Division of the patent application in German appeal instance

While a patent application is pending in the appeal instance, a declaration of division of the application is to be made exclusively to the BPatG, not to the DPMA. There is also no absolutely definable time limit for the division of the application, the BPatG ruled in two lead decisions.

The facts

In November 2013, the German Patent and Trademark Office (DPMA) rejected the patent application filed in October 2003 entitled “Procedure and System for Distance Calculation”. The appeal filed by the applicant was rejected by the Senate in August 2017, officially served on 11 October 2017. On 10 November 2017, the applicant declared the division of the patent application at the DPMA.

In its interim decision of 30 November 2017, the Senate pointed out that it considered the declaration of division of 10 November 2017 invalid under § 39 of the Federal Patent Law (PatG), since it had not been submitted to the BPatG competent at the time in question.

The applicant contradicted this decision. She argued that in cases where the BPatG had already rejected the applicant’s appeal in its entirety, the DPMA should at least also be responsible for receiving the declaration of division. The proceedings before the BPatG were concluded by the final rejection of the appeal and the BPatG was thus deprived of its decision on the merits.

The court rejected this. According to the overwhelming opinion in case law and literature, the declaration of division of the application under § 39 PatG was to be submitted as a procedural declaration to the office at which the application was pending at that time. If the application is pending before the BPatG in the appeal instance, the division must therefore be declared to the BPatG.

Lead decision on Division of patent application

During the pendency of the patent application in the appeal instance, the declaration of division of the application shall be submitted exclusively to the Federal Patent Court. This also applies to a division which is declared within the time limit for filing the appeal after a decision on the appeal has been made. In this case, the Federal Patent Court remains competent for the decision on the validity of the declaration of division and – in the case of a valid declaration of division – for the factual decision on the divisional application resulting therefrom.

Time limits in the Patent Act

This patent dispute also concerned the additional aspect of the time limits in the Patent Act, which also led to a lead decision of the German Highest Patent Court. On 12 January 2018, the applicant applied for restitutio in integrum with the aim of acknowledging the validity of the declaration of division. She justified this by stating that the time limit for this was observed, since the period always started with the filing date and an exact time for the end of the pendency, i.e. the end of the time limit, could be determined at any time during the filing procedure. As examples, she cited, inter alia, the 7-year period under Sec. 44 Patent Law.

The Senate rejected this request and explained that the declaration of division did not contain a time limit within the meaning of § 123 Patent Law.

Definition of time limit in German patent law

A time limit in the legal sense is a period the beginning and end of which are determined or can be precisely determined and within which procedural acts or services must be performed. However, the Patent Act does not contain any independent general provisions on time limits, so the provisions of § 187 and 188 of the German Civil Code (BGB) apply to the determination of the beginning and end of time limits pursuant to § 99 Patent Law.

However, such a time limit is not provided for in § 39, Patent Law for the division of the application. Rather, according to this provision, the application may be divided “at any time”. The only substantive condition is the legal existence of the application to be divided, i.e. the legal pendency of the application.

It is true that the beginning of the pendency of the application is clearly determined by the date of its filing. However, it is not possible to determine a concrete date for the end of the pendency of the application, in particular not according to the provision of § 188 BGB applicable to the determination of the end of a period. On the contrary, the pendency of the application may end at different points in time, for example by the final settlement of the application through the non-appealability of the decision to grant the patent or through the rejection of the application.

According to § 123, Patent Law, examples of the time limits to be observed vis-à-vis the Patent Office or the Patent Court are the examination request period and the examination request payment period, the time limits for payment of the application fee and the renewal fees as well as the time limit for filing the appeal and the payment of the appeal fee in the grant proceedings.

This is complied with in such a way that, according to the law, there is always the possibility of restitutio in integrum in the same time limits if the loss of the application and thus the loss of the possibility of division of the application occurs – indirectly – as a result of the failure to comply with time limits in the legal sense. In the present case, this is the time limit for filing the appeal ( see waiver of appeal – order to grant immediately final ). However, the applicant had not applied for restitutio in integrum within the time limit for lodging an appeal.

Therefore, the applicant’s application for restitutio in integrum was rejected.

Lead decision on time limits in German patent law

The regulation for the division of the patent application does not contain a time limit – not even an inherent one – within the meaning of Sec. 123 Patent Law. The necessary substantive prerequisite for the division of a patent application is its legal existence, i.e. the fact that it is still pending at the time of filing.

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