Protecting technical innovations
Protecting one’s innovations against imitators is absolutely essential in today’s globalized economy. Patents and utility models are the traditional instruments for preventing infringement on intellectual property rights.
These protect technological or scientific inventions (and in the United States business ideas as well). This protection is comprehensive, i.e. it provides protection against the import of pirated or counterfeit products, e.g., those produced in low-income or developing countries.
As such, it is prudent to obtain industrial property rights in at least those countries that constitute one’s present target markets or in those countries that may or are likely to become target markets in the foreseeable future. It may also be wise to register intellectual property rights in those countries in which - though they do not presently constitute a target market for one’s products - one’s competitors are already present or in which the risk that pirated or counterfeit products will be manufactured is particularly high.
Protecting inventions is one of our core competencies. We provide clients with all services relevant to preparing, registering and enforcing patent and utility model protection rights. We advise clients as to whether a patent applications for a given invention should be made, and, on request, conduct research into state of the art prior to working hand-in-hand with the client to prepare the application documents. These are then submitted to the appropriate patent offices, be it the German Patent and Trademark Office, the European Patent Office, the World Intellectual Property Organization (WIPO) or - by leveraging our extensive network of colleagues abroad - any other patent office in the world. We implement examination proceedings and defend intellectual property rights against opposition and nullity suits. We also represent clients in attacks against third party intellectual property rights in opposition and nullity suits. We file proceedings against parties who have infringed upon clients’ intellectual property rights and draw on our extensive experience not just in Germany but in a number of other countries including the United States, Canada, France, Belgium, etc. We also defend clients in third party attacks arising from alleged intellectual property rights infringements.
We also issue expert opinions - including judicial opinions - for example, on whether an invention is suitable for patent protection, on granted patents or on infringements of intellectual property rights. We administer clients’ intellectual property rights and constantly monitor third party publications on behalf of clients in the fields in which they are active. In addition, we have experience evaluating patent portfolios prior to acquisition or sale or for the evaluation of hidden reserves.
Patent & utility models
A patent is granted for an invention if it is new with respect to the state of the art, is not obvious to the average expert in the respective field and is suitable for commercial use. A patent is only granted upon close, even material examination by the responsible patent office and remains in force for a maximum of twenty years. All regulations regarding German patents, from the subject of patents and patent protection to the corresponding technical questions, are laid out in the Patent Law (Patentgesetz (PatG)).
Because of the thorough examination carried out by the patent office, on average, a patent is granted approximately two and a half years after the application is filed. To ensure an invention is effectively protected as soon as possible, we recommend filing a utility model application.
A utility model is registered subsequent to its formal examination by the responsible patent office and is valid for a maximum of ten years. All regulations pertaining to German utility models, from the subject of a utility model and utility model protection to the corresponding technical questions are laid out in the Utility Model Law (Gebrauchsmustergesetz (GebrMG)). As the patent office only conducts a formal examination, on average, a utility model is issued approximately four months after the application is submitted.
Patent and utility model protection abroad
As a general rule, for each country in which patent or utility model protection is desired, a separate intellectual property right is required. If there is a need for protection not only nationally, as is almost always the case in today's globalised world, advantageous centralised application procedures can be used at least for patents.
Via a European patent application for example, protection in all EU Member States and several other countries, including Switzerland, Norway and Turkey, can be obtained. A European patent application is examined centrally by the European Patent Office and, if all the requirements for protection are met, a European patent is granted. Validation is then required in those countries where the European patent shall take effect. Following the centralised granting procedure, the European patent is broken down into national patents in the desired countries, which must be maintained separately.
A further centralised patent application procedure is available via the so-called PCT patent application, which can be filed with the World Intellectual Property Organization (WIPO). The abbreviation PCT stands for the Patent Cooperation Treaty concluded in 1970. Based on a PCT patent application, patent protection can be obtained in over 150 countries worldwide, including the USA, China, Japan and Russia. However, in contrast to a European patent application, there is no possibility of a central grant. Rather, once a PCT application has been filed, national and/or regional patent applications must later be filed for the desired countries, followed by separate grant procedures before the national authorities.
Utility model protection can also be obtained nationally as well as abroad. However, there are no centralised procedures through which several countries can be reached with only one application, as is the case with patent applications. Instead, a separate utility model application must be filed with the competent national authority in each country in which utility model protection is desired and available. Not all countries offer the possibility of utility model protection. Examples of countries besides Germany where utility model protection for technical inventions is available are Austria, France, Italy, Spain, Turkey and China.
We can prepare European as well as PCT patent applications for our clients and represent them before the European Patent Office (EPO) as well as the World Intellectual Property Organization (WIPO) and conduct the corresponding official proceedings for our clients. We can also provide comprehensive support in obtaining utility model protection abroad. If we are not authorised to represent our clients before foreign national authorities, we cooperate with experienced patent attorney colleagues.
If desired, we can carry out searches for relevant state of the art before patent and/or utility model applications are filed nationally or abroad. For this purpose we have access to and experience with professional search tools.
In order for a company to file a patent or utility model, the rights to the invention must be transferred from the inventor or inventors to the company. The rules set forth in the Employee Invention Act (ArbnErfG) apply to all employee inventions. Many small and medium-sized companies are unaware of this fact and it is often not applied, leading to irreversible consequences in many cases.
We advise our clients in all matters related to employee invention law, including remuneration and compensation issues. Having successfully streamlined and restructured the patent departments for large corporations, we’re happy to guide clients through the process of setting up an efficient employee inventions department for their organization. However, we’re also happy to handle all matters related to employee inventions on behalf of the client on request. We represent clients before the Arbitration Court of the German Patent and Trademark Office and before the ordinary courts in all legal disputes involving employee inventions.
Computer & Software
In the "age of digitalisation", computer software plays an outstanding role in a variety of technical fields.
Computer software can enjoy copyright protection from the moment it is created. However, since copyright protection can usually be circumvented comparatively easily, there often is a need to obtain a more extensive protection. Computer programs "as such" are excluded from patent protection by German and European patents (see §1 (3) No. 3 PatG and Art. 52 (2) c) EPC), since programs "as such" lack the technical character that is required for patentability. If, however, in a specific case there is sufficient technical character, this exclusion no longer applies and the path to obtaining patent protection may be open. Technical character to a sufficient extent can, for example, result from the fact that a computer program is used to carry out process steps in order to solve a technical problem in a technical field, or from the fact that the monitoring, control or regulation of the operation of technical devices is affected (see Schulte, Patent Law with EPC, 10th edition, 2017, §1, Chapter 7). These are only general examples and it has to be examined in each individual case whether a new development with regard to software fulfils the prerequisite of a sufficient technical character or not, which we can do for our clients. We also advise our clients as to what extent computer software may be better protected from counterfeiting and imitation via supplemental trademarks and/or title protection.
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