From the decision of the Comptroller, either party may appeal to an "appeal tribunal." This court consists of a judge of the high court who at the present time is a specialist patent judge. There is no further appeal as a matter of right, but the appeal tribunal may grant an applicant leave to appeal to the court of appeal when an opposition has been sustained on the ground of prior use or lack of invention.

There is a fee of 2 pounds ($5.60) on filing an opposition and a fee of 2 pounds for each party who attends the hearing. The Comptroller has the power to award costs which may be enforced by a rule of court. A foreign opposer may be required to deposit security for costs.

The grounds upon which an application may be opposed include practically every ground upon which a patent may be held invalid; some of the grounds listed in the statute are repeated here, but not in the language of the statute.

1. Anticipation by a description in a patent or publication dated prior to the filing date of the application. Patents over 50 years old do not constitute bars and are not used.

2. Prior use in Great Britain.

Prior secret use is not a bar.

3. Lack of invention over the prior art.

4. Lack of subject matter falling within the statute.

5. Insufficient description of the invention.

6. That the invention is claimed in a copending prior filed British application.

7. That the applicant, or the person named as the inventor, obtained the invention from the opposer or from a person of whom he is the personal representative. This ground amounts to the charge that the applicant has stolen the invention from the opposer. The opposer may file an application of his own and if he succeeds in the opposition he is given the benefit of the filing date of the opposed application. This ground is not available to foreigners.

The opposition may raise questions which cannot be considered by the Patent Office itself during the course of the ex parte examination. The opposer may bring in prior art such as foreign patents and printed publications which the Patent Office does not ordinarily search, and may raise the question of prior use, which no patent office pretends to search. The question of invention over the prior art, which the examiners are not allowed to raise ex parte during the examination, may be raised by the opposer.

The following tables list the numbers of oppositions which were filed during two 5-year periods, 1935-39 and 1950-54.*

These figures, as well as those given in the next section relating to revocations, are given in the annual reports of the Patent Office which are published in separate pamphlets; the report for 1954 has the title "Seventy-first Report of the Comptroller-General of Patents, Designs and Trade Marks, with Appendices, for the Year 1954," other years have a similar title.

The number of applications accepted each year in Great Britain is not given in the annual reports and consequently the number of patents issued is listed instead. It is noted from the table that during the early period the proportion of oppositions amounted to 1.6 percent of the patents issued and during the later period to 1.1 percent. The table also lists the number of hearings, which will give some ides of the cases decided after trial, and the number of appeals which were taken from decisions of the Patent Office to the court, during each of the years represented.

REVOCATION OF PATENTS IN THE BRITISH PATENT OFFICE

The British Patent Act also provides for the revocation of a patent by the Patent Office. At any time within 12 months after the granting of the patent, any person interested who did not oppose the application may apply to the Comptroller to revoke the patent, or any of the grounds upon which the patent could have been opposed The procedure on these petitions to revoke a patent is substantially the same as the procedure in the opposition proceedings. These revocation proceedings are quite commonly referred to in England as "delayed oppositions" since the main difference between them and the opposition is that the revocation proceeding is instituted within 1 year after the patent is issued whereas the opposition proceeding occurs before the patent is issued.

In the revocation proceeding the Comptroller may revoke the patent completely or may in effect revoke it partially by requiring that the patent be amended as directed (amendments of a patent in Great Britain correspond to disclaimers or narrowed reissues in the United States). The decision of the Comptroller is appealable to the appeal tribunal. There is a further appeal to the court of appeal in those cases in which the decision is that the patent is to be revoked; this is the only difference from the procedure in oppositions.

Following is a table of the number of revocation proceedings instituted in England during the years 1935-39 and 1950–54.

The proportion of petitions for revocation is very small, being only about two-tenths of i percent of the patents issued.

As has been stated, revocation of a patent can be sought in the British Patent Office only during the first year after the patent is issued. The British statute also provides for an action to revoke a patent to be brought in the court at any time by an interested person, and also provides for the filing in an infringement suit of a counterclaim to revoke the patent. Invalidity of the patent may also be raised as a defense in an infringement suit without bringing a counterclaim for revocation. The published reports of decisions in patent cases during the 5 years 1950-54 contain court decisions involving the validity or infringement of only 17 patents; 16 were in infringement suits, in 11 of which counterclaims for revocation were filed, and 1 was an independent action for revocation of the patent. The results in these cases were: 5 patents were held valid and infringed, 4 patents were held valid but not infringed, and 8 patents were held invalid.

5

GERMANY-PRELIMINARY

Before discussing the oppositions and nullification proceedings in Germany, something must first be said concerning the situation of the German Patent Office after the war.6

The German Patent Office, in Berlin, ceased operating early in 1945 and thereafter applications could not be filed nor were any proceedings conducted in connection with applications previously filed. Nothing was done until October 1, 1948, when "filing offices" were established in Darmstadt and Berlin. These offices were merely for the purpose of filing applications to obtain a filing date, and nothing was done with the applications. (The United States has accepted these applications as regular applications for patent for the purpose of obtaining priority dates.) The German Patent Office itself was reestablished in Munich on October 1, 1949, for the area of the Federal Republic of Germany. In order to get the Patent Office open and beginning to function it was necessary to temporarily abandon the examination system of granting patents. Applications filed in the temporary filing offices and transferred to the regular Patent Office, old ap

Reports of Patent, Design and Trade Mark Cases, London, vol. 67 et seq.

See Status of Patent and Trade-Mark Laws in Germany, Journal of the Patent Office Society, vol. 32, May 1950, p. 357, and Patent System-Reestablished for Germany, by Victor L. Billings, ibid., July 1950, p. 498.

plications which had been filed before the Patent Office closed and which were reinstated, and new applications filed in the reopened office up to a certain date, were to be processed without any examination as to novelty and invention, and patents issued, though subject to opposition. Examination of applications was not resumed until January 1, 1952, and then only in connection with applications filed thereafter. Up to January 1, 1952, there were 266,652 applications (61,002 filed in the filing offices, 83,628 reinstated old applications, and 122,022 new applications filed in the reopened office), and these were not subject to examination.

When the application for patent is considered allowable by the examining section of the patent office, the application is published in the official patent journal, the Patentblatt. With this publication, the patent rights become provisionally effective and recovery can be had from infringers, provided the patent actually issues. As in England, this protects the applicant and, also, opposition delays do not affect the term of the patent as it will expire 18 years from the filing date of the application.

The publication in the official journal is not a printed publication of the application but is only a publication of a notice. This notice gives the name of the inventor, the title of the invention, the classification of the application, and the filing date. The listing in the Patentblatt has a preliminary paragraph reading as follows:

For the objects stated the parties hereinafter mentioned have applied for the granting of a patent on the day indicated. The applications will be laid open to inspection by anyone in the Exhibition Hall of the Patent Office in accordance with section 30, para. 5, of the Patent Law, from the day of this announcement for a period of 3 months. With the announcement there becomes effective the legal force of a patent for the time being (Section 30 of the Patent Law).

Simultaneously with the publication, the patent application is open for public inspection at the Patent Office and copies may be obtained. Prior to September 1955, only photographic or photostat copies could be obtained, but since September 1955 the specification and drawings have been printed, and these printed copies may be purchased.

Within 3 months after the publication any person may raise an objection to the granting of the patent. The statute specifically states "any person," and there is no limitation on who may oppose, as is the case in Great Britain (except as to a certain ground as will appear later).

The opposition must be submitted in writing and state the grounds relied upon. The majority of oppositions are based upon the ground of lack of novelty of the invention by reason of prior printed publications or prior public use. If the opposition is based upon the claim

The legal literature on patent law is quite voluminous in Germany. Two recent books are Patentgesetz und Gesetz Betreffend den Schutz von Gebrauchsmustern, by Dr. Eduard Reimer, 3 vols., 1949-55, and Patentgesetz und Gebrauchmustergesetz, by Dr. Rudolf Busse, Berlin, 1956. The former is by the present president of the German Patent Office and the latter by a high official of the Patent Office. An article by Dr. Rudolf Busse, Procedure and Practice in the German Patent Office, appears in the Journal of the Patent Office Society for October 1956, pp. 683-704.

that the applicant has derived the invention from the opposer, only the person injured may oppose; in this situation the opposer may file an application of his own if he succeeds in the opposition and be given the benefit of the date of the opposed application as the date of his own application. With the filing of the opposition, jurisdiction of the application passes from the examining section to the patent section which handles the oppositions. The patent section, in considering a case, consists of 3 members, 2 of whom are technical members who also function as part of the examining section.

Details of the procedure followed are not specified in the statute, which merely provides that the patent section may summon and hear the interested parties and order the examination of witnesses. A hearing is held only if applied for and granted. A record is kept of the hearing and the examination of the witnesses.

The Patent Office has the authority to assess costs against either of the parties.

The decision of the patent section is appealable by either party. This appeal is to an appeal board, which consists of three members, and its decision is final. There is no recourse to the courts from the action of the Patent Office.

Following are some statistics relating to oppositions. The figures in parentheses are estimates.

Considering only the later period first, the ratio of the number of applications opposed to the number of applications published for opposition is 32.7 percent. This proportion is very high; it is no doubt due to the fact that there was no examination in connection with most of the applications published during this period and hence may not be normal for Germany. The number of oppositions in Germany is much greater than the number of applications opposed. During the 5 years 1950 to 1954 a total of 98,603 oppositions were filed against 59,972 applications, an average of 1.6 oppositions to each application opposed.

Detailed statistics on the number of applications which were opposed, as distinguished from the number of oppositions filed, during

Except as otherwise noted, statistics given for Germany are from statistical reports of the German Patent Office published annually in the periodical Blatt für Patent-, Muster-, und Zeichen wesen. These reports give the number of oppositions filed but do not list the number of applications opposed nor the results of the oppositions. Information on these matters has been obtained from officials of the German Patent Office.