one、Patent application channels

(1)paris convention

Both China and Germany are members of the Paris Convention for the Protection of Industrial Property. Chinese applicants can file a patent application for the same subject matter with the German Patent and Trademark Office within 12 months from the date of the Chinese patent application (invention or utility model) and claim priority.

(II)patent cooperation treaty

Chinese applicants can enter the German national phase by submitting a PCT international patent application. PCT international patent applications may claim priority for inventions or utility models previously filed in China. Applying for a patent through PCT requires submitting a search report.

(3)European Patent Treaty

According to the European Patent Convention (EPC), all technological inventions can apply for European patents. European patents can take effect in the contracting and extending countries of the EPC upon the applicant's designated request. In every effective country, European patents have the same legal effect as domestic patents authorized by domestic patent authorities and are protected under domestic law. Germany is a contracting state of EPC, and Chinese applicants can file individual patent applications with the European Patent Office (EPO) and designate Germany as the effective country upon receipt of the authorization notice.

(IV)Unified European Patent

The European Unified Patent and Unified Patent Court system will come into effect on June 1, 2023. The European Patent Office (EPO) is a one-stop institution for managing unified patents. Applicants can obtain EP patent protection in 26 EU member states by submitting a request to the EPO. Then submit a unified patent request within one month after the EP patent authorization is published to obtain the effectiveness of the unified patent. The German government approved the Unified Patent Court Agreement on February 17, 2023 and deposited it with the Council of the European Union. After Germany officially becomes a unified patent participant, Chinese applicants can submit a unified patent application to the European Patent Office (EPO), which will cover Germany after patent authorization.

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two、Patent application process

(1)Document submission

The applicant submits the application documents through methods such as the Paris Convention or PCT. If the application documents are incomplete, they need to be supplemented. If the application documents are complete, substantive examination will proceed. Among them, the technical solutions related to the invention in the application documents must be clearly and completely disclosed so that those skilled in the art can implement them.

(II)substantive examination

After the applicant submits a request for examination, it enters the substantive examination stage. The patent examiner will determine the existing technology related to the invention and examine whether patent rights can be granted in this context.

If the invention patent does not meet the requirements or has other defects, the examiner will notify the applicant through a notice of examination opinion. The applicant may provide a response and correct the defects within the time limit specified in the notice of examination opinions, and shall note that the modifications shall not exceed the scope of the original application documents.

(3)Authorization and Effectiveness

If the patent examiner finds that the invention patent has novelty and creativity, is easy to apply in industry, and meets all other formal requirements, the examiner will grant the patent right. The authorized patent will be published in the Patent Gazette. If no one objects to the patent, the patent will take effect, obtaining exclusive rights to use, produce, and sell, and prohibiting others from engaging in the same activities.

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three、Application documents

(1)Application for Paris Convention

The materials and information that the applicant needs to provide include:

① The applicant's name and address;

② The name and address of the inventor; When there is a discrepancy between the applicant and the inventor, the source of the applicant's rights must be explained, such as service invention, inheritance, or contractual agreement;

③ Application documents.

Priority should be given to submitting application documents in German. If the application documents are in English or French, the German translation must be submitted within 12 months from the date of application, but not later than 15 months from the priority date. If the application documents are in a language other than German, English, or French, a German translation must be submitted within 3 months from the date of application.

According to the Paris Convention, if the applicant claims priority, they need to submit a patent application to the German Patent and Trademark Office within 12 months of the prior application. According to Article 41 of the German Patent Law, when the applicant claims priority, they must submit information such as the date, country, and application number of the prior application, as well as a copy of the prior application documents, before the expiration of the 16 month period from the priority date.

Applicants can use electronic submission methods to quickly obtain information such as application numbers. Applicants can choose to request both search and substantive examination at the time of application submission, or only request search at the time of application submission and then request substantive examination within seven years after the application date.

(II)PCT application

The applicant shall submit a German translation of the application documents to the German Patent and Trademark Office within 31 months from the international application date (or earlier priority date). If the deadline exceeds 31 months, it can only be submitted through the restoration of rights procedure, but it is necessary to prove that all prudent responsibilities have been fulfilled.

The materials and information that the applicant needs to provide include:

① The application number, international filing date, and early priority date of the PCT application;

② The applicant's name and address;

③ The name and address of the inventor; When there is a discrepancy between the applicant and the inventor, the source of the applicant's rights must be explained, such as service invention, inheritance, or contractual agreement;

④ German translation of PCT application; If there are modifications to the PCT application documents, a translation of the original PCT application documents and a translation of the modified application documents are required.

(3)EP Patent Application Enters Germany

There are two ways for Chinese applicants to apply for EP patents, namely:

① Submit application documents directly to the European Patent Office (EPO);

② Submit PCT international patent application with EPO as the designated office.

According to the provisions of the European Patent Convention, European patents have the same effect and are subject to the same conditions as national patents granted in each contracting state to which they are granted. After the applicant obtains authorization for the EP patent, they need to specify Germany and pay a fee before the EP patent enters Germany. If the applicant applies for an EP patent in German, English, or French, there is no need to provide a German translation during the entry into the German stage.

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four、Formality Examination

The content of formal review mainly includes:

① Whether the application documents are complete and meet the format requirements;

② Whether the fees have been fully paid;

③ Are there any obvious situations where authorization should not be granted. At this stage, no examination will be conducted on whether the application substantially meets the authorization conditions (such as novelty, creativity, originality, etc.).

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five、essencereview

If the applicant files a request for substantive examination at the same time as submitting the application, they will receive an official notice from the German Patent and Trademark Office about two weeks to one month from the application date, informing them that their patent application has entered the substantive examination stage. From the date of application, the applicant usually receives the first examination opinion notification, and must respond within the prescribed time limit (usually 4 months).

In addition to submitting a review request, a search request can also be submitted first. The applicant can also request a search when submitting the application, and will receive a search report within eight to nine months after the application date. The content of the search report will be similar to that of the examination opinion notification. After receiving the search report, the applicant can adjust the application text based on the content of the report.

In the substantive examination stage, the content examined by the German Patent and Trademark Office mainly includes whether the patent application has novelty, creativity, and singularity, as well as whether the application documents are fully disclosed. The examiner issues a notice of examination opinion to the applicant regarding substantive defects in the patent application. In response to the examination opinions, the applicant may modify the application documents or submit arguments for debate in order to achieve the grant of the patent. Among them, modifications to the application documents shall not exceed the scope recorded in the original application documents. If the examiner disagrees with the applicant's argument, a new notice of examination opinion will be issued.

If the applicant fails to respond within the deadline for responding to the examination opinions, the patent application will be rejected. The applicant may request to continue processing within one month of receiving the rejection decision, but must pay a certain fee.

The applicant may request in writing to the German Patent and Trademark Office to hold a hearing in preparation for the rejection of the application when responding to the examination opinion. Normally, the German Patent and Trademark Office holds a hearing to hear the opinions of applicants, witnesses, and other parties before preparing a rejection decision.

If a patent application is rejected due to not meeting the authorization conditions, the applicant can also file an appeal within one month of receiving the rejection decision from the German Patent and Trademark Office. If the reviewing department considers the reasons for the appeal to be sufficient, it will correct the rejection decision. In addition, the applicant may submit a divisional application in writing at any time, and the divisional application shall have the same filing date or priority date as the parent application. If the divisional application is made after the substantive examination request is made in the parent case, the divisional application shall be deemed to have made the substantive examination request. A divisional case can have different claims from the parent case, or additional claims can be added to the parent case.

The applicant may separate the utility model from the invention patent application, and the separation time shall be within two months after the end of the invention patent application procedure (including withdrawal, deemed withdrawal or rejection) or the expiration of the objection procedure, but must be within ten years from the date of application. When separating a German utility model from an invention patent application, it will not affect the examination of the original invention patent. Unlike in China, if the applicant fails to respond within the time limit specified in the Office Action, the patent application will not be considered withdrawn, but will be rejected by the German Patent and Trademark Office.

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six、Authorization Announcement

The authorization decision of the German Patent and Trademark Office will include the patent text to be authorized, including claims, specification, and drawings. If the applicant disagrees with the patent text, they may file an appeal with the German Patent and Trademark Office within one month of receiving the authorization decision.

If the applicant immediately waives the right to appeal upon receiving the authorization decision, it is beneficial to accelerate the patent authorization announcement process. If the applicant does not explicitly waive the right to appeal, the German Patent and Trademark Office will arrange for patent authorization announcements and issue authorized patent certificates after the deadline for appeal has expired.

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seven、objection

Anyone can raise an objection within nine months after the patent authorization announcement. Objections must be submitted in writing, and the requester of the objection must state the reasons for opposing the patent grant.

In the opposition procedure, the opposition department of the German Patent and Trademark Office will review the patentability of the patent again. The objection department is independent of the review department, and a review team consisting of at least three members (including two technical personnel and one legal personnel) is formed during the review process. According to the re examination, the patent will be maintained, partially revoked, or completely revoked.

According to Article 21 (1) and Article 59 (2) of the German Patent Law, the grounds for revocation in the opposition procedure include:

① The subject matter of an invention patent should not be granted patent rights, or the patent does not have novelty, creativity, or utility (i.e. the patent subject matter does not comply with the provisions of Articles 1-5 of the Patent Law);

② The invention patent does not clearly and completely disclose the invention for implementation by technical personnel in this field;

③ Infringement refers to the situation where the substantive content of a patent is derived from someone else's description, drawings, models, tools, equipment, or processes, but without their consent (only the infringed party can raise objections on this grounds);

④ The subject matter of the invention patent exceeds the original submitted application documents; When a patent is resubmitted by the infringed party based on a divisional application or "infringement", the subject matter of the patent exceeds the original document submitted in the prior application.

According to Article 59 (3) of the German Patent Law, in the opposition procedure, if one party makes a request or the opposition department deems it necessary, a hearing will be held. Objections usually remind us of the issues that need to be discussed in order to make a decision. The announcement of the hearing and decision will be made public to the public. But in the case of a request from one party, if the rights of the objector may be threatened, the hearing may also be held in private.

According to Article 61 (1) of the German Patent Law, when the opposition requester withdraws the opposition, the opposition procedure will be decided by the opposition department based on the results of the examination, in accordance with its authority, whether to continue the examination.

The opposition agency fee for German patents generally ranges from 6000 euros to 10000 euros. The objector or patentee may appeal to the Federal Patent Court within one month after receiving the objection decision.

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eight、invalid

After the expiration of nine months after the announcement of the invention patent authorization, a third party may file an invalidation lawsuit against the validity of the invention patent with the German Federal Patent Court. Two legal judges and three technical judges will form an invalidity committee to re-examine the legal validity of the patent in question. The reasons for invalidity are similar to those for objection, mainly including lack of patentability, impracticability, patent subject matter exceeding the original application documents, infringement of the invention (only the infringed party can file an invalidation lawsuit on this reason), and expansion of the scope of patent protection.

According to Article 81 of the German Patent Law, the patent invalidation procedure is initiated through litigation, and the defendant is the patent owner recorded in the patent registration book. Within the time limit within which objections can be raised (i.e. within nine months from the date of authorization announcement), or when the objection procedure has not yet made a decision, no patent invalidation lawsuit may be filed. Patent invalidation lawsuits should be filed in writing with the Federal Patent Court.

Article 82 stipulates that the Federal Patent Court shall immediately serve the defendant with the litigation documents and require the defendant to make a defense within one month. If the defendant fails to submit the defense in a timely manner, the court may immediately make a litigation decision without the need for an oral hearing, and assume that the facts and claims claimed by the plaintiff are established. If the defendant submits the defense in a timely manner, the court will further inform important matters such as the time limit for expressing opinions, modifying claims, or supplementing charges through written correspondence. The defendant may elaborate on their objections within two months after receiving the notice of litigation. If the defendant provides sufficient reasons, the presiding judge may request an extension of one more month. The presiding judge should arrange an oral hearing as soon as possible, and may also waive the oral hearing with the consent of both the plaintiff and defendant.

The hearing is presided over by the presiding judge, who or the reporting judge presents the basic content of the documents, then listens to the pleadings and defenses of both parties, and reviews the evidence (including hearing testimony from witnesses). Given that the three technical judges in the invalidation committee have a certain understanding of the patent technology field, expert testimony is rarely heard in invalidation litigation. In most cases, a final decision will be made at the end of the hearing, and the specific reasons will be provided at a later time.

If the parties are dissatisfied with the judgment of the German Federal Patent Court, they may appeal to the German Federal Court.

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nine、appeal

If the applicant disagrees with the decisions of the German Patent and Trademark Office, such as the rejection of patent applications and patent objections, they can file an appeal. The applicant files an appeal request with the German Patent and Trademark Office. If the Patent and Trademark Office evaluates that the appeal is acceptable and the evidence is sufficient, the Patent and Trademark Office may remedy the appeal and revoke the original decision; If the appeal is deemed inadmissible or unfounded after evaluation, the Patent and Trademark Office will submit the appeal to the Federal Patent Court for review. The Federal Patent Court holds an oral hearing and makes a decision on the appeal.

The applicant must file an appeal in writing and provide multiple copies for use by all parties involved in the appeal process, or submit an electronic application on the official website of the German Patent and Trademark Office. If the applicant does not have a place of residence and does not have a registered office or place of business in Germany, they need to entrust a German lawyer or patent lawyer to handle it on their behalf.

The applicant needs to file an appeal and pay the appeal fee within one month after receiving the decision from the German Patent and Trademark Office. The appeal fee is usually between 50-500 euros.

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ten、Reply to OA strategy

(1)Lack of novelty response

If the Office Action states that the patent application lacks novelty, the applicant should first analyze the comparative documents cited by the examiner, clarify the parts of the patent application that may be misunderstood, and ensure that the examiner fully understands the technical solution of the patent application. Subsequently, a more specific and detailed description is required, highlighting the differences between the patent application and existing technology, and clarifying that the comparative documents do not affect the novelty of the patent application. If the issues pointed out in the notice of examination opinion cannot be overcome, the claims need to be modified to distinguish them from the comparative documents cited by the examiner.

(II)Lack of creative response

If the notice of examination opinion indicates that the patent application lacks creativity, the applicant should emphasize in their response that the improvement or innovation of the patent application or modified technical solution relative to the existing technology is not obvious to professionals in the technical field.

(3)Telephoning

In the patent examination process in Germany, the final decision is usually made in the second examination opinion notification. Between the issuance of the first and second notices of examination opinions, the applicant may communicate with the examiner via telephone to clarify any issues raised in the examination opinions.

(IV)Reject response

If the examination opinion notification has a tendency to reject, the applicant may request the German Patent and Trademark Office to provide an opportunity to participate in the hearing. After receiving the rejection decision, the applicant can file an appeal with the German Patent and Trademark Office within one month.

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