German Patent Act on Official Fees will also affect Rules of Procedure –
Official Last Annuity Reminder will be dropped.

On the occasion of changing over to the Euro system, a German Act on Official Fees has been established to become effective January 1, 2002. With this new Act, all fees before the German Patent and Trademark Office as well as the fees for the proceedings before the Federal Patent Court have been adjusted to the Euro system.

The new Act contains all regulations necessary for modernizing the administration of intellectual property rights before the German Patent and Trademark Office. Furthermehr, the new Act provides provisions for preparing the electronic publication.

To take account of the concerns of the parties of the proceedings for expediting same, the new Act also temporarily eliminates a second instance for the opposition proceedings.

In the following, we would like to introduce the essential amendments:

1.Renewal fees can be paid without surcharge within two months of the due date. Contrary to the present regulations, it will not be required to serve a final annuity reminder upon the applicant or his representative to start the period for paying the renewal fee with surcharge. Instead, the renewal fee may be validly paid within six months from the due date, provided that the renewal is paid with surcharge.
According to the new Act, the German Patent and Trademark Office is not obliged to inform the applicant or proprietor of the expiration of the two-month term for paying the renewal fee. While we are expecting the German Patent and Trademark Office to provide respective information, the applicant or proprietor cannot rely on the receipt of such a final reminder.
From the above it follows that the applicant or proprietor of an intellectual property right administered before the German Patent and Trademark Office is fully responsible for calculating and monitoring the terms for effecting payment of a renewal fee and ensuring the payment within the term.

2.To also facilitate the handling of the filing fee, an application before the German Patent and Trademark Office shall be deemed to be withdrawn should the respective fee not be paid within three months after the due date without having to notify the applicant in advance.

3.An opposition against a granted German Patent shall not be deemed to have been filed until the opposition fee has been paid. In addition, for a period of three years, the decision in the first instance opposition proceedings will be rendered by the Federal Patent Court and, hence, no appeal can be filed against this first instance decision. This decision can only be appealed on a point of law to the Federal Court of Justice according to Section 100 Patent Act if the Senate of the Federal Patent Court has given leave to an appeal on a point of law, or if at least one of a number of procedural deficiencies exists in connection with the procedure before the Federal Patent Court.

4. Decisions relating to trademarks of the Trademark Offices and the Trademark Departments which have been taken by a civil servant of the elevated grades or a comparable employee of the German Patent and Trademark Office shall directly be appealed by filing opposition with the Federal Patent Court. Up to now, those decisions could not be appealed. Instead, the respective decision was checked before the German Patent and Trademark Office after filing a request for reconsideration.