Request for examination or search request?
When a German patent application is filed with the German Patent and Trademark Office (DPMA), a request for examination is usually filed immediately in order to initiate the examination procedure. As a rule, the applicant then receives the first office communication approximately eight to nine months after the filing date. This procedure is particularly useful if the patent is to be granted soon, e.g. due to planned exploitation or pending licensing negotiations.
In addition to filing a request for examination, it is also possible to file a search request first. If this is done when the application is filed, the applicant will also receive the search report within eight to nine months after the filing date.
In terms of content, the search report is comparable to an examination report, since the examiners are now required to deal with the application in just as much detail with regard to protectability, in particular with regard to the existence of novelty and inventive step. Thus, the search report also provides a well-founded assessment of the subject matter of the invention. Thus, even after receiving a (positive) search report, the applicant can file a subsequent application abroad and, if necessary, make adjustments to the application text at the same time.
Since the search request does not initiate an official examination procedure with a corresponding time limit, the applicant is more flexible for the time being, since there is no need to react within a certain time limit set by the DPMA. Thus, e.g. economic interests can be assessed in peace.
If the search report is positive with respect to novelty and/or inventive step, the patent applicant can promptly file a request for examination in order to obtain a rapid grant of the patent. As a rule, the same examiner who prepared the search report also decides on the grant of the patent.
Alternatively, the applicant has the possibility to delay the examination procedure up to 7 years after the filing date. In this way, after the publication of the application after 18 months, third parties are left in the dark as to the form in which a patent may be granted. In addition, the applicant is spared the cost-intensive examination procedure. Such a procedure is particularly useful if the applicant is seeking a European patent in addition to the German first application, since the applicant then does not have to conduct the examination procedures before the German Patent and Trademark Office and the European Patent Office in parallel.
The official fees will only increase by a total of 100 Euro due to the additional computed application. From our point of view, this is worth the flexibility it buys.
We will be happy to advise you on the strategy that we consider to be most suitable for you.