Amendment of German Patent Attorney Act

T. Kimpfbeck, (DE) German Patent Attorney, European Patent Attorney, European Trademark and Design Attorney

Germany passed an important amendment law awarding European Patent Attorneys the right to partner with nationally qualified attorneys in Germany.

I. Introduction

In its 1006^th meeting on June 25^th, 2021, the German Bundesratupper house of German parliament adopted an important and long-awaitedIn BT Drs. 16/3655 there was an early but unsuccessful attempt in 2006 to allow cooperation between attorneys and other professions,Kimpfbeck, Stellungnahme zum Gesetzgebungsverfahren „Neuregelung des Berufsrechts der anwaltlichen Berufsausübungsgesellschaften" 4.9.2019 - pro right to partner for European Patent Attorneys amendment law to amend the professional laws for attorneys at law, patent attorneys, tax consultants and their company law in Germany. The amendment law was one of the last laws passed under the Merkel administration and could have easily been overlooked by the public as it was adopted along with 134 other laws and with an important law to amend the German Patent actSecond law for simplification and modernization of the patent act. The now adopted draft lawBT Drs. 19/27670 has 350 pages and is considered as the biggest update for 27 yearsLührig, Große BRAO-Reform gilt ab Sommer 2022: Mehr Freiheit für Anwaltschaft. Anwaltsblatt, 25.6.2021. The amendment law became necessary due to several decisions of the German Federal Constitutional Court which amongst others specifically allowed to form a company with an attorney at law and a medical doctor respectively a pharmacistBVerfG, Beschl. v. 12.1.2016, Az. 1 BvL 6/13, and due to reminders of European Commission to reduce restrictions in the professional law in GermanyKilian, Studie zur Neuregelung der interprofessionellen Berufsausübung, Anwaltsblatt, 2018. The amendment law has notable influence on the situation of European Patent Attorneys having their place of business in Germany and with regard to international cooperation, too, which will be discussed here in further detail. The new regime will be in force in the summer of 2022.

II. Individual situation for European Patent Attorneys

II.1 Prior Situation

For the time being the Federal Patent Attorney Act rules in § 52a PAO that German Patent Attorneys can partner in law firms only with:

• other German Patent Attorneys
• German attorneys at law
• Tax consultants
• Public accountants
• Attorney-Notaries
• Foreign attorneys having a qualification of another EU country being established in Germany

The list is final, i.e., sole qualified European Patent Attorneys do not yet possess the right to become a partner or owner together with German Patent attorneys. Despite that, it was always possible to form European Patent Attorney only law firms. But as soon as one partner is qualified and registered as a German Patent Attorney the partnership is illegal. This resulted in two effects for the German profession. First, a reasonable career in private practice can only be achieved by possessing the national admission as a German Patent Attorney. Second, sole qualified European Patent Attorneys concentrated in in-house roles in industry patent departments.

II.2 New Situation

The German Attorney at Law Act (Bundesrechtsanwaltsordnung, BRAO) and the German Patent Attorney Act (Patentanwaltsordnung, PAO) will be synchronized to allow European Patent Attorneys to partner with German Patent Attorneys and with German Attorneys at Law. In particular it is said in the reasoning of the amendment law:

As a result, a company [of Attorneys at law and Patent Attorneys] for example with mediators and European Patent Attorneys shall be possible, tooBT Drs. 19/27670, p. 177, next to last paragraph.

The amendment law is even more liberal and allows to partner with all liberal professions as long as they are compatible with the job as a German Attorney at Law or a German Patent Attorney.

The new provision § 52c PAO reads in English translation:

§ 52c PAO - Professional practice companies with members of other professions

(1) Forming a professional practice company pursuant to Section 52b (1) by patent attorneys shall be also permitted

1. with members of the patent attorneys' association, members of a bar association, tax consultants,

tax agents, public accountants and certified public accountants,

2. with members of the patent attorney professions from other countries who are allowed establish themselves in the area of application of this law, according to the law on the activity of European Patent attorneys in Germany or under § 157,

3. with Attorneys at Law, tax consultants, tax agents, public accountants and certified auditors of other countries who, in accordance with the Federal Lawyers' Act, the Tax Consultants' Act or the Auditors' Code, may jointly practice their profession with lawyers, tax consultants, tax agents, auditors or public accountants within the scope of this Act,

4. with persons practicing a liberal profession within the meaning of § 1 (2) of the Partnership Act, unless the company is incompatible with the profession of the patent attorney, in particular its position as an independent organ of the administration of justice, or may jeopardize confidence in its independence.
A company pursuant to sentence 1 no. 4 may be excluded in particular if the other person gives a reason, which for a patent attorney under Section 14, would lead to the refusal of admission.

(2) The purpose of business of the company pursuant to paragraph 1 shall be the provision of advice and representation in patent law matters. In addition, the practice of the respective non-attorney profession may take place.

This amendment law shall enter into force on the first day of the thirteenth calendar month following the date of promulgation. The promulgation will likely take place on August 1^st, 2021; thus, the law will enter into force on September 1^st, 2022.

III. International aspect

III.1 Prior Situation

For the time being Germany allowed patent attorneys of other EU countries to establish themselves in Germany and to partner with German Patent Attorneys if their profession is regulated in this EU country. This is based on Article 55 TFEU and Directive 2005/36/EC. Professionals in the EU can move across borders and practice their occupation or provide services abroad. Any host EU country in which a profession is regulated must take account of the qualifications obtained in another EU country and assess whether they correspond to those which it requires.

As a consequence, patent attorneys from EU countries where the profession is not regulated cannot establish for business in Germany and could thus not form a partnership company with German Patent Attorneys.

For Patent Attorneys of non-EU countries there is virtually no possibility to partner with German Patent Attorneys. However, there is one loophole for US Patent Attorneys because they are also qualified as US Attorneys at law. The German Attorney at Law Act allows under § 206 BRAO:

A national of a member state of the World Trade Organization who practices a profession which corresponds in training and powers to the profession of attorneys at law under this Act shall be entitled to establish himself in Germany under the professional title of the state of origin for the purpose of providing legal services in the fields of the law of the state of origin and international law if he is admitted on application to the bar association competent for the place of his establishment. The Federal Ministry of Justice and Consumer Protection shall be authorized to determine by decree, without the consent of the Bundesrat, the professions which correspond in training and powers to the profession of lawyer under this Act.

The decree allows amongst others US Attorneys at Law to establish themselves in Germany. There is no corresponding provision in the Patent Attorney Act so far.

III.2 New Situation

Patent Attorneys from non-regulated EU countries being also qualified as European Patent Attorneys will under the amended law gain the possibility to partner with German Patent Attorneys.

The legislator introduced also an international provision similar to § 206 BRAO, namely, new § 157 PAO which allows foreign patent attorneys to establish themselves in Germany for the purpose of providing legal services in the field of patent law of the country of origin, and thus to partner with German Patent Attorneys, if they:

1. are authorized under the law of the state of origin to practice the profession in the country of origin, and
2. have been admitted to the patent attorney bar upon application.

The Federal Ministry of Justice may, by decree, without the consent of the Bundesrat define those professions from other states with the exception of

1. the member states of the European Union,
2. the contracting states of the European Economic Area, and
3. Switzerland

which, with regard to the training for the profession and the powers of the professional, correspond to the profession of a patent attorney under this Act and for which reciprocity is guaranteed.

A reciprocity clause is known to the author for example in US CFR 37 CFR § 11.6. However, it remains to be seen which countries the Federal Ministry of Justice finds to be correspondingA similar list can be found for § 206 BRAO under http://www.gesetze-im-internet.de/brao_206dv/anlage_1.html.

IV. Survey

The legal framework for European Patent Attorneys in Germany will be changed, however, there is no comprehensive summary of the rights in other EPC member states. Thus, the author kindly invites all readers to give an opinion on the following survey questions by email to info@kimpfbeck.de

1. For which country do you submit information?
2. Are there national provisions governing rights or obligations for European Patent Attorneys in your country? What is the legal basis?
3. Are there national provisions governing rights or obligations for national patent attorneys in your country? What is the legal basis?
4. Is there a national company law governing patent law firms in your country? What is the legal basis?
5. Is it allowed in your country to practice as a European Patent Attorney and at the same time practice in another profession, in particular as a national patent attorney, as a national attorney at law or similar? If not, would you like to have such a liberal regime?
6. Is it allowed to form a law firm company having only European Patent Attorney partners/co-owners in your country? What is the legal basis? What legal forms of company (LLP etc.) are allowed? If not, would you like to have such a liberal regime?
7. Is it allowed to form a law firm company with a European Patent Attorney partner/co-owner and a national patent attorney partner/co-owner in your country, i.e. mixed patent company? What is the legal basis? What legal forms of company (LLP etc.) are allowed? If not, would you like to have such a liberal regime?
8. Is it allowed to form a company with a European Patent Attorney partner/co-owner and a partner/co-owner having another profession (e.g. attorney at law, public accountant, medical doctors, engineers, foreign qualifications), i.e. mixed profession company? What is the legal basis? What other professions? What legal forms of company (LLP etc.) are allowed? If not, would you like to have such a liberal regime?

Thanks in advance for your answers. Your personal information will remain confidential. If answers of the majority of EPC members states can be collected another article will published showing the results.

V. Summary

The amended German Patent Attorney Act will drastically change the career perspectives for European Patent Attorneys in Germany. It will change cooperation with foreign attorneys particularly from countries where the profession is not regulated and it will change the cooperation with countries providing reciprocal provisions for German Patent Attorneys. Readers are kindly invited to participate in the survey of section IV to collect information about the legal framework for European Patent Attorneys across all EPC member states.

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