Germany: Amendments To The German Patent Act And Other Laws As Of 1 July 2006

Last Updated: 14 December 2006

By Matthias Wolf and Klemens Stratmann

German legislators have decided at very short notice to introduce some substantial amendments to the German Patent Act and other laws, effective as of 1 July 2006, which we would like to present.

1. Changes in Opposition Proceedings and Elimination of Division of a Patent

1.1. Jurisdiction

The Transition Regulation of Sec. 147(3) German Patent Act, under which the German Federal Patent Court was to rule on oppositions to German granted patents instead of the (previously competent) German Patent and Trademark Office (GPTO), was in force from 1 January 2002 through 30 June 2006. This Regulation has now been revoked. From 1 July 2006, it is the GPTO again that decides in the first instance. As a legal remedy, the decisions of the GPTO can be appealed before the Federal Patent Court.

1.2. Oral Hearing

Under the regulation which was in force prior to 1 January 2002, it was at the discretion of the Patent Division of the GPTO to grant a hearing requested in the opposition proceedings (which was normally not the case). From 1 July 2006, a request for a hearing made by a party to the proceedings is binding.

Another formal amendment is that, when issuing a summons for a hearing, the Patent Division will point out the issues it believes will need to be discussed. This brings the German procedure closer to the European opposition proceedings (cf. Rule 71(a) EPC).

1.3. Elimination of the Possibility of Dividing a Patent

Pursuant to Sec. 60 German Patent Act, it was thus far possible to declare the division of a patent in the opposition proceedings, i.e. after the patent had been granted. This is no longer possible due to the elimination, without substitution, of Sec. 60 German Patent Act as of 1 July 2006.

Legislators justify this substantial amendment in that the possibility of dividing a patent has not proven to be successful in practice. The case law of the Federal Supreme Court of Germany used to allow the proprietor of a patent to resort to the entire disclosure of the application when filing a divisional application. Until recently, a division made in the opposition proceedings could thus result in an application (and a patent resulting therefrom) whose scope of protection would extend beyond the scope of protection of the contested patent. It was furthermore possible to delay the completion of the opposition proceedings by dividing a patent shortly before an expected decision. The cancellation of Sec. 60 German Patent Act puts an end to these legal uncertainties and possibilities for abusing the law.

1.4. Acceleration of Proceedings

Thus far, the parties had no possibility of accelerating the proceedings or forcing a decision, even in the case of lengthy opposition proceedings. This has been remedied by introducing the new Sec. 61(2) German Patent Act. According to Sec. 61(2) German Patent Act, the Appeal Chamber of the Federal Patent Court will decide on the opposition instead of the Patent Division of the GPTO if

  1. this is requested by one party and no other party objects thereto within two months after service of the request, or
  2. upon request of only one party, if a minimum period of 15 months has elapsed since the expiration of the opposition period.

However, this will not apply if the Patent Division serves a decision regarding the opposition or a summons to attend a hearing upon the parties within three months from receipt of the request for decision by the Federal Patent Court.

An official fee of €300 is to be paid when requesting a decision by the Federal Patent Court (see also item 3.2).

2. Legal Remedy in Case of Violation of the Right to be Heard

The possibility of remedy was incorporated in the codes of judicial procedure, such as the German Code of Civil Procedure (in this case, new Sec. 321a of the German Code of Civil Procedure) by the law relating to legal remedies for violation of the right to be heard (Act relating to Complaints about not being Heard) of 9 December 2004. Sec. 321a of the German Code of Civil Procedure was already analogously applicable to procedures before the Federal Patent Court through corresponding references in Sec. 99(1) German Patent Act and Sec. 82(1) German Trademark Act.

However, this regulation was not incorporated in intellectual property laws for proceedings before the Federal Supreme Court, and this has been remedied by the newly introduced Sec. 122a German Patent Act, which is in force since 1 July 2006:

Upon a complaint from the party aggrieved by the decision, the procedure shall be prosecuted if the court has violated such party’s right to be heard in a manner significant for the decision. The complaint may not be brought against a decision preceding this decision. Sec. 321a (2)-(5) of the German Code of Civil Procedure shall apply analogously.

The provisions of Sec. 321a (2) to (5) of the German Code of Civil Procedure stipulate inter alia

  • a time period of two weeks for raising the complaint after gaining knowledge of the violation of the right to be heard, and
  • remedy by continuation of the proceedings if (a) the complaint is founded and (b) continuation is deemed necessary due to the complaint.

An official fee of €50 will have to be paid if the complaint is not successful, i.e. if it is rejected after examination.

3. Amendment of Fees

3.1. Pursuant to the new version of the Patent Costs Act, the official fees applicable will be charged separately to each petitioner in the case of

  • oppositions to granted patents,
  • requests for cancellation of registered utility models, and
  • oppositions, reviews and requests for cancellation in trademark issues.

In this regard, the following is stated in the substantiation of the law:

If, for example, several opponents file a joint opposition at the GPTO, each of them will have to pay a fee of €200.

This new provision contradicts the practice of the European Patent Office (cf. G3/99).

3.2. Under the amended Patent Costs Act, the official fee for a request for decision by the Federal Patent Court pursuant to Sec. 61(2) German Patent Act (see item 1.4 above) and various appeal fees are also to be charged separately to each petitioner.

It thus appears to be the legislators’ intention that an appeal against the (partial) rejection of a joint opposition filed by several opponents should only become effective if the appeal fee has been paid by each opponent. In the case of other groups of petitioners, such as several joint applicants, it remains to be clarified whether several appeal fees will also have to be paid.

Until the practice intended by these amendments to the law has been clarified, it is thus recommended, whenever a joint appeal is filed by a group of petitioners, that one appeal fee be paid per petitioner. We will be happy to provide advice on this matter in specific cases.

3.3. The fee for filing an appeal on a point of law concerning a decision of the Federal Patent Court, which was previously dependent on the value in dispute, has now been converted to a fixed fee of €750.

©Hoffmann - Eitle 2006.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.