Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Germany: Court decides on issues related to declaration of division during appeal

According to Section 39 of the German Patent Act, the applicant may divide an application at any time by submitting a declaration of division. The text of the divisional application can be filed within three months of receipt of this declaration.

In a recent decision (19 W (pat) 33/17), the Federal Patent Court had to decide on two issues: (i) to which body the declaration of division has to be submitted during the appeal stage, and (ii) whether or not re-establishment of rights for submitting this declaration can be requested.

In this particular case, a patent application was rejected by the examining division of the German Patent and Trademark Office (GPTO), and the applicant filed an appeal with the Federal Patent Court. However, the appeal was dismissed. Within the time limit for filing an appeal on points of law with the Federal Court of Justice, the applicant submitted a declaration of division to the GPTO but not to the Federal Patent Court. Shortly after expiry of the time limit, the GPTO forwarded the declaration of division to the Federal Patent Court. As the applicant did not appeal the decision of the Federal Patent Court, the application was not pending anymore at the time when the GPTO forwarded the declaration of division to the Federal Patent Court.

Based on the following reasoning, the Federal Patent Court decided that no effective declaration of division had been submitted.

While an application is pending in the appeal stage, the declaration of division is to be submitted exclusively to the Federal Patent Court. This also applies if the Federal Patent Court has already issued its decision on the appeal. In this case, the Federal Patent Court remained the competent authority to decide on whether or not an effective declaration of division was submitted and, if effective, on patentability of the divisional application.

Furthermore, the Federal Patent Court decided that Section 39 of the German Patent Act does not contain – not even implicitly – a time limit, which is why no re-establishment of rights for submitting a declaration of division is possible. The approach taken by the Federal Patent Court is in line with the case law of the Boards of Appeal (e.g. J 10/12).

The Federal Patent Court considered both issues i.e. the correct addressee for the declaration of division during the appeal stage (in particular if the Federal Patent Court has already issued its decision on the appeal), and the re-establishment of rights for the declaration of division as legal matters of fundamental importance and therefore allowed an appeal to the Federal Court of Justice.

haggenmuller.jpg

Christian Haggenmüller


Maiwald Patentanwalts- und Rechtsanwaltsgesellschaft mbH

Elisenhof, Elisenstr 3D-80335, Munich, GermanyTel: +49 89 74 72 660 Fax: +49 89 77 64 24info@maiwald.euwww.maiwald.eu

more from across site and ros bottom lb

More from across our site

The IPO must change its approach and communicate with IP owners about its attempts at clearing up the trademark register
Counsel are looking at enforceability, business needs and cost savings when filing for patents overseas
James Perkins, member at Cole Schotz in Texas, reveals how smaller tech companies can protect themselves when dealing with larger players
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The EUIPO management board must provide the Council of the EU with a performance assessment before it can remove the executive director
The European Commission confirmed that plans for a unitary SPC will be published in April alongside reforms to the SEP system
The court held that SEP implementers could be injuncted or directed to pay royalties before trial if they are deemed to be unwilling licensees
Patentees should feel cautious optimism over the EPO Enlarged Board of Appeal’s decision in G2/21, say European patent attorneys
Significant changes to the standard of law are unlikely, say sources, who note that some justices seemed sceptical that the parties disagreed on the legal standard
Sources say the High Court of Australia’s ruling that reputation is immaterial in trademark infringement cases could stop famous brands from muscling out smaller players