Patents

Patents are granted for technical inventions that are new and based on an inventive step.

Important: Keep the invention secret until a patent application is filed!

The application for a patent is filed at the patent office of the country where protection is desired, e.g. at the German Patent and Trademark Office (DPMA) for Germany.

At the latest 18 months after the date of filing the application is published. Until that day, it is secret with respect to the public.

The patent office examines novelty and inventive step with regard to the state of the art that was known before the date of filing. If the result of the examination is positive, a patent is granted.

Within 9 months after issue of a patent, everybody can file an opposition. As a result, the patent may be (wholly or partially) maintained or revoked.

Term of a patent
: at most 20 years from the date of filing.

After grant of a patent, only the patentee has the right to use the invention, i.e. to produce, offer, import or apply it. With respect to third parties, he has the right to prevent the use of the invention and to claim damages.

Priority: Within one year from the date of filing of a first application in one country, the applicant has (in most countries) the right to claim priority. I.e. the applicant can file in other countries further applications (for the same invention) that are treated as if they were filed at the time of the first application. Therefore, state of the art that was published after the filing of the first application does not invalidate novelty or inventive step of the following applications claiming priority.

PCT: The Patent Cooperation Treaty (PCT) allows the applicant to file patent applications for a selected number of countries by a single deposition procedure at one receiving office. Examination of the application(s) is done by the national patent authorities themselves.

EPO: The European Patent Convention (EPC) provides a single procedure of filing and examination of a patent application at the European Patent Office (EPO) in Munich, Germany. After grant, the patent is valid in a number of European states selected by the applicant.

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Utility models

Utility models are often called "small patents". They are available in Germany and several other countries. The most important differences with respect to a patent are (for Germany!):

Grace period
: A publication of the invention by the applicant himself is not harmful if it was not made more than 6 months prior to filing.

Utility models are registered without substantial examination. Only if an infringement procedure is initiated or a request for revocation is filed by a third party, the requirements of novelty and inventive step are examined.

Utility models are published on registration, i.e. only a few months after filing.

The term of utility models is at most 10 years from the date of filing.

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Trademarks

A trademark is a sign that is capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of other undertakings. Words, including personal names, designs, letters, numerals, the shape of goods or of their packaging can in principal serve as trademarks.

The application for a (registered) trademark is done at the trademark office of the country where protection is desired, e.g. at the German Patent and Trademark Office (DPMA) for Germany.

The trademark is registered if there are no "absolute grounds for refusal" (e.g. the sign must not be descriptive for the goods/services, like "FRESH" for milk).

Within 3 months from the registration the proprietor of an earlier trademark may file an opposition. The Patent and Trademark Office examines if there exists a likelihood of confusion on the part of the public and may decide to cancel the registration of the younger trademark.

Obligation to use: A trademark must be put to genuine use at latest 5 years after registration. Otherwise, everybody can file an application for revocation of the trademark.

After registration of a trademark the proprietor is entitled to prevent all third parties not having his consent from using the same or a similar sign for the same or similar goods/services if there exists a likelihood of confusion on the part of the public. Moreover, he may claim damages.

The term of a trademark is 10 years from date of filing and is repeatedly extended for another 10 years after payment of renewal fees.

Priority: Within 6 months from the date of filing of a trademark in one country, the applicant has (in most countries) the right to claim priority of the first filing date.
International Registration: According to the Agreement of Madrid (MMA) and the Protocol relating to the Agreement of Madrid (PMMA), trademarks that are registered or filed (only PMMA) in one country can be territorially extended to other countries belonging to the MMA or PMMA for relatively moderate fees. The extended trademarks depend on the existence of the national mark registered earlier in the country of origin for 5 years (More information: WIPO).

EU trademark: From April 1, 1996, a "Community Trade Mark" can be filed at the EUIPO (European Union Intellectual Property Office, Alicante, Spain). If registered, this mark is valid in all member states of the European Community EU.

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Designs

Design rights protect "designs", i.e. the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

The design must be new and must have individual character.

Grace period: A publication by the applicant himself is not harmful if it was not made more than 12 months prior to filing.

An application for a German design patent must be filed at the German Patent and Trademark Office (until 1989: at the German county courts). An application is registered without substantial examination. An examination is done on request or in case of an infringement procedure by a civil court.

The term of a design patent is at most 25 years after the date of filing.

It is forbidden for third parties to copy the design. The owner may have a right to claim damages.

Priority: Within 6 months from the date of filing of a design patent in one country the applicant has (in most countries) the right to claim priority of the first filing date.
A design may be internationally registered according to the Agreement of The Hague on Designs. (More information: WIPO)

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Infringements

Technical products may infringe a patent or utility model.
Designs may infringe a design right.
Names of undertakings or products may infringe a trademark.
A plant may infringe a right of protection of plant varieties.

Ignorance is no excuse for infringement. A defence against alleged infringement most often includes an attack on the protective right as not being valid.

Most of the time injunction is requested with respect to the infringement. Moreover, compensation of damages may be claimed.
Prior to litigation, the opponent should be warned.
In first instance (certain) Landgerichte (district courts) are responsible in Germany.


Inventions of Employees

Inventions made in Germany by employees are subject to the "Arbeitnehmererfindergesetz" (ArbEG).

Basic formalities that are to be observed:

1. Separate written communication of the invention to the employer.

2. Until Oct. 01, 2009: Demands on the invention must be made in writing by the employer within 4 months from the communication. Otherwise, the invention is free.
After Oct. 01, 2009: A demand on the invention is supposed after 4 months if the invention has not explicitly been given free by the employer.

The employer must file a patent application for the invention or give it free to the inventor (employee).

After demands on the invention by the employer the employee can claim compensation, see directives for the compensation of inventions of employees.
"Private" inventions of employees must be brought to the knowledge of the employer, too.


Licenses

Licences allow the exploitation of protective rights, e.g. a patents, utility models, design rights, or trademarks.

With an exclusive license, the whole right of use is transferred to one licensee.

Non-exclusive licenses may involve several licensees.

The right of use is generally licensed for a certain time in exchange for royalties.
Important to observe: German and European Antitrust Law.







Last update: 22.02.2018