Several important changes in intellectual property laws have come into force by the modernization of patent law act (Patentrechtsmodernisierungsgesetz) that are effective of today.
Probably the most important changes for practical corporate considerations concern the law on inventions of employees (Arbeitnehmererfindungsgesetz, ArbEF):
– The statutory written form for reports of invention and other declarations according to the ArbEG has been replaced by the text form. Therefore, reports can now also be sent as E-mails.
– The employer no longer has to timely claim the invention. From now on, the rights for an invention at the workplace pass over to the employer unless he explicitly waives these rights within four months of having received the report of invention.
– The distinction between unlimited and limited claiming of an invention has been removed.
The new procedural laws for nullity actions against patents filed from October 1, 2009 onwards are also important:
– The proceedings at the court of the first instance are being streamlined. In particular, there are now rules on delay in effect, but the patent court also has the obligation to warn the parties.
– The second instance has been completely restructured. The BGH as court of appeal generally conducts only a legal check. New facts can only be introduced into the proceedings within the constraints of the code of civil procedure (Zivilprozessordnung, ZPO) for appeal proceedings. The options of the patentee to counter the suit with new requests are therefore severely limited. For the future, the BGH is generally expected to no longer consult an expert, so that the problem of challenging the expert on grounds of bias has also been defused. Legal success will now be rooted in the first instance, much more than in the past.
Important changes to trademark law concern proceedings involving two parties:
– Oppositions lodged against trademarks with an application date on or after October 1, 2009 are no longer limited to registered trademarks, but may also be based on corporate descriptions such as corporate catch phrases and non-registered trademarks in use. Apart from being based on similarities of goods and services, oppositions based on rights on known trademarks may also be based on unfairness. As far as these points are concerned, the German opposition proceedings have been brought in line with the one against community trademark applications before the Office of Harmonization for the Internal Market (OHIM).
– In all proceedings involving two parties, thus also in cancellation proceedings, one party can force a bypass of the appeal process in the second instance (“Erinnerung”).
Further changes of various laws concern several different procedural questions. For example, proceedings on the application for a compulsory license according to the European Council Regulation 816/2006 (concerning compulsory licenses for patents covering the manufacturing of pharmaceutical products for export in countries with public health problems) are now embedded into the nullity proceedings via the new § 85a GPA (Patentgesetz, PatG).
Changes also apply to the fees. In particular, fees have been introduced for German patent applications for the eleventh claim and every claim thereafter. However, with € 20.- the fee is comparatively moderate.