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With Dr. Susanne Sonnenhauser and Dr. Christian Gärtner, two very experienced colleagues from the Prüfer und Partner team are joining the management.

Jürgen Feldmeier, managing partner:
“With Dr. Susanne Sonnenhauser, whom we have known for 16 years as an extremely competent and determined patent attorney and proven life science expert, and with Dr. Christian Gärtner, who started and successfully completed his training as a patent attorney in our firm 10 years ago and is now extremely experienced in bilateral proceedings, we have gained two partners who carry the Prüfer DNA. Today and in the future, they will work conscientiously and ambitiously to meet the needs of our clients.”

We look forward to a successful and inspiring future.

Further news

自 2024 年 4 月 1 日起,欧洲专利局将提高部分费用

自 2024 年 4 月 1 日起,欧洲专利局将提高大部分费用,平均增幅约为 5%。第 3 次和第 4 次续费的涨幅将更大,将上涨近 30%。
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52 years of consistency and still fit for the future – Prüfer und Partner welcomes the next generation of partners

With Dr. Susanne Sonnenhauser and Dr. Christian Gärtner, two very experienced colleagues from the Prüfer und Partner team are joining the management.
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Recent earthquake in Japan

We were deeply shocked to learn of the devastating earthquake in Japan and would like to express our sincere condolences to the victims of this earthquake. In these difficult times, we would like to express our deepest sympathy to you and your fellow human beings.
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Abolition of the 10-day notification fiction at the European Patent Office

In view of the digital age, in which documents will only be served electronically in the future, the European Patent Office will abolish its so-called 10-day fiction of service, which previously governed the calculation of time limits, as of November 1, 2023.
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Prüfer普律丰事务所鉴于在专利申请和专利无效领域的优异表现上榜IAM Patent 1000 2023国际排名

我们很高兴地与您分享,在最新公布的2023年版IAM Patent 1000(世界领先的专利服务提供商排名之一)中,我所Prüfer & Partner普律丰和我们的四位知识产权律师因其在专利申请和无效方面的杰出工作而金榜题名。
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Prüfer律师列选为Handelsblatt2023年年度最佳律师

我们非常高兴地看到,我们的专利律师Dorothea Hofer博士、Jürgen Feldmeier先生以及Andreas Oser博士在2023年6月16日Handelsblatt公布的排名beste Anwälte des Jahres 2023中被列为2023年的年度最佳律师。
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PRÜFER & PARTNER is ranked again in “The Legal 500 – Germany 2023”

Prüfer & Partner mbB Patent- und Rechtsanwälte is again recognised for its outstanding performance in the current ranking of “The Legal 500 – Germany”. The firm is recommended in the areas of “Patent Law: Patent Attorneys: Patent Prosecution” and “Patent Law: Patent Attorneys: Litigation” and is thus listed among the best IP law firms in Germany.
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Plausibility – an unsolved problem in patent granting

The decision of the Enlarged Board of Appeal (GBK) of the European Patent Office (EPO) in the currently pending proceedings G2/21 is awaited with great excitement. This could have a significant impact on the future filing strategy of applicants, because at its core is the question of when an invention is “ready” to file.
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The European patent grows to 39 contracting states with the accession of Montenegro

On July 15, 2022, Montenegro completed the final step towards accession to the European Patent Convention (EPC) by depositing its instrument of accession and became the 39th member state of the European Patent Organization (EPO) on October 1, 2022.
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Amendments of regulations before the German Patent and Trade Mark Office (DPMA)

In the months of May and July 2022, some amendments relevant for practice before the DPMA will enter into force. The most important ones in brief are listed here.
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In the months of May and July 2022, some amendments relevant for practice before the DPMA will enter into force. The most important ones in brief:

(1) Increase of renewal fees for German patents (entry into force: 1 July 2022).
The patent fees for annual renewals will be moderately increased with due dates from July 2022, concerning payments from the 5th renewal fee. The following list shows the old (left column) and the new (right column in brackets) fees in EURO:

Annual fees:

  • for the 3rd year . . . . . . . . . . . . . . . . . . . . . . . . 70
  • for the 4th year . . . . . . . . . . . . . . . . . . . . . . . . 70
  • for the 5th year . . . . . . . . . . . . . . . . . . . . . . . . 90 (100)
  • for the 6th year . . . . . . . . . . . . . . . . . . . . . . . . 130 (150
  • for the 7th year . . . . . . . . . . . . . . . . . . . . . . . . 180 (210)
  • for the 8th year . . . . . . . . . . . . . . . . . . . . . . . . 240 (280)
  • for the 9th year . . . . . . . . . . . . . . . . . . . . . . . . 290 (350)
  • for the 10th year . . . . . . . . . . . . . . . . . . . . . . . 350 (430)
  • for the 11th year . . . . . . . . . . . . . . . . . . . . . . . 470 (540)
  • for the 12th year . . . . . . . . . . . . . . . . . . . . . . . 620 (680)
  • for the 13th year . . . . . . . . . . . . . . . . . . . . . . . 760 (830)
  • for the 14th year . . . . . . . . . . . . . . . . . . . . . . . 910 (980)
  • for the 15th year . . . . . . . . . . . . . . . . . . . . . . . 1,060 (1,130)
  • for the 16th year . . . . . . . . . . . . . . . . . . . . . . . 1,230 (1,310)
  • for the 17th year . . . . . . . . . . . . . . . . . . . . . . . 1,410 (1,490)
  • for the 18th year . . . . . . . . . . . . . . . . . . . . . . . 1,590 (1,670)
  • for the 19th year . . . . . . . . . . . . . . . . . . . . . . . 1,760 (1,840)
  • for the 20th year . . . . . . . . . . . . . . . . . . . . . . . 1,940 (2,030)

Surcharge for late payment of the annual fee . . 50

(2) Extension of the time limit for entering the German national phase in PCT applications (entry into force: 1 May 2022)
The time limit for entering the German national phase in PCT applications is extended from 30 to 31 months from the filing or priority date. This gives more time to pay the fee for the initiation of the national phase at the DPMA and, if necessary, to submit the translation of the application in German. This is now also a welcome harmonisation with the corresponding 31-month time limit for the entering the regional phase before the European Patent Office (EPO).

(3) Conduct of hearings and oral proceedings by video (entry into force: 1 May 2022)
In patent, utility model, trade mark and design procedures before the DPMA, the possibility to participate in hearings and oral proceedings by video transmission will be opened. However, the possibility to participate in on-site personal hearings instead will continue to exist

If you have any questions, please do not hesitate to contact our team. Dr Andreas Oser, LL.M. (office@pruefer.eu)

Prüfer & Partner has again been awarded by the renowned professional publisher Legal500 in the field of Intellectual Property Law, both in the category “Prosecution” and in “Litigation”! We are very pleased about this further award for our work and would like to sincerely thank all our clients, foreign colleagues as well as employees for the trust they have placed in us and the good cooperation.

The link to the detailed ranking result on LEGAL500 can be found here.

Referenzen

“Prüfer & Partner are a strong team, which is particularly effective in the interaction between back office (very strong and extremely friendly!), drafting of applications/prosecution and legal advice in the conflict/licensing environment.”

“Dorothea Hofer: Excellent, conscientious and comprehensive advice in the conflict/licensing environment, very pragmatic and savvy and exceptionally helpful.”

“Very high level of expertise.”

“Dorothea Hofer, Jürgen Feldmeier and Andreas Oser. They are very good at understanding complex technical issues, give appropriate advice, and handle urgent matters expeditiously. Mr. Feldmeier selects his associates very well in order to be able to handle important mandates well, especially litigation.”

“Dorothea Hofer and Jürgen Feldmeier are IP veterans, which is apparent in their practical advice and background knowledge of procedures and possible outcomes of office actions or conflicts. I find them very strong and attentive, especially with clients from Asia who feel safe with them. Perfect English and cultural sensitivity help them.”

The Legal 500 is a renowned research agency that specializes in law firm recommendations. As part of its research, the independent team of experienced editors conducts hundreds of interviews with attorneys and consults more than 23,000 clients each year, allowing for a comprehensive and thorough evaluation of law firms in a wide range of practice areas.

 

As previously reported, following ratification in Germany, the way is cleared for the European patent with unitary effect (EU unitary patent) and the Unified Patent Court (UPC). As a result of the deposit of the instrument of ratification by Austria on 18 January 2022, the “provisional application of the EPC/UPC” has now entered into force. Only the preparatory work for the establishment of the court system will have to be completed in the coming months. The Preparatory Committee estimates that it will take at least 8 months. Once the UPC has become effective, Germany will deposit its instrument of ratification as the last formal act, which will automatically trigger the starting point: at the beginning of the fourth following month, i.e. probably towards the end of 2022 or the beginning of 2023, the unitary patent and the UPC will finally become reality, after a long waiting period.

What does this mean for patent applicants and patent proprietors of European patents?
The following are some points to consider now, i.e. even before entering into force:

(1) Choice between the new unitary patent and the classical EP patent
Even if the option can in principle only be exercised after entry into force: by means of suitable procedural measures, this freedom of choice could still be used for EP applications currently pending before the EPO, even if the grant phase is already relatively far advanced.
In a recent communication from the European Patent Office, official measures are announced – without giving details at the moment – to give patent applications that are about to be granted the chance to obtain a unitary patent. The communication on the version of the patent application intended for grant (the so-called “Rule 71(3) Communication”) is considered to be the caesura for the applicability of these announced measures.
If you wish to maintain the option for applications although a Rule 71(3) Communication has already been issued, you may have to take your own procedural steps. That is, in order to gain time in this situation, for instance minor formal amendments to the intended text could be requested at the end of the regular 4-month period, in order to trigger a second 71(3) Communication. Alternatively, or in addition, it is also possible to continue the application after the due date for completion of the (possibly second) Rule 71(3) Communication has deliberately expired: after being notified of a loss of rights, further processing (with an official fee of 265.00 EUR) would then have to be requested.

(2) Choice depending on the type and number of countries desired
After entry into force of the Unitary Patent Act, the applicant must decide, at the latest one month after receipt of the decision to grant by the EPO, whether to proceed with EP validations in individual countries as before or to seek the new EU unitary patent. The new EU unitary patent would allow patent protection over the entire territory of the participating EU countries at one stroke, which currently includes the following 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. More will be added soon, as 8 countries only need to ratify (Czech Republic, Greece, Ireland, Poland, Romania, Slovakia, Hungary, Cyprus). If protection is to be achieved for further, non-participating countries – including non-EU states of the EPC such as Great Britain or Switzerland – additional national validations would have to be carried out there in accordance with the “old” model.

(3) Choice of (non-)applicability of the UPC (opt-in/opt-out)
Three months before the unitary patent and the UPC enter into force, the so-called “sunrise period” begins. From this time onwards, the applicant/patent proprietor can request the non-applicability of the UPC system for one or more or even all of his existing and future classical EP patents by “opting out”. In the opt-out state, individual national courts will then – during a transitional period of 7 years – retain jurisdiction as before in actions on patent infringement and validity in the respective country. Reasons for choosing the opt-out are, for example, not to expose the patent to the risk of a central invalidation through a single nullity procedure; furthermore, in the opt-out state, the development and the practice and case law in the new UPC system could first be observed; if sufficient legal certainty is given, the patent proprietor can then enable UPC applicability again in the future as a result of an opt-in declaration.

(4) Choice of a competent UPC court location for patent infringements
Due to their experience, the German court locations Düsseldorf, Munich, Mannheim and Hamburg will also play an important role in the new UPC system. The court location Germany could be further strengthened by the fact that the central UPC court in Munich is not only responsible for the field of mechanics, as originally stipulated, but may also awarded the technical fields of chemistry, pharmaceuticals and human necessities (incl. health care); this field was originally intended for London, but is now available for disposition as a result of Brexit.
If there is no opt-out, the decisions of the UPC court will be directly effective in all countries where the EP patent exists.

If you have any questions, please do not hesitate to contact our team. Dr Andreas Oser, LL.M. (office@pruefer.eu)

 

With the Epidemic Protection Act of March 27, 2020, Germany declared an “emergency of national dimension” in view of the COVID-19 pandemic. At the same time, tensions and international pressure to “abrogate certain IP rights” increased. In addition to the Federal Republic of Germany, there are numerous other countries around the world that, in principle, can make use of emergency decrees to fundamentally restrict patent rights, such as in the United Kingdom, France, the United States, Canada, Israel, Australia, China, Japan and Korea. However, up to now, in the summer of 2021, neither an order for use (Section 13 PatG) nor – according to current knowledge – an action for a compulsory license (Section 24 PatG) has been brought before the courts responsible for this. The demand to be met is enormous, especially for vaccine developments that have been described as “game changers”.

The following download pdf summarize why this is so – despite numerous and strongly debated demands.

The German Federal Constitutional Court rejected the two pending applications for a temporary injunction directed against the Act on the Agreement of 19 February 2013 on a Unified Patent Court. With this decision, the Federal Constitutional Court has cleared the way for a timely ratification of the UPC Agreement and thus for the entry into force of the Unified Patent Court UPC, probably in 2022.

After more than seven years struggling, the Agreement on a Unified Patent Court had eventually come into force on 18 December 2020 and had been stopped shortly thereafter by the above mentioned two applications for a temporary injunction.

In an order published on July 9, 2021, the Second Senate of the Federal Constitutional Court rejected the two pending applications for a temporary injunction.

The Senate based its decision on the ground that the constitutional complaints are inadmissible on the merits because the complainants have not sufficiently substantiated the possibility of a violation of their fundamental rights, in particular a violation of the principle of the rule of law, nor of a violation of the fundamental right to effective legal protection, nor of a violation of Union law.

As a result, the German Federal President is now free to sign the necessary documents which would allow the UPC to enter into force.  In the German legal community, it is generally believed that the UPC Agreement could start in the second quarter of 2022.
In the Unitary Patent system (UPS), applicants of European patent applications will, after grant of the European patent, have the choice to request and obtain a unitary effect of their patent in those states which have signed and ratified the Agreement. At present, the following 15 States have signed and ratified the UPC Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal and Sweden.

The UK had withdrawn its ratification in connection with Brexit and is not any more a member of the UPS and the UPC; however, this will have no effect with regard to the European patent which can still be designated for the UK as the UK remains a member of the EPC.
Further, Spain, Croatia and Poland have indicated that they will not ratify the UPS and the UPC as well.

Nevertheless, it can be expected that additional EU Member States will ratify the UPC Agreement at a later date.

In view of these new circumstances, we would like to draw attention to the fact that the Unified Patent Court will not only have jurisdiction over future unitary patents, but also over existing European patents. I.e. an existing European patent may be subject to a central invalidity attack before the so-called Unified Patent Court as of the date of entry into force of the new regulation and thus fall at once for all participating EU member states (see above) where the patent has been validated (note: validations of the European patent in non-EU member states remain unaffected). As a countermeasure, the possibility has been created for existing patents to opt out of this system (so-called opt-out), so that only the national patent courts of the member states in which the patent was validated will continue to have jurisdiction.

We therefore recommend that you should now promptly review your existing European patent portfolio to decide which patents you should opt out of the new system. Please do not hesitate to contact us if you have any questions.

Further information on the decision of the Federal Constitutional Court can be found here.

Please contact us for any questions.

Jürgen Feldmeier, LLM
proofread: Dr. Andreas Oser

In the recently published handbook for Germany, the publisher The Legal 500 recognises Prüfer & Partner as Leading Firm in the field of patent application and office actions. The Munich boutique Prüfer & Partner convinces with its brisk filing activity before the German Patent and Trade Mark Office (GPTO) and the European Patent Office (EPO) as well as its continuously growing business in China.

References:
‘The level of service is excellent. Their responses are always very quick and appropriate.’

‘We appreciate the high level of professionalism and expertise, the comprehensive advice and the prudent and timely handling of tasks.’

‘They are very good at getting to grips with the product to be registered and thereby also finding the appropriate formulations.’

‘Excellent and highly agile capacity provision; even short-notice requests are always handled and finalised in a highly professional manner. Strong problem-solving awareness even with complex non-standard requests.’

‘Jürgen Feldmeier: Very good and broad technical understanding; excellent direct ‘line’ to developers and inventors; holistic understanding of company-specific strategies and processes.’

The renowned research agency for in-house counsels, The Legal 500, has been dealing with law firm recommendations since 1987. As part of its research, the independent team of experienced editors conducts hundreds of interviews with lawyers and surveys more than 23,000 clients every year. The research feeds into a detailed analysis that provides a comprehensive and thorough assessment of law firms’ strengths and capabilities across a wide range of practice areas.

Despite successfully passing by the two German chambers, Bundestag and Bundesrat, the planned EU Unified Patent Court is again back on “on-hold” before the German Federal Constitutional Court (BVerfG).

It looked like it was finally done: on November 26, 2020, the German Bundestag had passed the ratification law on the Unified Patent Court for the second time – and now correctly with the required two-thirds majority. Only a few days later, the second chamber, the Bundesrat, had also waved the law through. This seemed to clear the way for the start of the Unified Patent Court. However, unsurprisingly, two appeals have now been filed with the Federal Constitutional Court.

As a reminder: as we reported on March 20, 2020, the BVerfG had declared the German law approving the UPC and the EU unitary patent null and void due to the lack of the required two-thirds majority. This problem had been solved by the German Bundestag and Bundesrat shortly before the turn of the year, and it seemed that entry into force would only be a formality in the form of the signature of the Federal President.

Now, at the beginning of the year, the BVerfG has again received two constitutional complaints directed against the law on the Agreement of February 19, 2013 on a Unified Patent Court, as a press spokesman of the BVerfG confirmed to LTO (Ref. 2 BvR 2216/20 and 2 BvR 2217/20). Next, it remains to be seen whether the BVerfG will accept the complaints or not. If it does not accept the appeals, the Unified Patent Court and the Unitary Patent can be launched in 2021 and is expected to begin operations in 2022. However, if any one of the appeals will be accepted by the court, we can again expect longer delays.

So even without the UK, it’s just a case of wait and see… we’ll stay tuned.

If you have any questions, please do not hesitate to contact us.

Jürgen Feldmeier, LL.M., Prüfer & Partner (E-Mail: office@pruefer.eu)