Unveiling the German Design Invalidity Proceedings

How Businesses Defend Their Design Patents

In the modern business landscape, having a unique design is a crucial way for companies to showcase their innovation and brand identity. However, in Germany, third parties have the right to file invalidity requests against design applications, presenting a significant challenge to the protection of design patents for major companies.

In Germany's legal system, invalidity proceedings are divided into two types:

• Application for the Determination of Invalidity: This type of request addresses invalidity issues arising from "absolute grounds," such as a product's design not constituting a genuine design, lacking novelty or individuality, or even not being considered as something protected under design law. It's important to note that any individual or organization can file this kind of request. The reasons for "absolute grounds" are as follows:
  • The design does not qualify as a design
  • Lack of novelty or individual character
  • The design is excluded from design protection
  • Any person may file this request.
• Application for the Declaration of Invalidity: This request involves "relative grounds," such as the design being protected by copyright, or having an earlier registration or priority date from existing designs or distinctive signs. The initiator of this request must be the relevant rights holder. The reasons for "relative grounds" are as follows:
  • Earlier works protected by copyright    
  • Registered designs or distinctive signs with earlier application or priority dates
  • Only the relevant rights holder can file this request

Procedure for Invalidation Requests:

• Filing Requirements:
  • Invalidation requests must be submitted in writing and include a reasoned statement.
  • All facts and evidence supporting the claim must be provided.
  • The request must clearly specify the earlier design or other rights conflicting with the challenged registered design.
  • A fee for the invalidation request is required.
• The DPMA will notify the design rights holder about the application for invalidity determination or declaration.
• If the rights holder does not submit a response within one month, the DPMA will declare or determine the design as invalid.
• If a response is filed, the DPMA will evaluate the submitted facts and evidence to decide on the invalidation request. Hearings may be conducted if necessary.