On October 1 2009, an amendment to the law on costs in patent affairs
came into force in Germany. Previously no claim fees existed at the
German Patent and Trademark Office (GPTO). The amended law regulates
that every claim in excess of 10 claims incurs increased filing fees
(electronic filing: €20/claim, paper filing: €30/claim). Compared to
other jurisdictions, these claim fees are moderate.
However, there is a trap. As formally, the fees for excessive claims
are incorporated into the filing fee, a severe loss of rights may result
since an application is deemed to be withdrawn if the fees are not
correctly calculated and paid.
Upon entering a German national phase from a PCT application, a
national fee, corresponding to the filing fee, has to be paid.
Simultaneously, amended claims may be filed. Unfortunately, the wording
of the amended law on costs is not clear in respect of how to calculate
the filing fee and on which claims the calculation of the included claim
fees is to be based. Unlike many other jurisdictions, the GPTO
presently holds that filing fees shall include (at least) fees for all
claims of the PCT application as filed. Meaning, upon entering the German phase, an applicant has no option of reducing fees for claims.
Applicants who recently paid fees based on a reduced number of claims
upon entering the German phase from a PCT application have now been
informed by the GPTO that the German phase has not been validly entered.
Appeals and requests for re-establishment of rights are presently being
filed. The German ministry of justice plans to clarify the wording of
the law to correspond with the practice of the GPTO. Various attempts
are being made, for example by the German patent lawyers' association,
to influence the legislator to amend the law such that fees are to be
paid only for those claims which are pending upon entering the German
Maiwald Patentanwalts GmbH
Elisenhof, Elisenstr 3
D-80335, Munich, Germany
Tel: +49 89 74 72 660
Fax: +49 89 77 64 24