Declaration of readiness to grant a licence

For German patents, future annual fees can be reduced by half by having the patent owner issue a declaration of willingness to license under Section 23 PatG. This declaration of willingness to grant a license is to be understood as a binding offer to the general public to allow the use of the patented invention in return for an appropriate remuneration. At the same time, this increases the chances of an extended exploitation of the patent by granting a licence.

The patentee (or his representative) may declare his willingness to grant a licence in writing to the DPMA. However, it should be noted that such a declaration can only be made if the official register does not yet contain a note on the granting of an exclusive licence for the patent concerned.

The binding declaration of readiness to grant a licence is entered in the register by the Patent Office. After registration of the declaration, anyone is free to notify the patent proprietor or his representative in writing of the intended use of the invention. In doing so, it is necessary that the notification of the potential licensee states in which way the invention is to be used. If the aforementioned criteria are met, the notifying party is automatically entitled to use the invention in the manner indicated by him. No further express consent of the patentee is required. Therefore, a declaration of willingness to grant a licence is out of the question if the patent proprietor does not wish to grant any rights of use to third parties (which may also be direct competitors).

After access to the publicly offered license, the licensee is obliged to provide the patent holder with information on the use made and to pay the necessary license fee on a quarterly basis. If the licensee fails to comply with his obligations in due time, the patentee may, if necessary, prohibit him from further use of the invention. The license fee to be paid shall be negotiated primarily between the patentee and the licensee at market conditions. If no agreement can be reached, an appropriate licence fee will be determined by the Patent Office upon written request. 

The withdrawal of the declaration of readiness to grant a licence may be declared in writing to the DPMA at any time, provided that the patent proprietor has not yet received a notification from a third party concerning the use of the invention. The withdrawal becomes effective upon filing and triggers an obligation for the patent proprietor to pay the DPMA the difference by which the annual fees previously due have been reduced.