The German Association Of Industrial Property And Copyright Law (GRUR) Has Taken Position In Its Opinion Of August 8, 2008, Published In GRUR 2008 p. 881/882.

First published in BARDEHLE PAGENBERG IP Report 2008-V at

The main aim of the draft is a reform of patent invalidity litigation. Particularly the long duration of the appeal procedure is endangering the effectiveness oft the German patent system. The time for proceedings to be instigated before the Federal Supreme Court takes four years and more, and there is a great backlog of unclosed cases. The German procedure of patent nullity is characterized by three features: The Federal Patent Court has the exclusive jurisdiction to declare null and void or to limit a patent valid in Germany. The only appeal instance lies with the Federal Supreme Court which decides on facts and law which is exceptional in itself. The chambers of the Federal Patent Court are made up of technical and legal members. The draft intends to adapt the legal procedure of the second instance to the common character of the Federal Supreme Court as the last instance, deciding only on questions of law.

The draft however proposes special rules of the review proceedings. They are taking into account the particular situation of controlling questions of technical matter and especially the relevant state of the art – and, therefore, of the fictitious person skilled in the art. Other instruments introduced to accelerate the proceedings in both instances include preparation of the oral proceedings by a notice of the Federal Patent Court regarding the relevant issues to deal with, and fixing a period of time in which the parties have to file requests or amendments or submit pleadings. The Court has the discretion to refuse any attacking or defending submissions of the parties, as well as amendments of the claims, or of submissions of amended text of the patent by the defendant if such submissions are filed after the final date of the period determined by the Federal Patent Court. In a similar way, amendments are restricted before the Federal Supreme Court. The overall intent is to limit the usually troublesome use of late submissions and, particularly, late requests of amending the claims of the patent. The ex officio principle of the whole procedure was not changed. GRUR, in its opinion, recommended cancelling this maxim.

Inter alia the draft further proposes to partly cancel the duty of a party domiciled outside Germany (in the EU or the EEA) to provide for a person authorized to accept service in Germany (in procedure before the Patent and Trademark Office or the Federal Patent Court – details are here omitted); and to cancel the need of a patentee to file an action of infringement established on several patents related to the case, the so-called maxim of concentration of actions.

An important further amendment relates to the field of employee`s inventions: The employee`s invention is claimed automatically by the employer if he is not declaring the release of the invention in favor of the employee within the prescribed time limit.


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