On October 15, 2008, the Federal Cabinet adopted a draft bill for the simplification and modernization of patent law. The Patent Law Modernization Act improves the legal framework for the registration of patents and trademarks and simplifies the appeals system.
“With this amendment, we are sustainably strengthening Germany as a patent location. Court proceedings can be expedited in the future, and patent applications will be simplified. In patent appeal proceedings alone, we anticipate a halving of the procedural duration. The reform benefits the entire economy, which relies on inventions as the raw material of the knowledge society. Effective and efficient legal protection for inventions helps to fully exploit the innovation potential of our economy and create jobs,” said Federal Minister of Justice Brigitte Zypries.
A central element of the draft bill is the improvement of the so-called nullity proceedings. In these proceedings, it is judicially reviewed whether a patent was rightfully granted.
- In the first instance before the Federal Patent Court, the court must in the future explicitly draw the parties' attention to issues that are significant for the judicial decision but have not yet been sufficiently discussed by the parties in their previous submissions to the court. This allows the parties to better understand the court's priorities and to focus their further arguments on the essential points. By setting a deadline, opponents and the court are protected from surprising new submissions, which in many cases were previously presented only during oral hearings. This often led to an extension of the procedural duration.
- The appeal proceedings before the Federal Court of Justice are also intended to be expedited in the future. The aim is to halve the procedural duration, which currently exceeds four years. Previously, an expert witness regularly had to be appointed in appeal proceedings, which is very time-consuming. Following the reform, this will only be necessary in exceptional cases. Under current procedural law, an appeal in patent nullity proceedings opens a completely new instance; meaning the entire subject matter of the first instance must be re-litigated. In the future, appeals will focus on reviewing the first instance's decision for errors, as has proven effective in the Code of Civil Procedure. Patent holders, competitors, and the public will thus gain faster clarity on whether the patented invention is protected or not.
The procedure for employee inventions, which account for approximately 80 percent of all inventions, will also be simplified. The objective of the Employee Inventions Act is to ensure the assignment of inventions created within an employment relationship to the employer and to grant the employee appropriate remuneration for them. Previously, employers and employed inventors had to exchange several declarations with different deadlines for this purpose. These formalities repeatedly led to errors in operational practice.
In the future, a so-called claim fiction shall apply:
Accordingly, employee inventions will automatically transfer to the employer four months after their notification, unless the employer releases the invention earlier. “However, the proven balance of interests remains: the employer generally has a claim to the employee's service inventions, and in return, the employee receives a right to remuneration,” explained Zypries.
Further information can be found at www.bmj.de/patentrechtsmodernisierung.
Source: Press release from the Press and Public Relations Department of the Federal Ministry of Justice dated October 15, 2008.
Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney Michael Ullrich, LL.M. (Information Law)
E-mail: m.ullrich@goldberg.de
