IP Help Desk

Questions around German Patents
(taken from the website of the DPMA – German Patent and Trademark Office)

• What time limits apply to the procedure before the DPMA?

  There are statutory time limits and time limits set by the DPMA.
  Statutory time limits (e.g. the three-month period for payment of the filing fee, section 6 (1) of the Patent Costs Act [Patentkostengesetz] or the twelve-month period for claiming an earlier domestic priority, section 40 (1) of the Patent Act [Patentgesetz]) cannot be extended. Failure to observe statutory time limits results in the legal consequences specified in the respective provisions.
  The time limits set by the DPMA for responding to official communications are to be at least one month for domestic applicants and two months for applicants having no principal place of business, establishment or residence in Germany (section 18 (1) of the DPMA Ordinance [DPMA-Verordnung]). If sufficient reasons are given, the time limit may be extended once (section 18 (2) of the DPMA Ordinance). Further extensions of the time limit will only be granted if a legitimate interest is substantiated (section 18 (3) sentence 1 of the DPMA Ordinance). The applicant will be informed about the consequences of failure to observe the time limits set by the DPMA when the time limit is set.

• How is the time limit for submitting a German translation for English or French applications pursuant to Section 35a(2) of the Patent Act calculated?

  For applications entirely or partly in English or French, the time limit for submitting a German translation pursuant to Section 35a(2), first sentence, of the Patent Act (Patentgesetz) is twelve months from the date of filing at the DPMA.
  If an earlier priority date is claimed for the application rather than the date of filing at the DPMA, the time limit pursuant to Section 35a(2), second sentence, of the Patent Act ends at the latest after the expiry of a period of fifteen months from this priority date. The DPMA interprets this provision to mean that 15 months from the priority date is the relevant maximum period for applications claiming priority.

• What effect does an English or French abstract have on the time limits for submitting a German translation pursuant to Section 35a of the Patent Act?

  Section 35a of the Patent Act (Patentgesetz) allows submission of a foreign-language application with the DPMA. The application documents which can be entirely or partly in a language other than German in accordance with Section 35a of the Patent Act include the elements of an application mentioned in Section 34(3) of the Patent Act. The abstract pursuant to Section 36 of the Patent Act is not part of the application documents within the meaning of Section 34(3) of the Patent Act. It is therefore not possible to extend the 3-month time limit pursuant to Section 35a(1) of the Patent Act for submission of a German translation at a later date to twelve months in accordance with Section 35a(2), first sentence, of the Patent Act by adding an English or French abstract to an application in a language other than German, English or French.

• How long does it take to grant a patent?

  The patent procedure takes 30 to 36 months on average, provided that the examination request has been filed within the initial four months from filing, that the examination fee has been paid and that no request for the extension of a time limit has been filed.

• What do I have to consider with regard to the payment of fees?

  You will find the payment options available at the DPMA, including options for any instant payments, in the Patent Costs Payment Ordinance [Patentkostenzahlungsverordnung] (form A 9511.1). Please note our offer to collect fees by the SEPA core direct debit scheme (forms A 9530.1 to A9534.1).
  Each payment must indicate the complete file number and the purpose of payment in the form of the fee number listed in the Schedule of Fees (annex to section 2 (1) of the Patent Costs Act, annex to section 2 (1) of the Ordinance on the Administrative Costs of the DPMA [DPMA-Verwaltungskostenverordnung]). The fee numbers of all fees and expenses are also indicated in the Information Concerning Costs, Fees and Expenses (form A 9510.1). Incorrect or incomplete information will delay processing.

• What happens if I have not paid fees in due time or in full?

  If due fees are not received by the DPMA in due time or in full, your request or application will be deemed withdrawn or your patent will lapse.
  If you have missed a time limit for payment, it may under certain circumstances be possible to re-establish your rights with respect to the time limit for payment according to section 123 of the Patent Act. Further information on the request for re-establishment of rights is available in the FAQ: What is a request for re-establishment of rights and what do I have to bear in mind when filing such a request?
  Important: The DPMA does not send separate invoices or requests for payment of any fees that may be due. Ignorance of the fee amounts or the dates of payment of the fees due is no reason for re-establishment of rights.

Questions around European Patents
(taken from the website of the EPO – European Patent Office)

• How long does the grant procedure take?

  The European patent grant procedure takes about three to five years from the date your application is filed. It is made up of two main stages. The first comprises a formalities examination, the preparation of the search report and the preliminary opinion on whether the claimed invention and the application meet the requirements of the EPC. The second involves substantive examination.

• There are a number of different ways of expediting the European grant procedure. What are the differences between them?

  • PACE request for accelerated prosecution
  • Request for early processing (Article 23(2) or 40(2) PCT) (Euro-PCT applications)
  • Waiver of the right to the communication under Rules 161 and 162 EPC (Euro-PCT applications)
  • Waiver of the right to the communication under Rule 70(2) EPC (EP-direct and Euro-PCT applications)

• What are Unitary Patents?

  Unitary Patents – or “European patents with unitary effect” – are European patents granted by the EPO under the rules and procedures of the EPC, to which, at the patent proprietor’s request, unitary effect is given for the territory of up to 25 Member States participating in the Unitary Patent system and having ratified the UPC Agreement.
  Unitary Patents will co-exist with national patents and “classic” European patents. Patent proprietors will in future be able to choose between various combinations of “classic” European patents and Unitary Patents, for example:

  • Unitary Patent providing protection in the 25 EU Member States participating in the Unitary Patent system, and
  • a “classic” European patent taking effect in one or more EPC contracting states which are not participating in the Unitary Patent system (e.g. Spain, Croatia, Iceland, Norway, Switzerland, Turkey and the United Kingdom – see information on the withdrawal of the United Kingdom from the Unitary Patent system) or which have not yet ratified the Agreement on a Unified Patent Court and hence not yet joined the system.

• What tasks have been entrusted to the EPO by the 25 Member States participating in the Unitary Patent system?

  Under EU Regulation No 1257/2012 on the Unitary Patent system, the participating Member States have entrusted the EPO with the following tasks:

  • receiving and examining requests for unitary effect
  • registering unitary effect
  • publishing translations during the transitional period
  • setting up and maintaining a new “Register for Unitary Patent protection” containing entries on transfer, licensing, lapse, limitation or revocation of Unitary Patents
  • collecting annual renewal fees for Unitary Patents
  • distributing a share of the annual renewal fees to the participating Member States
  • administering a compensation scheme to support certain applicants, in particular SMEs, universities and public research organisations having their residence or principal place of business in an EU Member State, with a lump sum of EUR 500 to cover their translation costs if their European patent application leading to the Unitary Patent was filed in an official EU language other than English, French or German.

  Decisions of the EPO regarding Unitary Patents will be taken by a new Unitary Patent Division set up under Article 143(2) EPC. Decisions of the Unitary Patent Division may be appealed to the Unified Patent Court.

• When can a Unitary Patent be requested?

  A Unitary Patent may be requested for any European patent granted on or after the date of application of EU Regulations No 1257/2012 and 1260/2012, i.e. as of the date of entry into force of the Agreement on a Unified Patent Court.

• What is the Unified Patent Court (UPC)?

  The UPC is a new international court common to its Member States. It will provide simplified, quicker and more efficient judicial procedures with high-quality decisions issued by panels comprising both legally and technically qualified judges sitting in an international composition. In addition, the UPC Agreement harmonises the substantive patent law governing the scope and limitation of the rights conferred by a patent and the remedies available in cases of infringement.
  The UPC has been established by an international treaty: the UPC Agreement of 19 February 2013. It will have exclusive competence for the settlement of disputes in respect of both “classic” European patents and Unitary Patents. This exclusive competence is however subject to exceptions with regard to European patents: cases may still be brought before national courts, and proprietors of European patents may opt out from the UPC’s exclusive competence during a transitional period of seven years, which may be prolonged by up to a further seven years. The opt-out will be effective for the entire life of the European patent concerned. The UPC’s rulings will have effect throughout the territories of those Member States that have already ratified the UPC Agreement (the contracting Member States) at the time they are issued. The UPC will not have any jurisdiction over national patents.

• What are the arrangements for the transitional period (opt-out scheme and choice of forum) for the Unified Patent Court?

  For a transitional period of seven years, which may be prolonged by up to a further seven years, the following options will be possible for litigation involving “classic” European patents:

  • Actions for infringement or for revocation may still be brought before national courts (Article 83(1) of the UPC Agreement).
  • A proprietor of or an applicant for a European patent granted or applied for before the end of the transitional period will be able to opt out of the UPC’s jurisdiction in respect of that European patent or application for the entire lifetime of the patent, unless an action has already been brought before the UPC. To do this, the patent proprietor will have to notify an opt-out to the Registry of the UPC. The opt-out will take effect upon its entry in the Register (Article 83(3) of the UPC Agreement). It will be possible to withdraw any such an opt-out at any time, unless an action has already been brought before a national court (Article 83(4) of the UPC Agreement). The sunrise period for the possibility of opting out in respect of European patents and European patent applications is planned to start three months before the UPC becomes operational.

  It is important to note that the possibility of opting out or bringing an action before a national court during the transitional period is not available for Unitary Patents.

  • UPC website: Opt-out

• When will the Agreement on a Unified Patent Court enter into force?

  The UPC Agreement will enter into force on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession, including those of the three Member States in which the highest number of European patents had effect in 2012, namely Germany, France and Italy.
  In October 2015, a Protocol to the UPC Agreement on provisional application was signed by representatives of the Member States. This Protocol will allow the institutional, organisational and financial provisions of the UPC Agreement to be applied before it enters into force. This will enable crucial decisions on the UPC’s practical set-up – for example recruitment of judges– to be finalised before the UPC Agreement enters into force so that the UPC will be fully operational from day one. The provisional application phase will also be used to allow for early registration of requests to opt out of the UPC’s jurisdiction.

  • Council of the EU website: ratification status
  • UPC website: status

Questions around German Trade Marks
(taken from the website of the DPMA – German Patent and Trademark Office)

• Does the DPMA examine whether my trade mark applied for already exists?

  The DPMA does not check whether identical or similar trade marks are registered. Proprietors of earlier trade marks might lodge an opposition after registration of a trade mark.

• Where can I conduct searches for trade marks?

  You can carry out free online searches for German trade marks in DPMAregister. The database contains German national trade marks applied for, registered or refused. It is true that you can also search for EU trade marks (EM) or international registrations of marks (IR) with effect in Germany in this database, but the DPMA does not accept any liability for the correctness and completeness of these data. For a complete search on trade marks protected in Germany and the current legal status information, please use the databases of the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO).

  In addition, you can conduct trade mark searches in the search rooms of the DPMA in Munich and Berlin as well as at patent information centres.

  During your search, please note that, this way, you can find trade marks with elements matching those of your planned trade mark, but that a similarity search is not or hardly possible. An opposition against the registration of your trade mark is also possible on the basis of a similar trade mark. Complex similarity searches are also offered by commercial search services.

• What fees must be paid?

  The fees consist of a basic application fee and class fees, if any, for the indicated classes of goods and/or services. The basic application fee includes the fee for up to three classes of goods and/or services. It is 300 euros; 290 euros for electronic filing. A fee of 100 euros must be paid for the fourth and any further class. For detailed information on fees, please refer to the information leaflet Information Concerning Costs, Fees and Expenses.

• How long does the application procedure take?

  As a rule, the application procedure is completed within a few weeks/months in the case of registration of the trade mark. It may take longer if further information must be inquired. The procedure will take longer in the event that the trade mark is objected to, due to fact that it cannot be protected, and must eventually be refused.

  You also have the option to file a request for accelerated examination, which is subject to a fee (200 euros): Then, the processing of your application will be given priority. If the trade mark application is in due form and the trade mark is eligible for protection, it can be registered after a few working days, but within six months after filing the application, at the latest. In any case, a decision on an accelerated application must be taken within six months of filing the application, provided that the applicant has cooperated appropriately. If you intend to register your trade mark also internationally, as international registration of a mark, the request for accelerated processing may be of particular interest to you.

• How long is the trade mark valid?

  Trade mark protection arises upon registration of the trade mark in the register. The term of protection starts on the filing date and initially lasts ten years. It can be renewed for further ten-year periods, by payment of the renewal fee.

Questions around EU Trademarks
(taken from the website of the EUIPO – European Union Intellectual Property Office)

• How to search the availability of trademarks?

  Searching for trade marks before you apply is an important action to minimise any possible conflict. You can search for registered trade marks, via the Office online tools, by using two different EUIPO databases, eSearch plus and TMview.

• How to track down the status of my application?

  Status of current applications can be followed online through the User Area and/or eSearch plus.
  EUIPO applications are published online on eSearch plus, a database that provides you with comprehensive information about trade marks, designs, owners, representatives and bulletins.
  The registration process has four steps. More information.

• How long does it take to register your trademark?

  All information about timeliness in proceedings can be found in the EUIPO Service Charter. The Office produces quarterly reports tracking the performance of different indicators, including timeliness.

• I have just applied for a trademark. What happens next?

  The procedure for the registration of an EUTM is composed of three main parts:
  1. examination of the application,
  2. opposition (only if the application for EU trade mark has been subject to an opposition),
  3. registration.

• Can time limits be extended?

  Time limits before the Office can be divided into two categories:
  • time limits laid down by EU trade marks regulation (EUTMR) and EUTMIR or Community design regulation and CDIR, which are therefore mandatory;
  • time limits specified by the Office, which can be extended under certain circumstances.

  For more information about EU trade mark time limits, see the Guidelines, Part A, General Rules, Section 1, Means of Communication, Time Limits.
  For more information about Community design time limits, see the Guidelines, Part A, General Rules, Section 1, Means of Communication, Time Limits.

• Is an applicant obliged to be represented before the Office?

  Anyone can file an application for a European Union trade mark (EUTM) and design (RCD). However, once the EU trade mark application has been filed, any applicant who does not have their domicile or principal place of business or a real and effective industrial or commercial establishment within the EEA (European Economic Area) will have to appoint a representative before or after receiving a formal deficiency letter concerning the lack of representation before the Office.

  To find a professional representative, please consult the Office’s free online database, eSearch plus.

Questions about German Designs
(taken from the website of the DPMA – German Patent and Trademark Office)

• How must a design be represented in the application?

  The representation of the design consists of up to ten photographic or other graphic illustrations (reproductions) of the design. Each illustration must not show more than one view of the design. For example, for this purpose, the design can be photographed from different angles. It is important that all features for which protection is sought are clearly visible. Drawings or computer graphics are also possible.

  The representation must show the design without accessories (objects that are obviously not part of the design) and against a neutral background (homogeneous neutral colour, which clearly differs from the design, for example, white or grey). Measurements, lettering or other descriptive additions must not be included in the illustrations. Further details on the requirements for the representation are available in the Common communication of EUIPO and the national offices on convergence on graphic representations of designs (2.79 MB).

  Illustrations with different design variants cannot be filed as representation for a single design. Every design variant (e.g. different colour or form) is a separate design and must be applied for as such.

• How does the DPMA examine the design application?

  The Design Unit mainly examines whether or not the application fulfils the formal requirements. It also examines whether the design applied for actually constitutes a design within the meaning of the Design Act (Designgesetz) that means whether it shows the concrete appearance of an industrial or handicraft item. However, it does not examine whether the design for which protection is sought actually fulfils the substantial requirements for protection, such as novelty and individual character. In the case of a dispute, these requirements are examined by the civil courts or during invalidity proceedings before the DPMA. That means that a design is also entered in the Design Register if one or several substantive requirements for protection are not met.

• How does the DPMA examine the design application?

  The Design Unit mainly examines whether or not the application fulfils the formal requirements. It also examines whether the design applied for actually constitutes a design within the meaning of the Design Act (Designgesetz) that means whether it shows the concrete appearance of an industrial or handicraft item. However, it does not examine whether the design for which protection is sought actually fulfils the substantial requirements for protection, such as novelty and individual character. In the case of a dispute, these requirements are examined by the civil courts or during invalidity proceedings before the DPMA. That means that a design is also entered in the Design Register if one or several substantive requirements for protection are not met.

• How long does the registration procedure take?

  If the indication of products was drafted using the search engine and if the application also meets all other requirements for registration, the registration usually takes one to two month after the receipt of the application fee. The processing time may be longer if an application has deficiencies; in such cases the registration process may take six to eight months from the receipt of the fee payment. The registration is then published on the following day in DPMAregister and, about a month later, it is published in the Design Gazette (Designblatt).

• When does protection start and how long does it last?

  Design protection starts on the date of registration in the Design Register. Protection can be renewed for another five years at the end of each term of protection (consecutive five-year periods from the filing date) by payment of the renewal fees. If protection is not renewed, the term of protection expires and the registered design is cancelled from the Design Register. The maximum term of protection of a registered design is 25 years from the filing date.

Questions about EU Designs
(taken from the website of EUIPO – European Union Intellectual Property Office)

• What is registered Community design?

  Registered Community design is a design registered in the manner provided for in the Community design regulation. A design is defined as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’. Find out whether your design qualifies for registration.

• What is unregistered Community design?

  Unregistered Community design is a design, which complies with the requirements of the Community design regulation and which has been made available to the public by being published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community.
  The design is not deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

• How is the scope of protection different between a registered Community design (CD) and an unregistered Community design (UCD), and how do the rights they confer differ?

  The scope of protection is the same. Both have unitary character throughout the European Union and they have the same requirements for protection, such as novelty and individual character.

  The rights granted, however, differ. RCDs entitle holders to exclusive rights to use, make, offer, put on the market, import, export or stock products incorporating the protected design, and to prevent others from doing so with products incorporating the protected design and that do not produce a different overall impression.

  UCDs holders can only prevent others from using the design at a commercial level if the use results from copying. Consequently, there is no infringement if the design has been created independently by a second designer (who can prove not being aware of the existence of the protected design).

  Further information regarding the concept behind design in the context of Intellectual Property (IP).

• What are the differences between a registered and an unregistered Community design?

  A registered Community design (RCD) grants exclusive rights covering the outward appearance of a product, or part of it, resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. The fact that the right is registered confers on the design great certainty should infringement occur. An RCD is initially valid for 5 years from the filing date and can be renewed for 5‑year periods, up to a maximum of 25 years.

• Is there a limit to the number of designs that may be applied for in an application?

  For traditional filing, there is no limit. An applicant may file as many designs as they wish in one multiple application, the only condition being that the products to which the design is applied belong to the same Locarno class, in other words that they pertain to the same type of goods. This condition does not apply when an application is for ornamentation.

  Please consult our website for further information on the design and its product(s).

  For further information on how to apply, see the Guidelines, Examination of Applications for Registered Community Designs.

• What is the maximum number of views taken into account in a RCD application?

  The maximum number of views taken into account in an RCD application before the EUIPO is seven. If you wish to use the design application as a basis for a priority claim in a subsequent design application in another registration system, the surplus views will be archived in the RCD application file. If you ask the EUIPO for a certified copy of your RCD application to submit as the basis for your priority claim, this copy will contain all the information relating to the RCD application, including the surplus views.

  For further information visit our Apply now section.

• How is a registered Community design application examined?

  Applications are mainly checked for formalities. There is no in-depth substantive examination, except to verify that the application is for a design and that the design is not contrary to public policy or morality. Unlike the EU trade mark system, there is no opposition procedure.

  A design application will be examined and if it meets the formal requirements the design is then registered and published immediately, or following the deferment period (upon request of the holder or their representative) within 27 months of the application date or of the priority date.

  If the application does not meet the formal requirements, an objection (usually called a ‘deficiency letter’ that contains the inconsistency to be remedied and sets a time limit for the reply) will be raised. This may lead to the amendment of the application or to its refusal if the objections raised are not addressed satisfactorily. Failure to reply to the deficiency letter within 2 months can lead to the refusal of the application, to the deletion of certain views or to the loss of the claim of the priority right.

  Further information regarding the registration process.