1. EU-Patent starts in 2014
After adoption by the European Parliament you will be able to apply for one patent which is directly valid in 25 EU member states. This will decrease the costs about 75 percent. It is only necessary to file an application in German, English or French. A central Unitary Patent Court in Paris will handle the patent infringement cases.
2. Gulde Hengelhaupt Ziebig & Schneider ranked as a leading intellectual property law firm in Chambers Global 2011
We are pleased to report that Gulde Hengelhaupt Ziebig & Schneider has been ranked among the top 20 law firms in Germany for patent prosecution. Further, Mr. Hengelhaupt was ranked as a leading individual in IP in Europe. For more details - click here.
3. EPO RULE CHANGE OF JANUARY 1, 2011
Requirement to disclose search results on priority applications - New Rule 141 EPC
Under amended Rule 141(1) EPC, an applicant claiming priority of a previous application has to file a copy of the results of any search carried out by or on behalf of the authority with which the previous application(s) was/were filed (= office of first filing (OFF)).
The obligation under Rule 141(1) EPC exists as long as the European patent application is pending before the EPO.
What is required?
A simple copy of the search result is required to be filed.
What is not required?
A listing of the cited prior art drawn up by the applicant himself is not required. A translation of the search results is not required. Copies of documents cited in the OFF search results do not have to be filed.
What is a search result?
Under Rule 141 (1) EPC, search results may be in whatever form or format they are drawn up by the OFF (e.g. search report, listing of cited prior art, relevant part of examination report).
According to an unofficial communication of the EPO, only a copy of the first OFF search result or first examination action (when the OFF does not formally issue a search report) needs to be submitted. Subsequent information on prior art cited latter during the OFF proceedings may be sent to the EPO on applicant's own volition at any time or when requested during examination under Rule 141(3).
When is the copy to be filed?
The copy is to be filed together with the European patent application, or, in the case of a Euro-PCT application, on entry into the European phase for all applications being filed after January 1, 2011.
Exemption of the requirement to provide a copy of a search result
The European Patent Office shall include in the file of a European patent application a copy of the search results where a search report of the following type was drawn up by the European Patent Office on an application whose priority is claimed:
- European search report (Art. 92 EPC),
- international search report (Art. 15(1) PCT),
- international-type search (Art. 15(5) PCT),
or search reports made on behalf of a national office on a national application of Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, Netherlands, and Turkey. In these cases, the applicant shall be exempted from filing a copy of the search results under Rule 141(1) EPC.
The President of the European Patent Office recently further decided that the EPO shall include in the file of a European patent application a copy of the search results referred to in Rule 141(1) EPC, thus exempting the applicant from filing said copy, where the priority of a first filing made in one of the following states is claimed:
- United Kingdom, and
- United States of America.
Search not available
Where the OFF search results are not available when filing the European patent application or, in the case of a Euro-PCT application, when entering the European phase, the applicant has to file the search results with the European Patent Office without delay after they are made available to him.
For European divisional applications, the copy of the search results does not have to be filed again if it has already been filed with respect to the parent application. Please see also the explanations below regarding new Rule 70b EPC.
Consequences of a failure to provide search results
New Rule 70b EPC establishes the procedure where search results have not been provided and are not deemed to be available to the EPO. A communication will issue setting a non-extendable two month period for reply in which the applicant must file either:
(a) a copy of the search results, or
(b) a statement of non-availability of search results (if they are not available to the applicant).
Failure to comply will result in the application being deemed withdrawn.
Please send us a simple copy of the first search result of the office of first filing as soon as it is available or after being asked to provide the information.
4. Gulde Hengelhaupt Ziebig & Schneider ranked as Top Law Firm at s.m.d. markeur for German trademark registration
Gulde Hengelhaupt Ziebig & Schneider was ranked as top law firm 2009 in the category "Registration ratio for German trademarks" among all German law firms with a ratio of 100% of all trademarks filed with the German Patent and Trademark Office (click here). This top ratio is mainly due to our professional consultation prior to the trademark application which results in efficient trademark prosecution. Further to this, predictable trademark rejections can be prevented thereby saving unnecessary costs.
5. New important Judgement on the Patentability of computer-implemented Inventions in Germany
Recently, the German Federal Court of Justice (Bundesgerichtshof, BGH) has issued a judgement (“Dynamische Dokumentengenerierung” - “dynamic document generation” - Xa ZB 20/08) which is considered to be an important change to the question whether inventions related to computer programs are patentable. Regarding computer-implemented inventions, the previous legal practice was rather restrictive. The new judgement however improves the applicant’s prospects to obtain patent protection for inventions related to computer programs.
The court has specified the legal practice concerning computer-implemented inventions. According to the German patent law, an invention is patentable only if a technical problem is solved by technical means. In the past, many “software inventions” were deemed not to use technical means. The previous legal practice relies amongst others on the court’s judgement of 1991 (“Seitenpuffer“) which rules that an invention is technical only when the invention relates to the functioning of a computer system and allows the interworking of the computer system’s elements.
In the present judgement the Federal Court of Justice pointed out, that a means for solving a technical problem is not only technical, if it modifies components of a device. It is in fact sufficient that the program flow which is used for solving the technical problem is influenced by technical circumstances outside from the data processing device, and if the solution consists in providing a computer program which reflects these circumstances.
New Evaluation Scheme for computer-implemented Inventions
According to the new judgement the following questions have to be answered:
a) Are components of a device or system modified? or
b) Is a computer program used which reflects technical circumstances? (New)
If one of these questions can be answered with yes, the computer-implemented invention solves a technical problem with technical means and should be generally patentable.
The legal practice regarding computer-implemented inventions has been changed to be less restrictive. Accordingly, applicants may obtain protection for inventions related to computer programs which were not patentable in the past.