“Filing your patent application with the German Patent and Trademark Office secures your priority date – but it does not begin the official examination required to grant the patent. In Germany, you must file a request for examination and pay the EUR 350 examination fee to begin this process.”
This year, Germany shot to the top of Bloomberg’s rankings for the most innovative nation worldwide, breaking South Korea’s six-year winning streak. Germany is a thriving European center for innovation where patent activity, high-tech density, and value-added manufacturing are on the rise. The country is particularly renowned for its modern car technology. It has designed award-winning high-speed roadways, digitally networked mobility, and some of the most advanced driverless vehicles. In fact, German patents for driverless cars have doubled in the last five years, and its top three patent areas in 2017 were Transport (11,000+ patents), Electrical Machinery (7,000+ patents), and Mechanical Elements (6,000+ patents). If you wish to join the trend and patent your innovation in Germany, here is a walk-through of the German patent application process.
There are three different filing methods you can pursue to obtain a German patent:
- If you’re planning on protecting your IP in a wide variety of countries, you’ll probably want to start by filing an international patent application under the Patent Cooperation Treaty (PCT). This would give you 30 or 31 months to enter national-phase filing in any of the 153 PCT member countries, including Germany, which has the 30-month deadline.
- If you want to protect your IP throughout Europe, you can file a regional application with the European Patent Office (EPO). With this single application you can protect your patent in all EPO member states, including Germany. This is a far simpler and more cost-efficient path than entering national-phase filings in each European country individually.
- If you plan to make your invention available only in the United States and Germany, it may make more sense to take the direct filing route under the Paris Convention. This would allow you to file first in the United States and then claim that priority date on your application to the German Patent and Trademark Office (DPMA), so long as it’s filed within 12 months of the priority application.
The Filing Process in Germany
It’s important to understand how the filing and examination process works in Germany. Did you know:
- Filing your patent application with the DPMA secures your priority date – but it does not begin the official examination required to grant the patent. In Germany, you must file a request for examination and pay the EUR 350 examination fee to begin this process – and you have up to seven years from the filing date to do so.
- Deferred examination is an interesting strategic tool that many German companies pursue. On one hand, it leaves time to wait for the results of a parallel Euro-PCT or European Patent application. If the European application is not granted with the desired scope, a company can activate its German application (by filing a request for examination and paying the fee) any time in the seven-year period. On the other hand, if the parallel European application is granted with the desired scope, a company can simply allow the German application to lapse. They can also use the seven-year period to conduct market research. If an invention doesn’t look profitable, the company can choose to drop the project and, again, simply let the DPMA application lapse.
- It can take 30 to 36 months for the DPMA to grant a German patent. Once granted, a German patent is good for 20 years so long as its annual fees are paid.
- The DPMA will only grant patents for a “technical invention.” The following subjects are not considered technical inventions and therefore cannot be patented in Germany: a scientific theory; a mathematical method; a scheme, rule or method of performing mental acts, playing games or business methods. It’s important to note that computer apps or ways of presenting information (generally all GUI) are difficult to protect and require specific wording.
- Patent applicants who are not German residents need to arrange local legal representation by an authorized German lawyer or patent attorney.
Germany’s Language Requirement
Here are some critical language guidelines for foreign applicants:
- If you apply for a patent in Germany via the PCT national-phase or Paris Convention routes, you must provide a German translation of the priority application.
- If you originally filed your PCT or Paris Convention application in English or French, Germany provides a 15-month grace period from the priority filing date to deliver the complete German translation, including all accompanying documentation.
- If the priority application was filed in German, you have 12 months from the time of submission to provide a complete set of documents in German.
For those who seek a very quick and cost-efficient way to obtain IP protection in Germany, there’s the utility model, an option the DPMA has called “the little brother” of the patent. In many ways, utility models offer the same protection as patents. They both give you exclusive rights to use, produce and market your invention, which can cover any subject matter (apart from processes). However, there are several important differences to consider between patents and utility models:
- Utility models are exempt from examination. The upside here is that the process is much faster – IP rights can go into effect in months (upon registration) instead of years. The downside is that if your IP is challenged later, examination will be subsequently carried out and your IP rights could be changed or cancelled.
- Utility models offer a maximum of 10 years’ protection, compared to a patent’s 20-year term.
- A utility model can be filed in parallel to a German patent application. There is no bar to double protection – you can have identical claims for a patent and a utility model.
- A utility model can be branched off from a valid pending patent application (i.e. a direct German filing, a European regional application or a PCT application). Protection for the branched off utility model goes into effect upon registration – regardless of the outcome of the related patent grant procedure.
- You can branch off as many utility models as you like from the same patent application with different claims. This means you can specify individual utility models towards specific infringing products, and you can amend the claims at any time.
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Join the Discussion
17 comments so far.
ipguyAugust 25, 2020 02:54 pm
Thank you for the useful information, Max. My point, however, was that the article is entitled “Applying for a Patent in Germany,” and I was merely pointing out that the focus on utility applications was leaving out a crucial piece of IP protection (aka the “Geschmacksmuster”) available in Germany. The term of a Geschmacksmuster can be twenty-five years, just like the EU registered design.
MaxDreiAugust 25, 2020 07:01 am
Oops. Sorry. In the above # 15, I wrote “10 year term”. Whatever was I thinking? Not 10. Rather, 3.
See the Link below for one good summary of unregistered design rights in i) EU and ii) UK.
MaxDreiAugust 25, 2020 04:06 am
Nice article, ipguy? Indeed. But “Geschmacksmuster” translates into English as “registered design” (or into American as “design patent”) and there is plenty on that subject already, in the thread above. Nevertheless, thanks for raising the subject.
In the EU, design rights are (like trademarks but unlike utility patents) codified. If readers want to know more about how design rights are protected throughout Europe they should reflect on three forms of protection, namely i) the EU’s 25 year term design patents, ii) the EU’s 10 year term unregistered design right law, and iii) copyright law. they might think of going to the EUIPO website and there gorge, free of charge, on all the information they can eat.
European Registered Design rights are cheap to obtain and potent in their effect. This, it was thought, would benefit home industry (given that, historically, owners have never really bothered with foreign filings of design patents). Guess what happened? The IPR-savvy parts of the world (USA, East Asia) piled in while domestic industry continued to doze. Who could have predicted that to the well-meaning politicians?
ipguyAugust 24, 2020 07:30 pm
Nice article, but what about the Geschmacksmuster?
AnonAugust 24, 2020 02:59 pm
Your impression MaxDrei IS your spin — the very thing that you seemed to want to take issue with.
MaxDreiAugust 24, 2020 12:24 pm
So, I (under my pseudonym) write that a “high proportion” of software inventions falter under the EPC whereas Herr Stolmar (of the firm Stolmar & Partner) writes:
“3. Software can be protected, you have quite strict case law and examination guidelines, but it is quite reliable and foreseeable whether you can get something or not; usually you may get a bit less than in a parallel proceedings in the US”
I agree with him, to the extent that:
“…it is quite reliable and foreseeable whether you can get something or not”
But nevertheless hold to my assertion that a “high proportion” of software inventions won’t stand up, under the EPC, in Germany.
My impression is that, at the USPTO, until recently, it was the case that quite a “high proportion” of software cases filed at the USPTO were business method cases. Herr Stolmar, If I may, I have a question: software inventions in the field of (say) autonomous vehicles are (it goes without saying) patentable in Germany but are you saying that here in Germany business method computer programs are equally patentable?
AnonAugust 24, 2020 06:18 am
Readers should not be under any delusion that MaxDrei has properly characterized “a high proportion” of software claims.
On what basis is this assertion of his made?
As I mentioned, this is his typical game of spin. Sure, he can link to appropriate rules, but it is not the baseline rules that his spin surfaces.
Matthias StolmárAugust 24, 2020 05:17 am
Some minor additions to your questions:
1. Composition of matter can be protected by a Utility Model. Exycluded are basically only method claims
2. of course there is national German design protection in addition to the EU wide design; it is a matter of strategy if you wish to protect a design in single European countries or European (EU) wide
3. Software can be protected, you have quite strict case law and examination guidelines, but it is quite reliable and foreseeable whether you can get something or not; usually you may get a bit less than in a parallel proceedings in the US
4. The EPO has a very strict standard as to Obviousness and disclosure. The German office is less dogmatic. There is still considerable difference between the ePO and the GPTO, so the national German route may sometimes more effective .
5. Indeed, in some tech fields,Germany may be enough for protection in Europe, think of the car and automotive industry , GM filed to my knowledge German national patents only via their German Opel subsidiary. Its just the most important market.
Any more questions are welcome
MaxDreiAugust 23, 2020 04:50 pm
Readers should not be under any delusions. At the EPO it is not “easy” to defeat the exclusion from patentability of any subject matter which fails to rise to the level of a combination of technical features that solves an objective problem in technology in a non-obvious way.
A high proportion of software inventions cannot be parsed into a claim that passes muster under the EPC. Patent attorney firms in the USA differ in the degree that they appreciate this reality, and the best of them draft accordingly, from the get go. If you want to characterize such drafting skills as an easy walk around the exclusion, anon, I can’t stop you.
AnonAugust 23, 2020 02:16 pm
Except for the fact that it IS easy to walk around, I might agree with you, MaxDrie.
As it is, no, I cannot agree with you.
MaxDreiAugust 23, 2020 11:23 am
Here is the EPC’s eligibility section, Art 52 EPC
It is not a good idea to tell people that the prohibition in Europe on patents for programs for computers is “easily walked around”. Clients might get a false impression.
AnonAugust 23, 2020 08:21 am
As odd as ever, your spin here should be exposed as just that: spin.
While you do include the words ‘as such,’ you attempt to paint a de facto situation opposite of what it actually has become.
Our firm’s foreign counsel routinely obtain putative software patents in EU countries because that “as such” (and “per se”) restriction is easily walked around by knowledgeable ‘scriviners.’
MaxDreiAugust 23, 2020 07:55 am
Design registration law is codified by the EU. See Link below. Cheap to apply, no examination for novelty, quick to get, potent in the rights given by registration. 25 year term. What defeats invalidity attacks is “individual character”. Infringement when that individual character is taken.
Scope of protection will depend on how crowded the design field already was, at the time of filing. See Article 14 of the Regulation, here:
(14) The assessment as to whether a design has individual character should be based on whether
the overall impression produced on an informed user viewing the design clearly differs from that
produced on him by the existing design corpus, taking into consideration the nature of the
product to which the design is applied or in which it is incorporated, and in particular the
industrial sector to which it belongs and the degree of freedom of the designer in developing the
Does that help?
jacekAugust 23, 2020 07:11 am
Very informative article but is missing one more route to get some IP protection. Can you provide a quick overview of “Industrial design registration” so the readers will have full picture?
Andreas ThielmannAugust 23, 2020 06:14 am
Yes, Gerry, you can get a utility model for compositions of matter.
Only methods are excluded from protection by a German utility model.
MaxDreiAugust 23, 2020 04:35 am
Lay readers will be astonished to discover how patent-friendly Germany is. See the article and my sentences below. Perhaps it is not a co-incidence that Bloomberg fingers Germany as “the most innovative nation world-wide”. In other reports, Germans enjoy the most free time of almost any country in the world, spend the most on their free time activities and enjoy one of the world’s best health-care systems.
Inventors: You file in Germany. For the next 7 years you can draw claims from that reservoir of disclosure made to the Patent Office, prosecute to issue the claims you want and bring proceedings for infringement in a court that has no locus to decide on validity.
If speed is of the essence, branch off a UM, a “utility model” (Gebrauchsmuster) with claims tailored to the problem, and bring it to issue (no exam on the merits) within 4 months.
Ask for, and often get, interlocutory injunctive relief from the infringement. Now how about that for a position from which to invite the infringer to take a licence?
Gerry. Yes. You can’t have method claims in a UM though.
The question arises: why bother at all with the EPO? In many industries, a patent in Germany is all you need, to dominate all of Europe. Vehicles, for example. Suppose the patent obstacle exists only in Germany. Can you make a profit out of the rest of the EU if you can’t market your vehicles in Germany? Mr Musk, you are currently very busy here in Germany, building the world’s biggest new car factory (near Berlin). What do you say?
Then again, readers, given that in Europe you can’t patent software as such, is Europe doomed to ever-increasing poverty?
Gerry J. ElmanAugust 22, 2020 12:31 pm
Can a German utility model have a claim to a composition of matter?