Act to Revise the Rules on Costs in the Field of Intellectual Property, Germany

• Article 7 Amendment of the Patent Law
• Article 8 Amendment of the Utility Model Law
• Article 9 Amendment of the Trade Mark Law
• Article 14 Amendment of the Semiconductor Protection Law
• Article 15 Amendment of the Law Against Unfair Competition
• Article 16 Amendment of the Copyright Law
• Article 17 Amendment of the Copyright Administration Law
• Article 18 Amendment of the Designs Law
• Article 19 Amendment of the Type Face Law
• Article 20 Amendment of the Plant Variety Protection Law
• Article 21 Further Amendments of the Patent Costs Law, the Patent Law, the Utility Model Law, the Trade Mark Law, the Semiconductor Protection Law and the Designs Law
• Article 30 Entry into Force

Law
to Revise the Rules onCosts
in the Field of Intellectua.l Property

of13 December 2001

. The Bundestag [Federal Parliament] has passed the following Law:

Articles 1 to 6 ...

Article 7
Amendment of the Patent Law
(420-1)

The Patent Law in the version published on 16 December 1980 (Federal. Law. Gazette ·1981 I p. 1), last amended by Article 5 paragraph 206f the Law of 26 November 2001 (Federal Law Gazette I p. 3138), shall be amended as follows:

1. The wording "Part XII: Transitional Provisions Section 147" shall be added to the Table of Contents.

2.

3. Section 16a shall be amended as follows: a) In subsection (1),second sentence, the words "in accordance with the schedul.e of fees" shall be deleted. b) In subsection (2), ·the word:;; "(Sections 17 (2) to (6), 18 and 19)" shall be replaced by the words "(Section 17(2)".

. 4.· Section 17 shall be amended as follows: a) In subseGtion (1), the words "as prescribedin the schedule of fees" shalL be 'deleted. b) Subsections (3) to(6) shall be repealed.

5. Section 18 shall be repealed.
6.. Section 19 shall berepealed.

1. Section 20 (1), No.3, shall be worded as follows:
2. "3. the annual fee or the differential amount are not paid in due time (Section 7 (1), Section 13 (3) or Section 14 (2) and (5) of the Patent Costs Law, Section 23 {7), , fourth sentence, of this Law)."
1. Section 23 shall be amended as follows:

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-,

2

a) _Subsection-(1) shall be worded as follows:

"(1) If the applicant for a pat~rit or the person recorded as patentee in the Register (Section 30 (1)) declares to the Patent Office in writing that he is prepared to alfow anyone to use the invention in fE?turn for reasonable compensation, the annual fees falling due after receipt of the declaration shall be reduced to one half. The effect of a declaration made in respect of a main patent shall extend to all itspatents of addition. The declaration shall be recorded in the Register and published in the Patent Gazette."

b) In subsection (2), the words "in the Register of Patents" shall be replaced by the words "in the Register".

c)' . Subsection (3), second sentence,-shall be worded as follows:

"Notification shall bE? deemed to have been effected if it is has been dispatched by registered mail to the person recorded iri the Register as ~atentee or to his registered representative or to the person-authorized by him to receive service of docL1ments (Section 25)."

d) _Subsection (4) shall be,worded as follows:

. .

"(4) The compensation shall be assessed by the Patent Division at the written request of a party. Sections 46, 47 and 62, shall apply mutatis mutandis to the

. proceedings. The· request may be directed aga\nst more than one party. In assessing the compensation, the Patent Office may order that the costs of assessment proceedings be reimbursed in whole Or: in part by the opponent ofthe .

. request."

e) Subsection (5) shaU be amended as follows:.

. .. .

aa) The second sentence shall be repealed.

-bb) The words "the first to fourth sentences of' shall be deleted from the third sentence.

f) Subsection (7), fourth sentence, shall be worded as follows:

"If the differential amount is not paid within the period provided for in the third sentence, it may be paid before expiry of a further period oUour months along with a late surcharge."

9. Section 25 shall be worded as follows:

(

"Section 25

(1)

A person who has neither domicile, seat nor establishment in the Federal Republic -of Germany may take part in proceedings under this Law before the Patent Office or the Patent Court ahd assert rights deriving from a patent .only if he has appointed as his representative a patent attorney or an attorney-af-Iaw in the Federal Republic of Germanywho is authorized to represent him in Patent Office and Patent Court proceedings and in civil litigation in ~espect of the patent as well as to file requests for the institution of criminal proceedings.

(2)

Citizens of a Member State of the ~uropean Union or of another Contracting Party to the Agreement on the European Economic Area can be appointed as a representative within the meaning of sUbsection (1) for the purpose of provision ofa service within the meaning of the Treaty establishing the European Community if theV are entitled to practice tbeir professional activity under one of the professional titles referred to in the Annex to Section 1 of the Law on Professional Practice by European_ Attorneys-at-Law in Germany· of ·9 March 2000 (Federal Law Gazette I p. 182) or to . Section 1 of the Law on the Examination of Aptitude for Admission·to Practice as a Patent Attorney of 6 July 1990 (Federal Law Gazette I p. 1349, 1351) in the respective version in force. In this case, proceedings may, however~ only be pursued if an attorney

at-laW or patent attorney has been appointed in the Federal Republic of Germany as the person authorized to receive service of documents...

(3) The place where the 'representative appointed pursuant to subsection (1) has his business premises shall be deemed, within the meaning of Section 23 of the Code of Civil Procedure, to be the place where the assets are located; ifthere are no business premises, then the place where the representative has his domicile in the Federal

. Republic of Germany shall be relevant and, in the absence ther~of, the place where the Patent Office has its seat.

(4) The legal termination of the appointment of a representative under subsection (1) shall not become effective until the Patent Office or the Patent Court has been notified of both the termination of this appointment and the appointment of another representative."

10. In Section 27 (5), second sentence, the· words "the President of the Patent Office" shalf be replaced by the words "the German Patent and Trade Mark Office".

. 11. Section 28 shall be amended as follows:

/

a) The subsection reference "(1)" shall be deleted.

b) . Subsection (2) shall be repealed.

. 12. Section 29 (3) shall be worded as follows:

. . .

"(3) The Federal Ministry for Justice may, in order to make the documentation of the Patent Office available to the public, prescribe. by statutory orqer that the Office will provide information on the state of the art, without guarantee that the information is complete, without requiring the approval of the Federal Council. In this regard, it shall be authorized to determine the manner in which the information shall be given, the volume of information and the technical fields involved. The Federal Ministry for Justice may delegate such authority to the Patent and Trade Mark Office without requiring the approval of the Federal Council."

13. Section 30 shall be amended as follows:

a)· Subsection (1), first sentence, shall be worded as follows:

"The Patent Office shall maintain a Register in which shall be recorded the titles of patent applications, the files of which may be inspected by any person, and of granted patents and supplementary certificates of protection (Section 16a) as well as the names and addresses of applicants or of patentees and their representatives and persons authorized to receive·service of documents appointed pursuant to Secti9n 25, . if any, whereby an entry relating to a representative or person authorized to receive service of documents -shall suffice."

. b)

c) Subsection (3) shall be worded as follows:

"(3) The Patent Office shall record in the Registe~ a change in the identity of the person, . in the name or in the address of the applicant or the patentee or his representative or person authorized by him to receive service of documents, if proof thereof is "furnished to it. Until such time as the change .has been recorded, the former applicant, patentee, representative or person authorized to receive service

. shall continue to have the rights and obligations as provided u·nder this Law."

d)

.e) Subsection (5) shall be repealed.

14.

1. Section 32 shall be amended as follows: a) The following sentence shall be added at the end of sUbsection (1):
2. "Publication may take electronic form."
   b)
   
1. Section (34) shall be amended as follows:

a) Subsection (6) shall be repealed.

b) In subsection (7)" second sentence, and subsection (9); second sentence, the words "the President of the Patent Office"shall be replaced by the words "the German Patent and Trade Mark Office" in each instance.

c) The previous subsections (7) to (9) shall become subsections (6) to (8).
. . .

1. In Section 39 (2), second sentence, the words "fee under Section 43" shall be replaced by the words "fee under the Patent Costs Law for a search pursuant to Section 43".
2. In Section 42 (1), second sentence, the words n(Section 34 (7))" shall be replaced by the words"(Section 34 (6))". 19.. Section 43 shall be amended as follows: a) In subsection (1), first sentence, the word "(search)" shall be inserted following the word "filed". b) Subsection (2), fourth sentence, shall be repealed.

c) Subsection (4), third sentence, shall be worded as follows:· "The fee paid under Section 43 for the search as prescribed in the Patent Costs Law shall be refunded."

20. Section 44 shall be amended as follows: a) Subsection (3) shall be "repealed. b) In subsection (4), second sentence, the words "Section 43 (2), second, third and

" fifth s~ntences" shall be replaced by the words "Section 43 (2), second to fourth sentences". c) The previous subsections (4) and (5) shall become subsections (3) and (4).

21. In Section 47 (2): the part of the sentence ", if any," shall be deleted." "22. Section 49a shall be amended as follows: a) " Subsection (3), first sentence, shall be worded as follows:

"Section 34 (6) shall apply."
b) Subsectio~ (4) shall be repealed.

2. Section 57 shall be repealed.
3. In Section 58 (3), the words "(Section 17)" shall be replaced by the words "(Section 7 (1) of the Patent Costs Law)".

" 26. The following" sentence shall be added to the end of Section 62 (1):

"The Patent Division may order that the opposition fee as prescribed in the Patent Costs Law be refunded in whole or in part if and to the extent that this is equitable". "

27. Section 63 shall be amended as follows:
a)
b) Subsection (4) shall "be amended as follows:

aa) In the first sentence, the words "The Federal Minister for "Justice" shall be replaced by the words "The Federal Ministry for Justice". "

bb) In the second sentence, the word "He" shall "be replaced by the word "It" and the words "the President of the Patent Office" shall be replaced by the words "the Patent and Trade Mark Officeⁿ

•

1. Section 64 (2), second sentence; shall be repealed.
2. In Section 67 (1) the words "in cases under Section 73 (3) and" shall be replaced by the words "in cases in which the application is rejected or in which a decision is made as to maintenance, revocation or limitation of a patent, and".
3. Section 73 shall be amended as follows:
   a) Subsection (3) shall be repealed.
   b) The previous subsections (4) and (5) shall become subsections (3) and (4).
   

. c) In the new sl.1bsection (3), seoond sentence, the wOrds "under the Patent Costs . Law" shall ·be inserted after the word "appeal fee^j ,.

, .

d) In the new subsectiQn (4), the words "subsection (4)" shall be replaced by the words , "subsection (3)".

31. In Section 80 (3) the words "(Section 73 (3))" shall be replaced by the words "under the Patent Costs Law" .

. 32. Section 81 shall be amended as follows:

a)

. b) Subsection (6) shall be repealed.

c) . The previous SUbsection (7) shall become subsection (6).

1. Section 85 (2), first sentence,. shall be repealed.
2. Section 98 shall be repealed.
3. Section 130 shall be amended as follows:

a) The following second sentence shall be inserted i'nto sLibsection (1):

"On request by the applicant or the patentee, legal aid may also be granted for the . annual fees pursuant to-Section 17 (1}."

. b) In subsection(4)~ the words "or the patentee" shall be inserted after the words "applicant for the patent".

c) Subsection (5) sh~II be worded as follows:

"(5) On request, as many annual fees shall be included in the legal aid as are necessary to avoid a limitation opposing a grant of legal aid under Section 115 (3) of the Code of Civil Procedure. The installments paid shall be set off against the annual fees only when the costs of the patent granting procedure, including costs possibiy arising for an appointed representative, are covered by the payment of the installments. To the .extent that the annual fees shall be considered paid by the payment of the installments, SectionS (2) of the Patent Costs Law shall apply

mutatis mutandis."

1. In Section 143 (5), the words "up to the amount of a full fee" shall be deleted.
2. Section 147 shall be amended as follows:
   a) The previous wording shall become subsedion (1).
   b) The following SUbsections (2) and (3) shall be added after subsection (1):
   

"(2) For deferment of patent annLlal fees or maintenance fees granted up to 31 December 2001 pursuant to thf? version of Section 18 applicable until this date, . the provisions heretofore in force shail remain applicable,

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(3) In derogation of Section 61 (1), first sentence, the Chamber-of Appeal of the Patent Court shall decide on an opposition under section 59, if .

1. the time limit for lodging an opposition commences after 1 January 2002 and the opposition has been lodged before 1 January 2005, or
2. t~e opposition has been lodged before 1 January 2002, aparty requests this by 31 December 2004 and the Patent Division has not yet served a summons to an ora:l hearing or the decision ,on the opposition within aperiod of two months after receipt of the request for a decision by the Patent Court.

Sections 59 to 62, with the exception of Section 61 (1), first sentence, shall apply mutatis mutandis for opposition proceedings befoTe the Chamber of Appeal of the Patent Court. The Chamber of Appeal shall decide in the composition of ,one technical member as presiding judge; two further technical members and one legal member. An appeal on a poin.t of law from _deCisions of the Chambers of Appeal shall lie to the Federal Court, of Justice pursuant to Section 100."

Article 8'
Amendment of the Utility Model Law

(421-1 )

The Utility Model Law in the version' published or} 28 August 1986 (Federal Law Gazette I p. 1455), last amended by Article 5parag-raph 21 of the Law of 26 November 2001 , (Federal Law Gazette I p. 3138), shall be amended asfoliows:

'i. Section 4 shall be amended as follows:

a) In subsection (4), second sentence, the words "the President of the Patent Office" shall be replaced by the words "the German Patent arid Trade Mark Office".

, '

. b) Subsection (5) shall be repealed. c) The previous subsections (6) to (8) shall become subsections (5) to (7). d) In the new subsection (7), second sentence, tlie words "the President of the Patent Office" shall be replac.ed by the words "the German Patent and Trade Mark Office".

1. Section 7 shall be amended as follows: a) In sU,bsection (1), the word "(search)" shall be inserted at the end of the sentence
2. after the words "or the utility model".
   b) Subsection (2), fourth sentence, shall be repealed.
   
1. Section 8 shall be amended as follows: a) b) Subsection (2) shall be worded as follows:

"(2) The registration shall contain the name and address of the applicant as well as of any repre'sentative and any person authorized by him fo rece.ive service of 'documents appointed in' accordan.ce with Section 28, fogether with the' date of filing of the application."

c) The following second sentence shall be added at the end of subsection (3):

"Publication may take electronic form."

d) Subsection (4) shall be worded as follows:

"(4) The Patent Office s~all record in the Register a change in the identity of the proprietor of the utility model or of his representative or person authorized by him to receive service of documents, if proof thereof is furnished to it. Until such ti.me 'as the change has been recorded, t~e former proprietor and his former rep'resentative or person authorized to receive service shall continue to have' the. rights' and obligations as provided under this Law."

e)

4.

5.' In Section 10 (2), second sentence, the words "the President of the Patent Office" shall be replaced by the words "the German Patent and Trade 'Mark Office" . . 6. Section 16 shall be amended as follows: .a) The third sentence shall be repealed. b) In the previous fourth sentence, the words "Section 81 (7)" shall be replaced by the w()rds "Secti.on 81 (6)". 7.' Section 18 shall be amended as follows: a) . Subsection·(2) shall be repealed. b) The previous subsections (3) to (5) shall become SUbseCtions (2) to (4). c) In the new subsection (3), the following sentence shall be inserted after the second sentence: "The second sentence shaH apply mutatis mutandis to appeals from decisions on requests for the grant of legal aid."·

8. Section 23 shall be worded as follows:
"Section 23

(1)

The term of protection of a registered utility model shall.commence on the day of application and shall end ten years after expiry of the month in which the day of application falls.

(2)

Maintenance. of protection shall be effected by means . of payment of a maintenance fee for the fourth to sixth, seventh and eighth as well as for the ninth and

""I

tenth years, calculated from the day of application. The maintenance shall be recorded

in the Register.
(3) The utility model shall lapse if
1. the pets'on registered as proprietor waives the utility model by declaration to the Patent Office, or .		means	of written
2.. the maintenance fee is' not paid in good time Section 14 (2) and (5) of the Patent Costs Law)."	(Section 7 (1),	Section	13 (3)	or

9. InSection 27 (5), the words "up to the amount of a full fee" shall be deleted .

. 10. Section 28 shall be worded as follows~

"Section 28

.(1) A person who has neither domicile, seat nor establishment in the Federal Republic of Germany may·take part in proceedings 'under this Law before the Patent Office or the Patent Court arid assert rights deriving from a utility model only if he has appointed as his representative 'apatent attorney or an attorney-at-law in the Federal . Republic of Germal)y who is authorized to· represent him in Patent Office and Patent. Court proceedings and in civil litigation in respect of the util.ity model as well as to file requests for the institution of criminal proceedings.

(2) Citizens of a Member State of the European Union or of another Contracting Party. to the Agreement on the European Economic Area can be appointed as a representative within the meaning of subsection (1 ) for the purpose of provision of a

. .

service within the meaning of the Treaty establishirig the European Community if they are entitled to practice their professional activity under one of the professional titles referred to .in tlie Annex to Sedion 1 of the Law on Professional.Practice by European . Attorneys-at..,Law in' Germany of 9 March 2000. (Federal Law Gazette I p. 182) or to Section 1 of the Law on the Examination of Aptitude for Admission to Practice as a Patent Attorney of 6 July 1990 (Federal Law .Gazette I p. 134~, 1351) in the respective . version in force. In this case, proceedings may, however, only be pursued if an attorneyat-law or patent attorney in the Federal Republic of Germanyhas been appointedas the person authorized to receive service of documents.

(3)

The place where the representative appointed pursuant to subsection (1) has his business premises shall be deemed, within the meaning of Section 23 of the Code of Civil Procedure, to be the place where the as~ets are located; if there are no business premises', then the place where the representative has his domicile in the Federal Republic of Germany shall be relevant and, in the absence thereof, the place where the Patent Office has its seat.

(4)

The legal termination of the appointment of a representative under subsection (1) shall not become effective until the Patent Office or the Patent Court has been notified of both the termination of this appointment and the appointment of another representative."

11. Section 29 shall be amended as follows: .

a) The SUbsection reference "(1)" shall be deleted.

b) Subsection (2) shall be repealed.

Article 9
Amendment of the Trade Mark Law

(423-5-2)

The Trade Mark Law of 25 October 1994 (Federal Law Gazette .1 p. 3082, 1995 I p. 156; 1996 I p. 682), last amended by Article 5 paragraph 22 of th'e Law of 26 November 2001 (Federal Law Gazette I p. 3138), shall be amended as follows:

1. The Table of Contents shalll;Je amended as follows;, a) In Part:3 Chapter 4, the words "Sectiori 64aRules on Costs in Proceedings before the Patent Offic~" shall beinserted'following the words "Section 64 Objection"~

b) In Part 5 Chapter 3, the following words shall be inserted following the words "Section 125h Insolvency Proceedings":, "Section 125i Issue of an Order for Enforcement".

c) In Part 8 Chapfer 1, the following words shall be inserted following the words "Section 143 Punishable Infringement of Signs": "S'ection 143a Punishable Infringement of a Community TradeMark".

1. Section 27 (4) shall be worded as folfows:
2. "(4) Where the transfer of rights concerns only· some of the goods or services for which the trade, mark is registered, the provision$ concerning the division of the registration shall apply mutatis mutandis with the exception of SeCtion 46 (2) and (3), first and second sentences."
1. The following sentence shall be added aUhe end of Section 28 (2): '

"If the successor in title takes over 'proceedings under the first or second sentences, the consent of the other parties to the proceedings is not required."

4. Section 32 (4) shall be repealed . . 5. Section 36 shall be amended as follows: a) Subsection (1), No.3, shall be worded as follows: "3. the appropriate amount has been paid in fees, and". b) In subsection (2), first sentence, the words "not to have been filed" shall be replaced by the words "to have been withdrawn". c) Subsection (3) shall be worded as follows:

"(3) If, within a time period set by the Patent Office, there is a failure to pay any arrears or the appropriate amount of arrears of the required class fees, or if the applicant fails toindica.te which goods or services, are to be covered by the amount paid in fees, the leading class shall be taken into account first, followed by the other classes in the sequence of the subdivision of classe$. OtherWise, the application shall be' deemed to have been withdrawn."

1. Section 38 shall be amended as follows: a) The subsection reference "(1)" shall be deleted. b) Subsection (2) shall be repealed, c) The previous subsection 1 shall become the first sentence.
1. Section 40 (2) shali be amended as follows: a) , The second sentence shall b~ repealed., b) In the previous third sentence, the words, "under the Patent Costs Law for division
2. proceedings" shall be inserted after the word "fee".
2. Section 42 (3).shaJI be repeaied.
3. Section 46 (3) shall be amended as follows: a) The second sentence shall be repealed. b) , In the previous third sentence, the words riunder the Patent Costs Law for division

proceedings" shall be inserted after the word "fee". 10.' Section 47 shall be amended as follows: a) Subsection '(1) shall be worded as follows:. "( 1) The period of protection of a registered trade mark shall commence on the day ef application (Section 33 (1)) and shall end ten years later on the last day of the

, .

month with the same name as that month in which the day of application falls." b) Subsection (3) shall be amended as follows: aa) In the first sentence, the words "as prescribed by the schedule of fees" shall be deleted. bb) The second to fourth sentences two shall be repealed. c) Subsection (4), second sentenc,e, shall be worded as follows: "If there is a failure to pay merely the required class fees, the period of protection shall, unless the first sentence applies, only be renewed for those classes which are covered by the payment of fees."

11. Section 54 shall be amended as follows: a) Subsection (2) shall be repealed. b) The previous subsection (3) shall become subsection {2}.

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1. In Section 61 (2), the words "fee, If any, to be paid" shall be replaced by the words '''fee under the Patent Costs Law, if any, to be paid".
1. Section 63 (2) shall be worded as follows:
2. "(2) The Patent Offi.ce may order that the fee under the Patent Costs Law for accelerated examination, for opposition proceedings or for cancellation proceedings be wholly or partly refunded, if and to the extent thatthis is equitable."
1. Section 64 shall be amended as follows: . a) After subsection (4), the following new subsection (5) shall be inserted: "(5) The Trade Mark Section or the Trade Mark Division may order that a fee
2. under the Patent Costs Law for the objection be wholly or partly refunded." . b) The previous subsection (5) shall become subsection (6).
1. The following Section 64a shall be inserted following Section 64: "Section 64a Rules on Costs .in Proceedings. before the Patent Office
2. In"proceedings before the Patent Office, the Patent Costs Law shall apply in respect of the costs. II
1. Section 66 shall be .amended as follows: a) Subsection (1) shall be amended as follows: . aa) In No. 12, the words "applications, oppositions or other requests" shall be replaced by the words "applications and oppositions". bb) No. 13 shall be repealed. The former No: 14 shall become No. 13.
2. b) In subsection (2), the words "President of the Patent Office" shall be replaced by the words "German Patent and Trade Mark Office" ..
2. Section 66 shall be amended as follows: a) In subsection (2), the words "in writing" shall be inserted after the words "Patent Office" . . b) Subsection (3), sixth sentence, shall be worded as follows: "The remaining periods of time under the first and second sentences shall be interrupted if the proceedings are suspended or if an extension of time has been granted to one of the parties on his request or as a result of peremptory provisions."

c) Subsection (5) shall be repealed .
. d) The previous subsection (6) shall become subsection (5).

"

e) hi the new subsection (5) the words "under the Patent Costs Law" shall be inserted after the word "appeal feel! in the third sentence.

1. In Section 71 (3) the words "(Section 66 (5))" shall be repla~ed by the words "under the Patent Costs Law".
2. Section 82 (1), third sentence, shall be worded as follows:

"In proceedings before the Patent Court, the Patent Costs Law shall apply mutatis mutandis with respect to the fees; the CoLirt Costs Law shall apply mutatis mutandis with respect to the expenses."

1. In Section 85 (5), fourth sentence, the words flup to the amount of a full fee" shall, be deleted.
2. In Section ~1 (1), second sentence, the words "(Section 6 (1), first sentence, of the Patent Costs Law)" shall be inserted after the words "opposition fee".
3. Section 96 shall be worded as follows:

"Section 96

Domestic Representative

(1) A person who has neither domicile, seat nor establishment in the Federal Republic of Germany may take part in proceedings -under this Law before the Patent

" Office or the Patent Gourt and assert rights deriving from a trade mark only if he has appointed as his representative a patent attorney or an attorney-at-iEM in the Federal Republic of Germany who is authorized to represent him in Patent Office and Patent Court proceedings and in ciyil litigation in respect of this trade mark as well as to file requests for the institution of criminal proceedings.

(2) Citizens of a Member State of the European Union or of another Contracting Party to the Agreement on the European Economic Area can be appointed as a representative within the mea~ing of subsection (1) for the purpose of provision of a service within the meaning of the Treaty establishing the European Community if they are entitled to practice their professional activity under -one of the professional" titles referred to in the Annex to Section 1 of the Law on Professional Practice by Europe"an Attorneys-at-Law in Germany of 9 March 2000 (Federal Law Gazette r p: 182) or to Section 1 of the Law on the Examination of Aptitude for Admission to Practice as a Patent Attorney of6 July 1990 (Federal Law Gazette I p. 1349, 1351) in the respective

" version in force. In this Gase, proceedings may, however, only be pursued if an attorneyat-law OJ patent attorney in the Federal Republic of Germany has been appointed as the person authorized to receive service of documents;

-(3) The place where the representative" appointed pur~uant to subsection (1) has his business premises shall be deemed, within "the meaning of Section 23 of the Code of Civil Procedure, to be the place where the assets are located. If there are no business premises, then the place where the representative has his domicile _ in the Federal Republic of Germany shall be relevant and, in the absence thereof, the place where ttie Patent Office has its seat.

,I

(4)The legal termination of the appointment of a representative under subsection (1)

shall not become effective until the Patent Office or the Patent Court has been notified of , both the termination of this appointment and the appointment of another representative."

23. Section 109 shalrbe worded as follows: "Section ,109 Fees If the application for international registration is filed prior to the registration of the

mark in the Register, the national fee for the international registration procedure shall become due on the date of registration."

24. Section 111 shall be worded as follows: "Section 111 Subsequent Territorial Extension A request for subsequent territorial extension of the international' registration of a' mark may be filed under Article 3ter (2) of the Madrid Agreement wit~ the Patent Office," 25, Section 121 shall be worded as foliows: "Section 121 Fees If the international registration is to be effected under the Madrid Agreement and according fothe Protocol Relating to the Madrid Agreement on the basis of a registered mark, and if the application for international registration was filed prior to tre registration,

of the mark, the national fee under the Patent Costs Law for international registration ' shall become due on the date of registration." '

, , '

1. Section 123 shall be amended as follows: a) Subsection (1), first sentence, shall be worded as follows: "The request for subsequent territorial extension of the protection resulting from the international registration of a mark Linder Article 3ter (2) of the Protocol Relating to the Madrid Agreement may be filed with the Patent Office.~' b) ,Subsection (2) shall be worded as follows: "(2) Subsequent territorial extension on the basis of a registered mark may be effected under the· Madrid Agreement as well as 'according to the Protocol Relating
2. to the Madrid Agreement. ...
   ,c) Subsection (3) shall be repealed.
   
1. Section 125 shall be amended as follows: a) Subsection (2) shall be repealed, b) The previous subsections (3) to (5) shall become subsections (2) to (4).

,

'.

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28. Section ~ 25d (1) shall be worded as follows:

"(1) If a request for conversion of a filed or registered Comm~nity trade mark Ilas been transmitted to the Patent Office under Article 109 (3) of the Community Trade Mark Regulation, the fee and the class fees as specified in the Patent Costs Law for the conversion procedure sha}i become due on receipt of the request for conversion by the Patent Office."

1. The following Section 125i shall be inserted following Se,ction 125h:' '''Section 125i Issue of an Order for Enforcement competence for issuing an order fat e~forcenient pursuantto Article 82(2), second
2. sentence, of the Community Trade Mark Regulation lies with the' Patent Office. The enforceable copy shallbe issued by the registrar of the Patent Court."
1. SeCtion 130 shall be amended as follows: a) Subsection (2) shall be repealed. b) The previous subsections (3) to (5) shall become subsections (2) to (4).
2. Section 132 shall be amended as follows:

a) In subsection (1), the words "within four months after publication in the Official Journal of the European Communities pursuant to Article 6 (2)·Of Regulation (EEC) No. 2081/92" shall be inserted after the words "with the Patent Office".

b) Subsection (2) shall be worded as follows:

"(2) Reinstatement in resp.ect of the time limit for filing an objection shall not be permissible. "

1. In Section 138 (2), the words "the President of.the Patent Office" shall be replaced by the words "the German Patent and Trade Mark Offie'e". .
2. In Section 140 (5), the words "up to the amount of a full fee" shall be deleted.
3. Section 143 shall be amended as follows: a) Subsection (1 a) sh.all be repealed. b) In s.ubsection (4), the words "referred to in subsections (1) and (1at shall be

replaced by the words "referred to in subsection (1 )".
c) Subsection (7)shall be repealed.· .

35. The following Section 143a shall be inserted following Section 143:

"Section 143

Punishable
Infringement of a Community Trade Mark

(1) Any person who infringesthe rights of the proprietor of a Community trade mark

as laid down .in Article 9 (1), second sentence, of Council Regulation CEq No.' 40/94 of , 20 December 1993 ~m the Community trade mark (OJ 1994 No. L 11 p. 1) by, in the , course of trade and in spite of a prohibition and without the ,consent of the trade mark , proprietor,

1. using a sign identical with the Community trade mark for goods or services which , are identical with those for which it is registered,
2. ,using a sign if,'. because of its identity with, or similarity to, the Community trade mark, and the identity or similarity of the 'goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public, inCluding the likeiihood of association ,of the sign with the trade mark; or '
3. using a sign identical with or similar to the Coinmunity trade mark for good~ or services which pre not similar to those for which the Community trade mark is registered', where the'this trade mark has a reputation in the Community and where the sign is used with intent, without due cause, to take unfair advantage of, or have detrimental' effect on, the distinctive character or the repute of st;lch Community , trade mark,

shall be punished by imprisonment of up to three years or by a fine.

(2) Section 14~ (2) to (6) shalf apply mutatis mutandis."

1. Ih Section 145 (3), the words "OEM 5,000" shall be replaced by the words "EUR 2,500'" and the words "OEM 20,000" shall be replaced by the words "EUR 1 0,000".
2. The following subsections (4) to (7) shall be, added to Section ~ 65:

"(4) In derogation of Section 64 (1), first sentence" and sUbsection (5), first sentence, an appeal can also be filed instead of an objection during the period from 1 January 2002 to 31 December 2004.

(5) In derogation of Section 66 (1), first and second sentences, and subsection (3), the following shall apply for the period from 1 January 2002 until 31 December 2004:

1. Parties to proceedings before the Pat~nt Office shall be entitled to file an appeal from the decisions of the Trade Mark Sections and Trade Mark Divisions.

, '

2. 'If one party has filed an objection and another party has filed an appeal from a decision of the Trade Mark Sections or Trade Mark Divisions in respect of which it is also possible to file an objection, the party who has filed the objection may also file an appeaL If the appeal of the party who has filed the objeCtion fails to file his appeal within a time-perio~ of one month after service of the appeal of the other party

~~~----------.

pursuant to Section 66 (4), second sentence,. his objection shall be deemed to have been withdrawn. No further appeal fee shall be payable for the appeal of the party who has filed the objection.

(6) Sections 64 and 66 . ih the version in force untii 1 January 2002 shall be. applicable to objections and appeals filed before 1 January 2002. For proceedings involving several' parties which become pending up to 31 December. 2004, the

. applicability of subsections (4) and (5) shall be determined according to the date the appeal is filed ..

(7) Section 96 fnthe version .in force until l' January 2002 shall be applicable to proceedings as referred to in Section 96 which became pending before 1 January 2002.'i

Articles 10 to 13 ...

Article 14

Amendment of the Semiconductor Protection Law

(426-1)

The Semiconductor Protection Law of 22 October 1987 (Federal Law Gazette I p. 2294),

last amended by Article 5 paragraph 23 of the Law of 26 Nbyember 2001 (Federal Law

Gaze"tte I p. 3138), shall be amended as follows:

1. The abbreviation " -HalblSchg" shall be inserted in the title following the words "Semiconductor Protection Law".
2. Section 3 shall be ame.nded as follows:

a) In subseetion (3), second sentence, the words "the President of the Patent Office" shall be 'replaced by the words "the German Patent and Trade Mark Office".

b) Subsection (5) shall be worded as follows:

"(5) If the defects mentioned in SUbsection (4) have not been remedied within the time limit mentioned in SUbsection (4), the application shall be deemed to have been withdrawn."

3.

4. Section 8(4) shall be amended as follows:

a) The third sentence shall be repealed.

b) In the fourth sentence, the words "Section 81 (7)" shall be replaced by the words "Section 81 (6)".

Article 15
Amendment of the Law Against Unfair Competition

, (43-1)

In Section 6 (2), second sentence, of the Law Against Unfair Competition in the revised versio~ published in the Federal Law Gazette Part III, No. 43-1 "last am~nded by Articie 5 paragraph 24 of the' Law of 26 November 2001 (Federal Law Gazette I p. 3138), the words "OEM 10,000" shall bereplaced by the words "EU,R 5,000".

Article 16
Amendment of the Copyright Law

(440-1 )

The Copyright Law of 9 September 1965 (Federal Law Gazette I p. 1273), last amended by Article 5 paragraph 25 of the Law of 26 November 2001 (Federal Law Gazette I p. 3138)" shall be amended as follows:

1. In Section 26 (1), second sentence, the words "DEM 1 00" shall be replaced by the words "EUR 500".

2., In Section 66 (2), second sentence, the words "Register of Authors" shall be replaced by the words "Register of Anonymous and Pseudonymous Works".

3. Section 138 shall be amended as follows: a) The heading shall be replaced by "Register of Anonymous and Pseudonymous Works". b)' In subsection (1),first se~tence, the words',"Register of Authors" shall be replaced by the words "Register of Anonymous and Pseudonymous Works". c) Subsection (4) shallbeworded as follows: "(4) Any person may inspect the Register. Extracts from the Register shall' be issued on request." d) Subsection (5) shall be amended 'as follows: aa) In No.1, the words "the Register of Authors"shall be replaced by the words "the

Register".
bb) No.2, second sentence; shall be repealed.

4. The Annex to Section 54d shall be amended as follows:·· . "Annex.

(to Section 54d (1)) Rates of Remuneration

I. Remuneration under Article 54 (1)

The remuneration due to all owners of rights shall be . 1.

for each audio recording appliance ............................................. .

EUR 1.28

2.

for each audio recording appliance for whose operation
. separate mediums (item 5) are not required .............................. .

EUR 2.56

3.

for each video recording appliance with or without audio

recording ..... : ..................................................................... ; .. : ...... .

EUR 9.21

I

4.

for each video recording appliance for whose operation
. separate mediums (item 6) are not required ............................... .

EUR 18.42

5.

in respect of audio recording mediums, for each hour of playing

time in normal utilization ...: .............................................. ; .......... .

EUR 0.0614

6.

in respect of video recording mediums ..for each. hour of playing

time in normal utilization ............................................ : ........ , ........ .

EUR 0.0870

II. Remuneration under Article 54a

1. Remuneration due to all owners of rights under Article 54a (1)
.shall be, for each reproduction appliance with a capacity of

a) up to 12 copies a minute .......................................... :...........

EUR 38.35 if polychrome photocopies can be made ............................. .

EUR 76.70 b) from 13 to 35 copies a minute ............................................ ..

EUR 51.13 ifpolychrome photocopies can be made .............................. .

EUR 102.26 c) from 36 to 70 copies a minute ....... ; ............ :..........................

EUR 76.70 if polychrome photocopies can ~e made ........ : ......... : .......... ~

ElJR 153.40 d) more than 70 copies a minute ......... :: .................................. .

EUR 306.78 if polychrome photocopies can be made ........... ; ................. .

EUR·613.56

2. -Remuneration due to all owners of rights under Article 54a (2)
shall be, fbr each DIN A4 page of photocopying

a) for photocopies made from books intended exclusively for
school use and approved by a Land authority as school
books

monochrome ........ ,................................................................ EUR 0.0256
polychrome ......................................................... :.................. EUR 0.0512

b) f6r all other photocopies mOhochrome ............................................................. :........... EUR 0.0103 polychrome ........................ \..... .................................. ........... EUR 0.0206

3. These ·rates of remuneration shall be applied mutatis mutandis to other repro9uction processes having a comparable effect."

Article 17,
Amendment of the Copyright Administration Law

(440-12)

In Section 21 of the Copyright Administration Law of 9 September 1965 (Federal Law Gazette I p.1294), last amended by Article ,5 paragraph 25a of the Law of 26 November 2001 (Federal Law Gazette, I p. 3138), the words "OEM 10,000" shall be replaced by the words "EUR 5,000".

Article 18
AmEmdm~nt of the Designs Law

(442-1)

The Designs Law in the revised version published in the Federal Law Gazette Part III, No. 442-,1, last amended by Article 5 paragraph 27 of the Law of 26 November 2001 (Federal Law Gazette I p. 3138), ,shall be amended as follows:

1. Section? shall be amended as follows: a) hi subsection (6), the second sentence shall be repealed: ' b) In subsection (1 0), third sentence, the words "in accordance with the schedule of

fees" shall be deleted. '

1. Section 8 (2) shall be amended as follows: a) In' th.e first sentence, the word "extension" shall be replaced by the word "maintenance" .
2. b) The following sentence shall be added after the first sentence:
   " "Publication may take electronic form.'"
   
1. Section 8b shall be amended as fcillows~ a) Subsection (2) shall be worded a,s follows: "(2) The terrY! of protectiQn shall lapse unless the owner of the deSign pays the extension fee within th~ period of deferment."
2. b) In subsection (3), third sentence, the words "third and fourth sentences" shall be replaced by the words "fourth and fifth sentences".
1. Section 8c shall be repealed.
2. Section 9 shall be worded as follows:,

"Section 9

(1)

The term of protection ofa registered design shall commence on the day of application and shall end twenty YE!ars after expiry of the month in which the day of application falls.

(2)

Mail.ltenance of protection shall be effected by means of payment of a maintenance fee for the sixth to tenth, eleventh to fifteenth as well as for the sixteenth to twentieth years, calculated from the day of application.

. ... .

(3) It in the case of a multiple application (Section 7 (9)), the maintenance fee is paid only in respect of some of the designs without specification, the designs shall be taken into account according to the sequence of application.' If variation,s of a basic design have been registered (Section 8a (1)), the basic designs shall be taken into account first."

6. Section 1 0 shall be arilendedas follows:

a) In subsectiqn (3), first sentence, the words "Section 12 (1)" shall be replaced by the words "Section 12".

b) The pre\fious subs,ections (4) and (5) shall be' replaced by the following

,

.
subsections (4) to (6):

"(4) It within a time' period $et by the Patent Office, there is a ~ailure to pay the appropriate amount of arrears of application fees, or If the applicant 'fails to ,indicate which designs are to be covered by the amount paid in fees, the Patent Office shall determine which designs shall be, taken into account. Otherwise, the application shall be deemed to have been withdrawn.

(5)

Where 'the defects referred to in subsection (3) are. not remedied within the time limit specified in subsection (3), first sentence, the applicati,on shall be deemed to have been withdrawn. '

(6)

Section 123 (1) to (5) and (7) as well as Sections 124 and 126 to 1'28 of the Patent Law shall apply mutatis mutandis."

7. Section 10a (1) shall be amended as follows:

a) . The third sentence shall be repealed.

b) In the previous fourth sentence, the words '173 (2), (4) and (5)'" shall be replaced by . the words ;'73,(2) to (4)".

8. Section 1 Db shall be amended as follows:

a) The following second sentence shall be inserted after the first sentence:

"On request by the registered owner, legal aid may also be granted for the maintenance fees pursuant to Section 9 (2)." ,

b) In the previous third sentence, the words "130 (2), (3) and (6)" shall be replaced by "130 (2), (3) and (5)".

. .

1. Section 10c (1), No.1, shall be amended as follows:
2. "1. on expirY of the term of protection or if the maintenance fee is nQt paid in good time . (Section 7 (1), Section 13 (3) or Section 14 (3) and (5) of the Patent Costs Law),".
1. Section 12 shall be worded as follows:

"Sectiori 12

The Federal Ministry for Justice shall regulate the establishment and the business procedure of the German Patent and Trade Mark Office as the designs regis.tration authority and shall, insofar as provision ther.efor has not been made by law, determine by statutory order; without requiring the approval of the Federal Council, the form and other requirements for applications for designs, the form and other requirements for the representation of the design, the admissible dimensions of the product used to represent the surface design or the, product itself, the content and' scope of any· description accpmpanying the representation, the classification of goods, the keeping and form 'of the Designs' Register, the particulars to be entered in the Designs' Register and ttie details of publication, including production by the Patent Office of the representation of the design in" the cases covered by Section 7 (4) to (6) and the treatment of products accompanying an application for its. representation following cancellation of the entry in the Designs Register (Section 10c). It may delegate these powers to the German Patent and Trade Mark Office by statutory order."

1. In . Section 12a (2), the words "the President of the Patent Office" shall be replaced by the words "the German Patent and Trade Mark Office".
2. Section 13 shall be worded as follows:

"Section 13

(1) The person who has filed the design for registration in the Designs Register in accordance with Section 7 shall be deemed to be its author until proved otherwise.

(2) Changes in the name orin the address of the applicant, owner or repr~sentative

. should be communicated to th'e Patent Office without delay. The Patent Office shall record the change in the Designs Register.

(3) The request for registr~tion of a change in the identity of the person of the . applicant or owner .shall be accompanied by written proof thereof."

1. In Section 15 (5), the words "up to the amount of a full feeⁱ• shall be deleted.
2. Section 16 shall be worded as follows:

"Se9tion 16

(1) A person who has neither domicile, seat nor establishment in the Federal Republic of Germany may take partin proceedings under this Law before the Patent Office or the Patent Court and assert rights deriving from a design protected according to the provisions of this Law only if he has appointed as his representative a .patent attorney or an attorney-at-law in the Federal Republic of Germany who is authorized to .

represent him in Patent Office and Patent .Court proceedings and in Civil litigation, in respect of the design as well as to file 'requests for the institution of criminal proceedings.

(2) Citizens of a Member State of the European Union or' of another Contracting Party to the Agreement on the European Economic Area can be appointed as a representative within the meaning of subsection (1) for the ,purpose of provision of a

'service within the meaning of the Treaty establishing the European Community if they are entitled to practice' their professional activity under orie of the professional titles referred to' in the Annex to Section 1 of the Law on Professional Practice by European Attorneys-at":Law in Germany of 9 March 2000 (Federal Law Gazette I p. 182) or to Section ,1 of the Law on the, Examination of Aptitude for Admission to Practice as a Patent Attorney of 6 July 1990 ,(Federal Law Gazette I p. 1349, 1351) in the respective, version in force. In this case, proceedings may, however,orily be pursued if an attorneyat-law or patent attorney in the Federal Republic of Germany has been appointed as the person authorized to receive service of documents.

(3)

The place whereJhe representative appointed pursuant to subsection (1) has his business premises shall be deemed: within, the meaning 'of Section 23 of the Code of Civii Procedure, to be the place where the assets a're located; if there are n'o bUSiness premises, then the place where the 'representative has his domicile in the Federal Republic of Germany shall ~e relevant and, in the absence thereof, the place where the Patent Office has its seat.

(4)

The legal termination of the appointment of a representative under subsection (1) shall not become effective until the Patent Office or the Patent Court has been notified of both the termination of this appointment and the appointment of another representative."

Article 19