Lawyer Monthly Magazine - March 2020 Edition

Legal Game Changers Dr Andreas Peters, Hannke Bittner & Partner 78 WWW.LAWYER-MONTHLY.COM | MAR 2020 concern § 8 sentence 1, as well as § 8 sentence 2 of the German Patent Law are relevant. To determine whether an entitled person can demand the transfer of a patent or the granting of a co-entitlement to it [under Sec. 8, Patent Law] and whether there is a claim to be named as (co-) inventor [under Sec. 63 (2), Patent Law], an examining comparison of the teaching applied for the patent with that whose unlawful withdrawal is claimed, is required. For this purpose, it must first of all be examined, to what extent both teachings are identical. Whether and, if applicable, to what extent a wrongful extraction is present, it can be reliably assessed only on the basis of established similarities between the teaching which is claimed to be extracted and the teaching that is actually applied. This is why the claim for vindication is also open to those who have completed an invention and is possibly protectable in itself, but which makes a substantial contribution to the subject matter of the application or the property right granted, provided that the invention taken is an inventive contribution, a creative contribution or a qualified contribution, to the subject matter of the application or the property right granted. Today, an inventor can protect an invention in Europe via one or several separate national patents or single a European patent. It would be conceivable, however, to file objections by third parties with the EPO (European Patent Office) and/or the DPMA (German Patent Office) during the grant procedure in order to prevent the "allegedly" entitled party from being granted a patent. The opposition could also be filed before the competent patent authority in order to destroy the patent. How long do these proceedings last? A lawsuit before the district court does not initially have a specific processing period, but the length of first instance proceedings, i.e. the proceedings before the regional court, is often limited to one to three years. Both, the plaintiff and the defendant can appeal to the responsible Higher Regional Court, whereby the duration of the proceedings can also be expected to be between one and three years. What happens if there is not enough evidence? How can clients recover from this? If the action before the district court and/ or the appellate court is dismissed and the "evidence" has not convinced the court, the right remains with the (alleged) first inventor. In this case, if the decision of the responsible court is legally binding, the client cannot sue twice in the same case according to § 281 ZPO. Therefore, the client cannot "recover" from this final decision of the German civil courts. Can you share any changes you are looking out for in the patent world, especially regarding the anticipated Unitary Patent, which will impact clients? It is clear to mention the implementation of the Unitary Patent. Unitary Patents will make it possible to get patent protection in up to 26 EU Member States by submitting a single request to the EPO. They will build on European patents granted by the EPO under the rules of the European Patent Convention (EPC), so nothing will change in the pre-grant phase and the same high standards of quality search and examination will apply. After a European patent is granted, the patent proprietor will be able to request unitary effect, thereby getting a Unitary Patent which provides uniform patent protection in up to 26 EU Member States. Today, an inventor can protect an invention in Europe via a one or more direct national patent applications (filed with national patent offices) or via a European patent (filed with the EPO). The EPO examines applications for European patents centrally, saving inventors the costs of parallel applications at each national patent office, while ensuring a high quality of the granted patents. However, granted European patents must be validated and maintained individually in each country where they take effect. This can be a complex and potentially very costly process: validation requirements differ between countries and can lead to high direct and indirect costs, including translation costs, validation fees (i.e. fees due in some member states for publication of the translations) and associated representation costs, such as the attorney fees charged for the administration of the patent (i.e. payment of national renewal fees). These costs can be considerable and depend on the number of countries where the patent proprietor wishes to validate the European patent. LM Today, an inventor can protect an invention in Europe via a national patent or a European patent.