DMPA: Patent Law Modernization Act

The 2nd Patent Law Modernization Act for new regulations in patent law and other areas of IP protection was prepared for the long term and came into force on August 18, 2021.

We reported on the planned new regulations in patent law for proceedings before the DPMA back in February 2020.

Extension of time limit for international applications (PCT)

From May 1, 2022, applicants will have 1 month longer to initiate the national phase at the DPMA.

The relevant period has been extended from 30 to 31 months from the filing or priority date so far.

The new deadline applies to all applications for which the previous deadline (30 months) for nationalization has not yet passed on May 01, 2022.

Inventor Appointment

Also on May 1, 2022, the inventor’s name and location must be mentioned in patent publications and in the register. The omission of the publication of these data can be requested by the inventor.

Fees for joint applicants

Already in effect on August 18, 2021, is the provision that joint owners or applicants will be treated as one applicant for fee purposes. In the past, fees were determined by head count.

This applies both in proceedings before the DPMA and in appeal proceedings.

Increase in annual fees

In addition to the Second Patent Modernization Act, the Act on Further Tasks of the German Patent and Trademark Office and Amending the Patent Costs Act entered into force on September 7, 2021.

As of July 1, 2022, the fees for maintaining patent applications or patents, starting from the 5th year, will be increased.

Second Patent Law Simplification and Modernization Act

The full proclamation is available online on the homepage of the BMJ.

World IP DAY

Why do small and medium-sized enterprises play a special role in intellectual property?

Small and medium-sized enterprises (SMEs) are the backbone of our economy. Well over 90 % of all companies in Germany are small and medium-sized enterprises. Each of these companies start with an idea. Products are created that are used by consumers and they create jobs.

Intellectual property rights help companies protecting business assets and creating value. Yet many are not aware that or how they can obtain effective protection for their innovations. However, studies also show that companies that are aware of and acquire IP rights are more successful from the economic point of view.

What exactly does IP mean?

Intellectual property (IP) refers to intellectual creations, such as inventions, literary and artistic works, designs, and symbols, names and images. It may be legally protected by patents, copyrights, designs and/or trademarks.

IP rights make it possible to secure intellectual property against imitation and, under certain circumstances, also to derive financial benefit from what has been invented or created – a key point for companies that want to survive in the market.

Why do we need a system of intellectual property protection?

Intellectual property rights aim to achieve a balance between the interests of inventors, creators, etc. on the one hand and the general public interest on the other. They enable an environment that should optimally promote creativity and innovation.

This is achieved, for example, by granting inventors temporary patent protection only if they present their invention to the public. In this way, patent applications can not only secure the manufacture and sale of one’s own products but can also be a source of further improvements for the benefit of our society.

What makes up the work as a patent attorney?

We help companies with the application, registration and monitoring of their IP rights. We advise, for example, which IP right is suitable for which innovation. Inventions and innovations in technical and scientific fields are protected by patents and utility models. In the case of creative designs, on the other hand, trademark and design protection is used. Depending on the type of invention, different property rights are therefore suitable for effective protection against imitations.

We also offer patent portfolio management, monitoring competitors, technology searches, freedom to operate analyses, to name a few. For example, potential risks from competition protection rights must be identified and evaluated at an early stage during the development of new products.

Founding Day of WIPO

The World Intellectual Property Organization (WIPO) of the United Nations is calling for a worldwide celebration of the day. The occasion is WIPO’s founding day on April 26, 1970.

The organization is committed to the development of a balanced and effective international IP system. Innovation and creativity create economic growth and jobs. In this respect, it quickly becomes clear why Intellectual Property plays a crucial role in progress.

European Unitary Patent and Unified Court

The agreement on the unitary patent should have been ratified in Germany by the end of 2020.

New constitutional challenges delay introduction of unitary patent

In its decision of March 2020, the Federal Constitutional Court (Bundesverfassungsgericht) had declared the first consent law, which was passed in March 2017, null and void due to a constitutional complaint. The two-thirds majority required to pass the law had not been achieved.

The new law approving the Agreement on a Unified Patent Court (UPC) was passed in November 2020 with the required two-thirds majority. Immediately thereafter, two further constitutional complaints were filed, which will now again delay the introduction of the unitary patent.

The idea of a unitary European patent system

The idea is to unify or bundle the maintenance and enforcement of patents in the European Community (EU) (European patent with unitary effect). Currently, European patents are maintained for each state of the EU by separate fees and infringement as well as nullity actions must also be filed separately in each state.

In particular, a unified court system is also to be created that can rule jointly for European patents with uniform effect with regard to alleged acts of infringement in several EU states. The prerequisite is the establishment of the Unified Patent Court (UPC).

Since decision-making powers of national offices and courts have to be transferred to the EU, this system requires the consent of the EU member states. Due to the lack of approval from Germany until recently, this EU project continues to be delayed.

An uncertain future

For decades, the drivers of this idea were Germany, France and the United Kingdom. After various resistance from individual EU member states, the time finally came in 2017 for the system to be introduced by the EU member states, the necessary buildings to be set up, courses to train lawyers and judges to be launched. Everything was just waiting for ratification in Germany, which was to take place as agreed when all the facilities were operational. But then came the first constitutional complaint in Germany and then Brexit.

The United Kingdom had withdrawn its ratification in July 2020 in the context of Brexit. Whether this withdrawal is sufficient for the legally compliant withdrawal from the UPC has not yet been finally decided. The departure of the United Kingdom, which was assigned great importance and responsibility in the context of this unitary European patent system, has resulted in many questions and gaps and thus great uncertainty regarding the future of this idea. For example, it must now be renegotiated which EU member state may now stand in for the courts, offices and other institutions already provided for in the UK.

With the renewed postponement of the ratification of the treaty by Germany, the remaining EU member states will in any case have sufficient time to reorganize and distribute the competences and institutions of the system that have become vacant as a result of Brexit. Italy and the Netherlands in particular lend themselves to this.

Standard-essential patents (SEP)

Standard-based technologies

From the point of view of patent law, the interaction of different, cross-technology systems is increasingly assuming a decisive key position, especially in the technological fields of information technology (IT), telecommunications, medical technology and automotive engineering.

The development of globally valid standard norms is particularly necessary in the field of intelligent and networked products that are connected to other systems and the Internet. The use of uniform technological standards enables a high level of acceptance and usability of new products and technologies. These interoperability standards are therefore necessary in order to network more and more products from different manufacturers and their applications.
Corresponding standards are defined by international standardization organizations. If a patent exists on a technology that is an essential part of the standard, the standard can no longer be used without claiming the protected technology.

Prominent examples can be found in the telecommunications sector. But the Internet of Things (IoT) is also developing more and more standards, especially in the area of the connected home (Smart Home) or manufacturing (Industry 4.0).

FRAND-compliant licensing of SEPs

Manufacturers of smart products who want to make use of standard-essential patents need licenses for the relevant standardized technologies.
Holders of standard-essential patents are obliged under current law to license the patents to potential users of the standard on fair, reasonable and non-discriminatory (FRAND) terms.

The handling of standard-essential patents (SEP) not infrequently results in legal disputes in which, among other things, licenses with appropriate FRAND terms are disputed. If such an agreement cannot be reached, the situation threatens that new products cannot be introduced to the market or have to be discontinued again.

The goal of FRAND licensing is to ensure a uniform framework for licensing and enforcing standard-essential patents for all market participants, while at the same time allowing end users to enjoy a wide variety of products.

Connected Cars

Also in the automotive industry, more and more communication technologies are being installed in vehicles as products, devices and applications become increasingly networked. In many cases, these are protected by numerous standard-essential patents.

A prominent example is the current dispute between Nokia and Daimler, in which it is to be decided whether the owner of the SEPs is free in his choice to demand an appropriate license from the chip manufacturer, the manufacturer of the radio unit or the car manufacturer. This question is essential for manufacturers of expensive or complex products manufactured with subcontractors and will now probably have to be decided by the ECJ soon.

The patent attorneys of karo IP are happy to support you in the development and preparation of a market launch of such networked technologies.

Practical tips for creating patent drawings

Drawings for an invention

Drawings are not a mandatory part of a patent application, but they can be very helpful in understanding the concept of invention.

In addition to sketches, technical drawings and photos, CAD data, vector graphics or the image of a prototype of the product to be protected are also suitable as a basis for a patent drawing.

The design of a patent drawing is governed by the country-specific guidelines of the patent offices. The guidelines for Germany are summarized in the “Patentverordnung PatV Anlage 2 zu §12“.

Form requirements from the German Patent and Trademark Office (GPTO)

The DPMA recommends that patent drawings be made with drawing instruments.

In practice, however, both freehand drawings and patent drawings created using CAD programs are submitted and recognized.

• A patent drawing may contain several figures.
• The numbers and letters used for the patent drawing must be at least 0.32 cm high, so that everything is still legible when reduced three times.
• To ensure sufficient contrast, only black color may be used. All other colors are not allowed.
• Cross sections and cut surfaces must be marked by hatching. The representation of reference mark lines must be curved to clearly delimit them from the guide lines of the drawing.
• The drawings should not contain explanations. Only those drawings that relate to the state of the art must be marked with the note “state of the art”.

Often it can be useful to use the drawings as they were designed by the inventor.

For the preparation of formally correct patent drawings, there are specialized companies that can do this quickly and cost-effectively.

Disclosure

It should be noted that the patent drawings are usually only schematic in nature or are intended to be so, so that this does not include an exact dimension or every detail. The patent drawings are intended to provide a person skilled in the art with an example of an embodiment according to the invention, but not to limit the scope of protection.

Further, especially when depicting real or planned (complex) product designs, it must be checked whether all details are already protected or comprehensively explained in the description. Although it is possible in principle to include only technical details shown in drawings in a patent claim after the patent application has been filed, this has narrow limits.

Feel free to contact us

We undertake the drafting, filing and prosecution of patent and utility model applications, trademark and design applications as well as the conduct of the corresponding granting procedures.

Der Gesetzesentwurf zur Vereinfachung und Modernisierung des Patentrechts

So lautet die Begründung, „nicht zuletzt im Hinblick auf die fortgeschrittene Digitalisierung, Verfahrensabläufe zu vereinfachen, Regelungen des geltenden Rechts klarzustellen und überflüssige oder überholte Regelungen zu streichen. (…)“. Zu den angekündigten Optimierungen werden insbesondere bei den folgenden Themen spannende Diskussionen erwartet.

Trennungsprinzip

Im deutschen Patentrecht wird eine klare Trennung von Verletzungs- und Rechtsbestandsverfahren praktiziert, für die unterschiedliche Gerichte zuständig sind. Die Verletzungsverfahren vor den Zivilgerichten und die Nichtigkeitsverfahren vor dem Bundespatentgericht werden unabhängig voneinander geführt. Die Urteile über eine Patentverletzung bzw. die Nichtigkeit eines Patents weichen zeitlich meist stark voneinander ab.

Eine Anpassung des geltenden Rechts soll zu einer Verfahrensbeschleunigung, insbesondere auf der Seite der Rechtsbestandsverfahren, führen.

Unterlassungsverfügung

Im Falle einer Patentverletzung hat eine Unterlassungsverfügung nach aktueller Lage regelmäßig zur Folge, dass das verurteilte Unternehmen das Recht verliert, sein Endprodukt herzustellen, anzubieten oder vertreiben zu können. Vor allem in der Automobil- und Telekommunikationsindustrie sind die Wertschöpfungsketten in den vergangenen Jahren zunehmend komplexer geworden und die Anzahl der Zulieferer ist stark gestiegen.

Eine Anpassung des geltenden Rechts soll ermöglichen, dass die rechtlichen Folgen der Patentverletzung ggfs. geringer ausfallen, wenn das Patent nachweislich nur ein Teilmodul der Wertschöpfungskette verletzt und nicht das komplette Produkt.

Gesetzesentwurf zur Vereinfachung und Modernisierung des Patentrechts

Der Mitte Januar 2020 veröffentlichte Entwurf des Bundesministeriums Justiz und für Verbraucherschutz (BMJV) dient als erste Diskussionsgrundlage.

In dem Entwurf wird eine Ergänzung der §§ 82, 83 PatG vorgestellt. Durch die Festlegung der Mitteilungsfrist auf 6 Monate soll die Zeitspanne, die zwischen den Gerichtsurteilen der deutschen Patentgerichte bei Verletzungs- und Nichtigkeitsverfahren liegen, verringert werden.

Neben dieser vorgeschlagenen Änderung wird eine Erweiterung des § 139 PatG präsentiert, womit den Richtern bei der Erteilung von Unterlassungsverfügungen mehr Ermessenspielraum gegeben werden soll.

Die letzte große Reform des gewerblichen Rechtsschutzes durch das Gesetz zur Vereinfachung und Modernisierung des Patentrechts erfolgte im Jahr 2009.

Zweites Gesetz zur Vereinfachung und Modernisierung des Patentrechts

Nachtrag: Im August 2021 ist das Patentrechtsmodernisierungsgesetz in Kraft getreten. Weitere Informationen: Die Modernisierung des Patentrechts in Deutschland: Das zweite PatMoG.

The new EU unitary patent: Differences with the European patent

The European patent with unitary effect (EU patent) differs significantly from the well-known European patent (EP patent).

An EU patent ensures uniform patent protection in all participating EU states. For this purpose, a unified court system is also created, which can decide on the patents valid across Europe with regard to alleged acts of infringement in several EU states together. The introduction of the so-called unitary patent and the associated court system will probably also fundamentally change the strategy in Germany in the medium term. The unitary patent will exist alongside national patents and the European patent.

The European Patent (EP Patent)

The EP patent can be obtained by way of a unitary application and grant procedure before the European Patent Office. The EP patent is granted with effect for a large number of states on the European continent (currently 38), and the applicant must then decide for which countries this protection should effectively occur or be maintained. This allows for a very comprehensive as well as a very selective choice of relevant states.

The well-known Patent Court System

At present, a single national part of an EP patent or (only) acts of infringement of this nation are judged before the court having jurisdiction there. If cross-border acts of infringement exist, separate proceedings must be conducted in all nations to examine the infringement and the legal status of the national part of the EP patent. This is sometimes seen as too costly and a court system leading to many divergent decisions.

The European Patent with unitary effect (EU patent) and Unified Court

The unitary patent is a right that has a uniform effect in the participating EU states. Newly created EU authorities or EU courts are now to decide on the body of law as a whole or on an infringement of a unitary patent in the entire economic area.

This offers the opportunity to have cross-border patent infringement matters decided by the courts in a single procedure. At the same time, there is also a higher risk of losing the asserted patent with a single procedure and thus releasing the entire economic area.

The planned changes in European patent law would mean that in the future, applicants for a patent will be faced with the decision of whether to apply for a national patent, an EP patent or an EU patent. This also means that German and European companies will have to align or adapt their patent portfolio strategies to this end.