German Patent Law Part 2 The Patent Office

26.

(1) The Patent Office shall consist of a President and other members. They must possess the qualifications required for judicial office under the German Law Relating to Judges [Richtergesetz] (legal members) or must be experts in a branch of technology (technical members). The members shall be appointed for life.

(2) As a rule, only a person who has passed a final State or academic examination in a technical or scientific subject at a university, a technical or agricultural university or a mining academy, who has worked professionally for at least five years thereafter in the field of science, agronomy or technology 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.

(3) When a probable temporary need exists, the President of the Patent Office may temporarily 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 temporary 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.

27.

(1) There shall be established in the Patent Office

1. Examining Sections for the processing of patent applications and for the provision of information on the state of the art (Section 29(3));
2. Patent Divisions for all matters concerning granted patents, for the assessment of compensation (Section 23(4) and (6)) and for the grant of the right to legal aid in proceedings before the Patent Office. It shall also be the duty of each Patent Division to give opinions (Section 29(1) and (2)) on matters within its competence.

(2) The tasks of the Examining Sections shall be performed by a technical member of the Patent Division (examiner).

(3) The Patent Division shall be competent to take decisions when at least three members participate, who shall include two technical members when the Division operates under the opposition procedure. If the case involves special legal difficulties and if none of the members participating is a legal member, one of the legal members belonging to the Patent Division shall assist in rendering the decision. A decision whereby a request for the calling in of a legal member is refused shall not be subject to interlocutory appeal.

(4) The Chairman of the Patent Division may handle alone all matters of the Patent Division, with the exception of decisions on maintenance, revocation or limitation of a patent or assessment of compensation (Section 23(4)) and grant of legal aid, 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 officials of the higher and intermediate grades of the civil service as well as comparable employees shall be entrusted with the handling of matters within the competence of the Examining Sections or the Patent Divisions which 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 President of the Patent Office.

(6) For 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 relating to exclusion and challenge of members of a court shall apply mutatis mutandis. The same shall apply to officials of the higher and intermediate grades of the civil service and to employees, insofar as they have been entrusted under subsection (5) with the handling of matters within the competence of the Examining Sections or Patent Divisions. Where a challenge plea requires a decision, it shall be taken by the Patent Division.

(7) Experts who are not members may be called in during the deliberations of the Patent Divisions; they shall not take part in the voting.

28.

(1) The Federal Minister for Justice shall regulate the establishment and the business procedure of the Patent Office and determine by statutory order the form of procedure, insofar as provision therefor has not been made by law.

(2) To the extent that provision therefor has not been made by law, the Federal Minister for Justice may prescribe by statutory order the collection of administrative fees to cover the expense of requests addressed to the Patent Office and may, in particular

1. order that fees be collected for certificates, authentications, consultation of files and furnishing of information and to cover all costs incurred;
2. establish rules concerning the persons liable to pay fees, the due date of payments, the obligation to pay in advance, exemption from fees, prescription and the procedure for determining fees.

29.

(1) The Patent Office shall be required to give opinions at the request of the courts or of the State Prosecutor’s Office on questions affecting patents if divergent expert opinions are submitted in the proceedings.

(2) In other respects, the Patent Office shall not have the power to take decisions or give opinions outside its statutory sphere of activity without the approval of the Federal Minister for Justice.

(3) The Federal Minister for Justice may, in order to make the documentation of the Patent Office available to the public, prescribe by statutory order that the Office will provide information on the state of the art, without guarantee that the information is complete, without requiring the approval of the Federal Council. In this regard, he shall be authorized to determine the manner in which the information shall be given, the volume of information and the technical fields involved. The Federal Minister for Justice may delegate such authority to the President of the Patent Office without requiring the approval of the Federal Council.

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 certificates of protection (Section 16a) and the names and addresses of applicants or of patentees and appointed representatives, if any (Section 25), whereby it shall suffice to enter one such representative. The commencement, division, expiration, lapsing, order for limitation, revocation, declaration of nullity of patents or supplementary certificates of protection (Section 16a), as well as the filing of opposition and of a nullity action 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, of the name or of the address of the applicant or the patentee and of their representatives, if proof thereof is furnished to it. A fee as prescribed by the schedule of fees shall be paid with the request to register a change in the identity of the applicant or of the patentee; if the fee is not paid, the request shall be deemed not to have been filed. As long as the change has not been recorded, the former applicant, patentee or representative shall remain subject to the rights and obligations as provided in this Law.

(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. A request under the first sentence shall not be admissible for the duration of a declaration of willingness to license (Section 23(1)). The entry shall be cancelled on a request by the patentee or the licensee. A request for cancellation by the patentee shall require proof of the consent of the licensee designated in the entry or of his successor in title.

(5) A fee as prescribed by the schedule of fees shall be paid together with a request under the first or third sentences of subsection (4); if the fee is not paid, the request shall be deemed not to have been filed.

31.

(1) The Patent Office shall permit any person so requesting to inspect the files and the models and samples relating thereto if and to the extent that satisfactory proof of a legitimate interest has been furnished. However, any person may freely inspect the Register and the patent files, including the files of limitation proceedings (Section 64); the same shall apply to the inspection of files concerning separated parts of a patent (Section 60).

(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 (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) With respect to the naming of the inventor (Section 37(1)), inspection shall be authorized only in accordance with the first sentence of subsection (1) if requested by the inventor designated by the applicant; the fourth and fifth sentences of Section 63(1) shall be applicable mutatis mutandis.

(5) Inspection of patent applications and patents which, pursuant to Section 50, have not been published, shall be permitted by the Patent Office only after hearing the competent supreme federal authority if and to the extent a special interest, warranting protection, of the person making the request appears to justify affording access and no serious prejudice 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 prior art, the first sentence shall apply mutatis mutandis to that part of the file that is relevant to the opposition.

32.

(1) The Patent Office shall publish

1. unexamined patent applications;
2. patent specifications; and
3. a Patent Gazette.

(2) The published applications 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 altered form accepted for publication by the Patent Office. The applications 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 for the assessment of the patentability of the invention which is the subject matter of the application (Section 43(1)). If the abstract (Section 36) has not already been published, it shall be included in the patent specification.

(4) The published applications and patent specifications shall also be published according to the provisions of Section 31(2) if the application has been withdrawn, refused or deemed to have been withdrawn, or if a patent has lapsed after the technical preparation of the publication has been completed.

(5) The Patent Gazette shall regularly contain summaries of entries in the Register, except where they concern only the normal term of patents or the entry and cancellation of exclusive licenses, and references to the possibility of inspection of patent application files, including the files concerning separated parts of a patent (Section 60).

33.

(1) As from publication of the notification pursuant to Section 32(5), the applicant may require from any 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 be admissible if the subject matter of the application is obviously unpatentable.

(3) Section 141 shall be applicable mutatis mutandis with the proviso that the claim shall not be barred prior to expiration of one year after the grant of the patent.