INFORMATION FROM THE CONTRACTING / EXTENSION STATES
DE Germany
Extension Law
The Law on the extension of industrial property rights of 23 April 19921 (Extension Law), which came into force on 1 May 1992, has brought about full unity of industrial property legislation in the united Germany2.
The new law provides for the reciprocal extension of industrial property rights established before 3 October 1990 in either the Federal Republic of Germany or the former GDR and still in force on 1 May 1992. The provisions apply equally to property rights and applications therefor. Applications filed and industrial property rights registered or granted for the Federal Republic of Germany before 3 October 1990 on the basis of international conventions are expressly included. The Extension Law therefore also affects around 300 000 European patent applications and granted patents hitherto effective only for the former Federal Republic of Germany.
The following points are particularly important in connection with the extension of technical property rights (DE: patents, utility models; DD: patents of exclusion and economic patents):
Extension by operation of law
Extension is effected automatically by operation of law and need not be requested by proprietors of property rights. It applies to all relevant property rights and applications therefor irrespective of whether the proprietor/applicant is of German or foreign nationality. Extension also occurs if the subject-matter of the property right is already protected for the same proprietor by a corresponding right in the territory to which the right is to be extended. This may lead temporarily to double protection within Germany as a whole.
Effect of the extension
Property rights established in the former Federal Republic have on extension the same effect within the territory of the former GDR as within the former Federal Republic.
The law contains special provisions for the extension of rights established in the former GDR, which take account of the fact that in future, with the exception of provisions on protectability and the term of protection, only Federal Law will apply to these "pre-existing rights" (§§ 5-25 Extension Law). An important aspect is that § 12 Extension Law provides for the possibility of later examination for unexamined patents of GDR origin, to be carried out by the examining section of the German Patent Office at the request of the patent proprietor and any third party.
Extension does not affect the priority dates of property rights (§§ 1(1), 4(1) Extension Law), which thus apply uniformly throughout German territory. However, this does not necessarily mean that proprietors of such rights can take action for infringements in the past. Under § 28 Extension Law, the effect of an extended patent or utility model does not apply to persons who started using the invention legally before 1 July 1990 in the territory not hitherto covered. Continued use may in individual cases be ruled out or restricted if it significantly impairs the rights of the patent proprietor or licensee. If use of the invention in the previously uncovered territory involved merely the import of manufactured products, there is generally no right to continued use (§ 28(2) Extension Law).
Where the effect of an extended patent is restricted by rights of prior use, these rights apply throughout the territory of the Federal Republic (§ 27 Extension Law). The Law does not extend rights of use arising from licensing agreements; it is up to the parties involved to adapt their agreements to the new situation.
Collisions
As a result of extension, corresponding property rights owned by different proprietors and hitherto valid for separate territories may now coincide. In such cases the law provides that property rights which give corresponding cover or overlap may continue to exist alongside each other (co-existence solution, § 26 Extension Law). The proprietors of each right can therefore take prohibitive action against third parties but not against each other (or each others' licensees). The Law permits exceptions to the co-existence solution only where the rights of the other proprietor are unfairly impaired.
Arbitration
Parties wishing to settle disputes on extension-related conflicts can appeal to an arbitration board to be set up at the German Patent Office (§§ 39-46 Extension Law). This board will mediate to bring about an amicable agreement between the opposing parties both quickly and cheaply.
1 BGBl 1992 I, 938
2 Cf. OJ EPO 1990, 498