On our first full day in Munich, we visited both the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt, or DPMA) and the Max Planck Institute for Intellectual Property, Competition and Tax Law (which I recapped in an earlier post). Munich is Germany’s capital of Intellectual Property, so it made sense to have an IP theme for the day.
At the DPMA, we met with Hubert Rothe, the head of the Information Services for the Public division. He provided us with an overview of Germany’s IP law and the function of the DPMA.
Before we get into the details of our visit, I am submitting this post to Rothe to review in order to confirm that what I’ve written is, you know, accurate. So expect it to be updated shortly.
The DPMA originally opened in Berlin in 1877. The old office in the Kreuzberg neighborhood now houses the Jewish Museum. In 1949, it was reopened in Munich. There are presently three DPMA offices. The Munich location has 2,259 staffers. The office in Berlin, which focuses on education resources for the public, has 105 employees, while the office in Jena has 235 staffers. The DPMA employs 700 patent examiners and 150 trademark examiners.
Rothe said that the mission of IP protection is the “promotion of economic development.” He explained that IP is divided into two broad categories, industrial property and copyright. We didn’t discuss copyright in any great deal, but Rothe did say that Germany does not have a copyright office “since the legislation in Germany and other European countries does not provide for a copyright registration. The creator owns the copyright without any formal steps.”
Industrial property is divided into four categories:
- Technical intellectual property rights (divided into patents and utility models);
- Marks (trade marks and service marks);
- Protection of plant varieties.
Patent law operates under a contract theory: an accepted application is a contract between the holder and the state that gives the former exclusive right of use for a maximum of twenty years. Unlike in the U.S., where the inventor holds a patent, European patents are mostly held by the company employing the inventor. Rothe wrote, “According to German law the inventor has to give notice to the employer about all inventions related to the job. The employer has to decide whether he will file a patent application or allow the employee to personally file the application. If the employer files the application the employee is entitled to an appropriate remuneration.”
The applicant must agree that the government can publish the specs of the invention to make them available to competitors and the general public. This information can be found in such publications as the patent documents (e.g. “patent specification” and the patent gazette, both published on the internet. This is in part how the law encourages invention in Germany. Only military-related trade secrets are not published, and even then, patent examiners decide in co-ordination with the Federal Ministry of Defense whether this exemption is granted. Rothe said the number of patents that aren’t published is relatively small.
The preconditions for IP protection are worldwide novelty, inventive activity (does the invention add something valuable to the state of the art), and commercial applicability. Discoveries, scientific theories, mathematical methods, plans, rules, and processes for theoretical activities are all not eligible for IP protection. Neither is software, per se. Rothe wrote, “The main claim of the patent application must include ‘technical means’ for solving the given problem in addition to the software.”
Applicants can choose to apply for protection in either Germany at the DPMA or at the European Patent Office, which opened in 1977 and also happens to be where we had lunch after our meeting. Rothe said that the advantage to applying for protection at the European office is that you only need to file once in English, German or French, then designate which states the patent applies to. Rothe wrote, “The procedural fees to be paid to the EPO are much higher than the fees of a single national patent office.”
Rothe added that the application practice of applicants, e. g. of those of the automotive sector, show that in many cases filing in one of the bigger European countries is as good as having a European-wide patent anyway. After all, if you have a product that can’t be used in Germany or the United Kingdom, then what good is it? In addition, at the German office, the application process can be completed faster. European IP and copyright laws are harmonized with each other to a large extent, but not with U.S. law.
The DPMA utilizes the “International Patent Classification” consisting of about 70,000 different classification units, and these units determine the type of examiner handles each application. The patent examiners each specialize in around 100 units. Germany requires examiners have five years of practical work in industry before they qualify for the two-year examiner training program. The European office, incidentally, does not require the same length of experience. This classification system is pan-European and is also used in Asia. Again, the U.S. has a different system.
Rothe said that about 50 percent of applications are granted, but the scope of the patent can be reduced by the examiners. After a patent is granted, opposition, appeal, and nullity procedures can follow.
Patents can be renewed annually, for a fee, up to the 20th year after filing. There are generally no options of renewing past the 20 years, although there are exceptions: for example, pharmaceutical inventions can get, after completion of the patent life of 20 years, a subsequent protection of maximally additional five years.
A key part of both applying for and examining patents is the use and creation of literature. Applicants need to cite what is presently the state of the art in their respective industries. The examiners perform a novelty search using all relevant literature. The examiners also cite all documents relevant for delimiting the claims in the application. In addition, Patent applications are published 18 months after they are filed. Non-patent literature, such as journals, play a big role in the chemical, pharmaceutical and biotech patent applications, but a smaller role in other industries like engineering.
Because of the importance of literature searching, it is no surprise that the library at the DPMA is extremely important. It has 40 staff members, 960,000 volumes, and 1,500 journals, and its two target users are the examiners and the general public. Because 80 percent of technical knowledge is only disclosed in patent documents, it is essential that the office disseminates IP information. Much of the office’s budget is spent on making office decisions, applications and so forth publicly available.
Because of its mission, the DPMA created DEPATISnet, the German patent database. (A pan-European database called esp@cenet is available from the European Patent Office.) Rothe said that the librarians thought of the functionality that was necessary for use by the public. After an RFP was distributed Europe-wide, a Berlin company won the contract to design and support the system. The DPMA’s 45 million patent archive was scanned and put into a document management system that formed the basis for the database. In the meantime the computer center of DPMA in Munich operates DEPATISnet.
The types of searches performed in DEPATISnet range from novelty searches to monitoring, to observe what competitors are doing, and competitive analysis, to determine how your company is doing. Searching is also important when preparing for infringement lawsuits.
DEPATISnet allows for basic and advanced (Boolean) searching. Patent examiners get more sophisticated research capabilities. Although the patent information is freely available on the internet, companies can make a lot of money either offering professional search services or designing publicly available advanced databases. The information services to the public division of DPMA studies the commercial products to determine the types of advanced features should be added to DEPATISnet. While it is the policy of the government to not interfere with the commercial business, Rothe said improving DEPATISnet smoothly from year to year helps pressure the companies to improve their own products.
Munich is not just Germany’s IP capital, of course. It is also Germany’s beer capital, so it made sense to drink at the Hofbräuhaus as well. I won’t recap that, other than to say that I held my own.