The transfer of a patent can take place at any time, but is particularly important in the event of a change of proprietor or a change of name. In the event of an opposition against the transfer, a final judgment by default may replace the declaration of intent of the transfer by the previous patentee.
Transfer of a patent
Pursuant to § 30 (3), German Patent Law, the German Patent Office notes in the patent register a change in the person of the applicant or patent proprietor if it is proved to him. Proof must be furnished by the production of documents relating to the requested change of law.
For this purpose, if the application is filed by the legal successors, a declaration signed by the registered patent holders that they agree to the registration of the legal successor must be attached to the application.
Opposition to the transfer of a patent: case-law
In a case recently decided before the Federal Patent Court (BPatG, 7 W (pat) 4/18), such a declaration of intent on the request for a patent transfer had been made as an agreement with the heading “patent assignment”. The patentee and defendant opposed the request for transfer. According to the patent assignment filed, the right had been transferred from the patent, but no consent had been given to the transfer in the register, the patentee argued.
The German Patent and Trade Mark Office (DPMA) upheld the opposition and rejected the request for transfer in May 2017. Since no signed transfer declaration had been submitted to the Patent Office by all parties or no agreement had been reached and the registered patent proprietor had maintained its opposition, the request for transfer was to be rejected, the DPMA reasoned the decision.
Also in 2017, the Landgericht Düsseldorf issued an enforceable default judgment (LG Düsseldorf, 22 November 2017, 4b O 141/17), according to which the defendant there, the patent proprietor in the present case, was ordered to declare its consent to the transfer of the patent to the German Patent and Trade Mark Office. The appeal against this judgment by default was dismissed as inadmissible by judgment of the Landgericht Düsseldorf of 11 September 2018, 4b O 141/17. The judgment by default thus became final.
The question in dispute before the Federal Patent Court(BPatG) was therefore:
With the final judgment by default of the Landgericht Düsseldorf, have the requirements for a transfer of the patent to the applicant been fulfilled?
Legally binding judgement replaces required declaration of intent
The Federal Patent Court answered this question with a clear “yes”. If, as in the present case, a debtor had been sentenced to make a declaration of intent, the declaration and authorisation were deemed to have been made as soon as the judgment had acquired legal force (§ 894 ZPO). This is the case here. The civil law action for authorisation with regard to the transfer was thus legally concluded. The BPatG ruled that the final judgment “replaces” the authorisation in the form required for it.
Substantive objection without success
The defendant and patentee also raised a substantive objection in its opposition. She had already transferred ownership of the patent to E. in 2012. To prove this claim, she filed a bilingual patent transfer agreement, which also contained a clause stating that the patent would remain the property of the seller until the purchase price had been paid in full.
The applicant argued that this alleged earlier patent transfer had not taken place because the respondent was still registered as the patent holder and had also paid the annual fee due for 2017. Quite apart from that, the BPatG clarified that this substantive objection was irrelevant for this case anyway.
The court clarified that the objection that the registered patent proprietor and opponent had ceased to be the proprietor of the patent concerned at the time of assignment to the applicant and that the assignment to the applicant had therefore become null and void should have been raised in civil litigation. After the submission of a formally legally binding civil court decision on the transfer, there was no longer any room for this in the official patent transfer procedure.
The BPatG therefore annulled the decision of the DPMA and ordered the requested transfer and amendment of the register in the German patent register.
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