German Patent Law

The Patent Act (PatG)

German patent law is governed by the Patent Act (Patentgesetz, PatG), first enacted in 1877 and substantially amended periodically. The PatG operates in parallel with the European Patent Convention (EPC), the Agreement on a Unified Patent Court (UPCA), and the Patent Cooperation Treaty (PCT). German patents are granted by the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt, DPMA), while European patents designating Germany are granted by the European Patent Office (EPO) and have the same effect as German patents.

Patentability Requirements

A patentable invention must satisfy the requirements of Section 1 PatG: novelty (Neuheit), inventive step (erfinderische Tatigkeit), and industrial applicability (gewerbliche Anwendbarkeit). The invention must be a technical teaching (technische Lehre) — a solution to a technical problem using technical means.

Novelty (Section 3 PatG): the invention must not form part of the state of the art. The state of the art includes everything made available to the public by written or oral description, use, or any other means before the priority date. The standard is absolute novelty; any public disclosure anywhere in the world destroys novelty. A six-month grace period (Neuheitsschonfrist) applies for certain disclosures by the inventor or their predecessor in title (introduced in 2018, Section 3(5) PatG).

Inventive step (Section 4 PatG): the invention must not be obvious to a person skilled in the art having regard to the state of the art. German courts apply the problem-solution approach used by the EPO, combined with the traditional German approach of evaluating whether the invention moves beyond routine design choices. The Fachmann (person skilled in the art) is a hypothetical practitioner with average knowledge and ability in the relevant technical field.

Industrial applicability (Section 5 PatG): the invention must be capable of being made or used in any kind of industry, including agriculture. Excluded subject matter under Section 2 PatG includes: discoveries, scientific theories, mathematical methods, aesthetic creations, schemes and methods for mental acts or business, computer programs “as such,” and presentations of information. However, computer-implemented inventions are patentable if they provide a technical contribution to the state of the art.

Employee Inventions

The Employee Inventions Act (Gesetz uber Arbeitnehmererfindungen, ArbnErfG) governs inventions made by employees. Germany has a detailed, codified system that balances the interests of employers and employee inventors. An employee invention (Arbeitnehmererfindung) is an invention made by an employee during their employment, either as a service invention (Diensterfindung) or a free invention (freie Erfindung).

Service inventions: inventions made during the employment relationship that are based on the employee’s work in the enterprise or on the employer’s experience. The employee must report the invention to the employer in writing, and the employer may claim the invention within four months by declaration. If the employer claims the invention, all rights pass to the employer, and the employee is entitled to reasonable compensation (angemessene Vergutung). The compensation is calculated according to the Guidelines for the Compensation of Employee Inventions, considering the invention’s economic value, the employee’s position, and the employer’s contribution.

The 2009 reform of the ArbnErfG simplified procedures and permitted employers to claim all service inventions through general policy rather than individual declarations. The reform also allowed employers and employees to agree on compensation lump sums instead of individual calculation. The compensation system remains administratively complex; disputes over compensation are heard by the Arbitration Board for Employee Inventions (Schiedsstelle fur Arbeitnehmererfindungen) and, on appeal, by the Federal Labour Court or the Higher Regional Court (Munich).

Utility Models (Gebrauchsmuster)

Utility models (Gebrauchsmuster) are a form of registered intellectual property right governed by the Utility Model Act (Gebrauchsmustergesetz, GebrMG). The utility model provides protection for technical inventions for a maximum term of 10 years, using a registration system with lower inventiveness requirements than patents. The utility model is a “small patent” (kleines Patent), designed for incremental innovations.

Requirements for utility model protection: (1) novelty (relative novelty — disclosure within Germany is relevant; written disclosures outside Germany within six months before the priority date are excluded); (2) inventive step (lower standard than patents — the invention must involve a “step” rather than a “step” that is not obvious); (3) industrial applicability. Excluded subject matter includes processes (utility models protect only products, not methods), computer programs as such, and biological material.

Registration procedure: the DPMA examines only formal requirements and does not examine novelty or inventive step. The utility model is registered without substantive examination; the validity is tested only in cancellation proceedings. This makes utility models attractive for quick, low-cost protection, particularly for products with short market lifecycles. Utility models are commonly used as associated rights to patents: an applicant may file a utility model registration based on a pending patent application, obtaining early registration while the patent application is examined.

Infringement and Enforcement

Patent infringement is governed by Sections 139-142 PatG. The patentee has the right to: (1) cease and desist (Unterlassung); (2) damages (Schadensersatz); (3) information (Auskunft) about the origin and distribution of infringing products; (4) recall (Ruckruf) and destruction (Vernichtung) of infringing products. The limitations period for infringement claims is three years from knowledge of the infringement and the identity of the infringer, but no more than 30 years from the act.

Damages are calculated by the patentee’s choice among three methods: (1) the patentee’s actual loss; (2) the infringer’s profits (Herausgabe des Verletzergewinns); or (3) a reasonable royalty (Lizenzanalogie). The infringer’s profits method is the most commonly used; the infringer must account for profits, deducting only directly variable costs, not overhead. The BGH has clarified the calculation in numerous decisions, most importantly the Gemeinkostenanteil decision on the allocation of overhead costs.

Provisional measures are available, including preliminary injunctions (einstweilige Verfugungen), subject to the requirement of urgency and a thorough examination of validity and infringement. German courts are known for granting preliminary injunctions in clear cases, particularly in the pharmaceutical and mechanical engineering sectors.

Nullity Proceedings

The validity of a German patent may be challenged in nullity proceedings (Nichtigkeitsverfahren) before the Federal Patent Court (Bundespatentgericht, BPatG), a specialised federal court located in Munich. Nullity proceedings are separate from infringement proceedings; infringement courts may not determine validity. This bifurcation system means that infringement and validity are decided by different courts, potentially leading to inconsistent results.

Nullity proceedings may be initiated by any person (Section 81 PatG). Grounds for nullity include: (1) the patented subject matter is not patentable; (2) the patent does not disclose the invention sufficiently clearly and completely; (3) the subject matter extends beyond the content of the application; (4) the patentee was not entitled to the patent. The BPatG may also revoke a patent in limitation proceedings (Beschrankungsverfahren) initiated by the patentee.

Appeal from BPatG decisions lies to the Federal Court of Justice (Bundesgerichtshof, BGH). The BGH reviews the BPatG’s decisions on questions of law and fact. The BGH’s patent senate is the final instance for both infringement (appeal from the Higher Regional Courts) and nullity (appeal from the BPatG), giving the BGH a unifying role in German patent law.