against
Goods Suspected of Infringing Certain Intellectual Property Rights
and the Measures to be Taken against Goods Found to Have Infringed
Such Rights (OJ, L 196, p. 7), in the valid version, is not to be
applied. This shall apply in trade with other Members States of the
European Union as well as with the other contracting states of the
European Economic Area Agreement only insofar as controls are
carried out by the customs authorities.
(2) If the customs authorities order a seizure, they shall advise
the person entitled to dispose of the product and also the applicant
without delay. The origin, quantity and place of storage of the
product, together with the name and address of the person entitled
to dispose of the product, shall be communicated to the applicant;
91
the right to secrecy of correspondence and of mail (Article 10 of
the Basic Constitutional Law) shall be restricted to that extent.
The applicant shall be given the opportunity to inspect the product
where such inspection does not constitute a breach of trade or
business secrets.
(3) When no objection to the seizure is filed at the latest within
two weeks of service of the notification under the first sentence of
subsection (2), the customs authorities shall order confiscation of
the seized product.
(4) Should the person entitled to dispose of the product object to
the seizure, the customs authorities shall inform the applicant
thereof without delay. The applicant shall declare to the customs
authorities without delay whether he will maintain the application
under subsection (1) in respect of the seized product.
1. If the applicant withdraws his application, the customs
authorities shall lift the seizure without delay.
2. If the applicant maintains his application and submits an
enforceable court decision ordering the impounding of the seized
product or limitation of the right to dispose thereof, the customs
authorities shall take the necessary measures.
Where neither of the cases referred to in nos. 1 and 2 are
applicable, the customs authorities shall lift the seizure after
expiry of two weeks after service of the notification to the
applicant under the first sentence; should the applicant show that a
court decision according to no. 2 has been requested, but has not
yet been received, the seizure shall be maintained for a further two
weeks at the most.
(5) Where the seizure proves to have been unjustified from the
outset and if the applicant has maintained the application under
subsection (1) with respect to the seized product or has not made a
declaration without delay (second sentence of subsection (4)), said
applicant shall be required to compensate the damages that the party
entitled to dispose of the product has incurred owing to seizure.
(6) The application under subsection (1) must be submitted to the
Federal Finance Directorate [Bundesfinanzdirektion] and shall be
effective for one year unless a shorter period of validity has been
applied for; it may be repeated. The costs of the official acts
92
related to the application shall be charged to the applicant in
accordance with Section 178 Fiscal Code (Abgabeordnung).
(7) Seizure and confiscation may be challenged with the legal
remedies allowed in administrative penalty procedures under the
Regulatory Offences Act (Gesetz über Ordnungswidrigkeiten) with
respect to seizure and confiscation. The applicant shall be heard in
the legal remedy proceedings. An immediate appeal against the
decision of the Local Court (Amtsgericht) is admissible; it shall be
heard by the Higher Regional Court.
Section 142b
(1) If the competent customs authority detains or suspends the
release of goods pursuant to Article 9 of Council Regulation (EC) No.
1383/2003, said authority shall immediately inform the right holder
of this action as well as the applicant or the possessor or the
owner of the goods.
(2) In the case as stipulated in subsection (1), the right holder
can request that the goods be destroyed using the simplified
procedure described below, as laid down in Article 11 of Council
Regulation (EC) No. 1383/2003.
(3) The request must be submitted in writing to the customs
authority within ten working days or, in the case of perishable
goods, within three working days after receipt of the notification
as stipulated in subsection (1). Said request must state that the
goods being the subject of said procedure infringe a right protected
by this Act. The written consent of the declarant, the possessor or
the owner of the goods to destruction of the goods must be included.
Notwithstanding sentence 3, the declarant, the possessor or the
owner can directly declare to the customs authority in writing
whether he consents to the destruction. The time limit given in
sentence 1 can, before expiry, be extended upon request of the
right-holder by ten working days.
(4) Agreement to destruction shall be presumed to be granted when
the declarant, the possessor or the owner of the goods has not
opposed destruction within ten working days or, in the case of
perishable goods, within three working days after receipt of the
93
notification pursuant to subsection (1). This fact must be pointed
out in the notification pursuant to subsection (1).
(5) Destruction of the goods shall be at the expense and under the
responsibility of the right holder.
(6) The customs office can organize said destruction. Subsection (5)
shall remain unaffected.
(7) The storage period pursuant to Article 11(1), second indent, of
Council Regulation (EC) No. 1383/2003 shall be one year.
(8) In other respects, Section 142a shall apply mutatis mutandis
should Council Regulation (EC) No. 1383/2003 not contain provisions
to the contrary.
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Part 10 Patent Litigation Proceedings
Section 143
(1) For all legal actions whereby a claim arising from one of the
legal relationships regulated by this Act is asserted (patent
dispute case), the civil chambers of the Regional Courts shall have
exclusive jurisdiction without regard to the value in dispute.
(2) The governments of the federal states [Länderregierungen] shall
have power to assign by statutory order the patent dispute cases in
the districts of several Regional Courts to one such Regional Court.
The governments of the federal states may transfer these powers to
the state administrations of justice [Landesjustizverwaltungen]. The
federal states can moreover transfer, by agreement, the functions of
the courts of one federal state in their entirety or in part to the
competent court of another federal state.
(3) Of the costs arising from the participation of a patent attorney
in a legal action, fees according to Section 13 of the German
Attorneys at Law Remuneration Act [Rechtsanwaltsvergütungsgesetz]
shall be refunded, as shall the necessary expenses of the patent
attorney.
Section 144
(1) When, in a patent dispute case, a party credibly shows the Court
that imposition of the costs of the lawsuit against him according to
the full value in dispute would considerably endanger its economic
situation, the Court may, at the request of said party, order that
this party’s obligation to pay court costs be adjusted to accord
with a portion of the value in dispute appropriate to its economic
situation. As a result of the order, the favored party shall
likewise be required to pay the fees of its attorney at law only in
accordance with said portion of the value in dispute. To the extent
that the costs of the lawsuit are imposed on said party or where
said party accepts such costs, said party shall be required to
reimburse the court fees paid by the adversary and the fees of the
latter’s attorney at law only in accordance with said portion of the
value in dispute. To the extent that the extrajudicial costs are
ordered to be paid by the adversary or are assumed by that party,
the attorney at law of the favored party may recover his fees from
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the adversary in accordance with the value in dispute applicable to
said adversary.
(2) The request under the provisions of subsection (1) may be
declared and recorded at the registrar’s office of the Court. It
shall be submitted before the main issues of the proceedings are
heard. Thereafter, it shall only be admissible if the presumed or
fixed value in dispute is subsequently increased by the Court.
Before the decision on the request is rendered, the adversary shall
be heard.
Section 145
Any person who has brought a legal action pursuant to Section 139
may bring a further action against the defendant on account of the
same or a similar act on the basis of another patent only if,
through no fault of his own, said person was not able to assert also
said patent in the earlier law suit.
96
Part 11 Allegation of Entitlement to a Patent [Patentberühmung]
Section 146
Any person who places on articles or their packaging a designation
of such a nature as to create the impression that the articles are
protected by a patent or a patent application pursuant to this Act,
or any person who uses a designation of such a nature in public
advertisements, on signboards, on with-compliment cards or in
similar announcements shall be required to give, on demand, to any
person having a legitimate interest in knowing the legal situation,
information as to the patent or patent application upon which the
use of said designation is based.
97
Part 12 Transitional Provisions
Section 147
(1) Article 229, Section 6, of Introductory Act to the Civil Code
[Einführungsgesetz zum Bürgerlichen Gesetzbuch] shall be applied
mutatis mutandis, subject to the proviso that Section 33(3) and
Section 141 of this Act in the version valid until 1 January 2002
shall have equal status as the provisions of the Civil Code
regarding periods of limitation in the version valid until 1 January
2002.
(2) The provisions of this Act in the version valid until 30
September 2009 shall continue to apply to proceedings in regard to
declaration of nullity of a patent or a supplementary protection
certificate or to grant or withdrawal of a compulsory license or in
regard to adaption of reimbursement for a compulsory license as
fixed by judgment that were instituted before 1 October 2009 by
filing a legal action to the Federal Patent Court.
(3) (void)