With a decision dated November 28, 2018, the German Patent and Trademark Office (DPMA) sought to reject patent application DE 10 2018 001 184 entitled “Laser-assisted milling”. However, this decision was returned to the DPMA as undeliverable, as the testator had already died on September 3, 2018. The DPMA thereupon sent the rejection decision to the State of N, which was established as fiscal heir with a legally binding decision of the District Court of Mettmann.

The State of N, represented by District Government D, filed an appeal with the Federal Patent Court (BPatG) against the rejection decision of the DPMA. The Federal Patent Court allowed the appeal and referred the case back to the DPMA.

As a reason, the Federal Patent Court explained that the coming into effect of a decision of the patent office would require a notification by way of pronouncement or service. In the present case no effective notification by way of pronouncement or service had been made, since service of the decision at issue here had failed on the testator. The Federal Patent Court now clarified that instead of the immediate service of the decision to the heir, the Examining Division had to return to an earlier stage of the examination for obvious defects and repeat the objection of defects according to Sec. 42 (3) sentence 2 PatG (Patent Law). This would always be the case if the person succeeding in title had not previously been aware of the application or its defects. Such indications would be present in case of doubt if the transfer of rights had occurred by virtue of a sovereign act or by way of universal succession under inheritance law.

In its guidelines, the Federal Patent Court pointed out that the Examining Division may return to an earlier stage of the examination procedure at any time as long as a decision to reject a patent application has not become effective due to lack of pronouncement or successful service.

However, the Examining Division would be obliged to return to an earlier stage of the examination procedure if a legal succession had taken place and there were indications that the person succeeding in title had not yet become aware of the application or its defects. In case of doubt, such indications are present if the transfer of rights has taken place by virtue of a sovereign act or by way of universal succession under inheritance law.

The positive result for the heirs is that they have it actively in their hands to bring the application to a valid property right.

German Federal Patent Court (BPatG)
Reference No.: 11 W (pat) 39/19

December 7,2020
Mehmet Akay
Diplom-Jurist Univ.