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Patent

A patent can protect your technical invention from imitations. Whether your granted patent is actually suited for taking action against imitations ultimately depends on the strength of your patent.

The Path to a Patent

To obtain effective protection for a patent in Germany, you have to file a patent application with the German Patent and Trademark Office (GPTO) or with the European Patent Office (EPO). The responsible office will examine whether the patenting requirements have been met. Once the examination procedure has been successfully concluded, a patent is granted.

For protection throughout Europe, the recommended path is through the EPO, where we are equally authorized to represent clients just like with the GPTO.

Patent protection is limited by territory. For many years we have been working with selected foreign attorneys in all the important countries across the globe for national applications in other European countries and countries outside of Europe.

Patenting Requirements

Patents protect technical inventions, for instance technical objects like machines and devices, chemical products, methods for manufacturing products or goods or processing methods.

According to the German Patent Act, patents are not granted for e.g. discoveries, aesthetic creations, business methods, rules for games and EDP programs (software). If your invention lies in this field, we will find an alternative solution, if possible, to protect your idea from imitations. Often it is possible to protect these ideas if protection is not being requested for the above-mentioned objects or activities as such. Design protection is possible for aesthetic creations.

The most important patenting requirements are novelty and inventive step. Novelty and inventive step are examined in consideration of the state of the art. The state of the art not only includes third party publications but also a party’s own publications. Therefore in order to obtain a strong patent, do not show or otherwise disclose your invention under any circumstances to third parties without a non-disclosure agreement before filing the application.

Subject Matter of Protection

For a period of time limited to a maximum of 20 years, a patent grants the patent holder the sole right to manufacture, use and market the subject matter protected by the patent.

The patent claims determine the subject matter protected by the patent.

Wording the patent claims correctly is a demanding task. If a patent claim contains features that are not necessary for realizing the invention, successfully taking action against imitations may be very difficult. On the other hand, a patent claim that is drafted too broadly may render the patent invalid. Consequently, a strong patent has at least one patent claim that is worded as broadly as possible and is nevertheless valid. 

Drafting the Patent Application

You do have the option of preparing the patent application yourself. Likewise you are not obligated to be represented by a patent attorney before the GPTO or the EPO. Many patent information centers in Germany also offer free consultation for inventors. However, please keep in mind that the content of a patent application can no longer be extended after it has been filed with the GPTO or the EPO. Any mistakes made in drafting a patent application are therefore almost impossible to remedy after the application has been filed.

Our clients rely on our longstanding expertise in the drafting of patent applications. Thanks to the different technical educational backgrounds of our patent attorneys, our competence extends from mechanics/engineering to process engineering, electrical engineering, electronics, physics, chemistry, biochemistry, medicine and biology up to genetic engineering.

Priority

If the relevant application is an initial application, within a priority period of twelve months starting with the date of application, the priority of this first application can be claimed for subsequent applications worldwide in virtually all economically relevant countries. This means that the subsequent application receives the same priority as the initial application.

Patent Infringement

Many years of experience, professionalism and assertiveness have contributed to our successful handling of infringement disputes at home and abroad, especially in defending or enforcing our clients’ existing patent rights. In all matters involving industrial property rights, we defend our clients against infringements or against third party attacks. In the corresponding civil proceedings, we cooperate domestically with established law firms that exclusively handle disputes relating to industrial property rights.

For decades we have been collaborating with select law firms abroad that offer a high level of specialization in the respective matter in question. 

Utility Model Protection

A utility model offers an alternative option for protecting a technical invention in Germany. The utility model is registered without a substantive examination, i.e. without examining novelty and inventive step. However, once registered it has the same effect as a patent. An additional advantage is the option of branching a utility model off from a pending patent application, with which the utility model receives the application date of the patent application. After it has been registered, upon request by a third party a utility model can be attacked with cancellation proceedings.

Applications can be filed for most inventions either as a patent or utility model. However, unlike patents, utility models cannot protect any method. The maximum period of protection is 10 years.

If a client already has made its own publication, a utility model is still possible under the circumstances since a six-month period preclusive of prejudice to novelty applies. The period preclusive of prejudice to novelty means that one’s own disclosures made in a period of no more than six months prior to the application date will not be taken into account when evaluating novelty and inventive step.

Third Party Patents – Monitoring and Searches

As a matter of course our offer also includes monitoring of patents belonging to competitors, especially monitoring of publications and registrations, as well as state of the art searches and freedom-to-operate (FTO) searches in all pending stages of the process.

When monitoring publications, official publication databases in previously defined countries or worldwide are checked at regular intervals for recently granted third party patents or new third party patent applications.
Special competitors or specific topics are monitored, for example in certain classes of the International Patent Classification (IPC) in which technical matters are classified.

Registration monitoring focuses on individual patent applications or families of a competitor in order to obtain information on the examination process and determine early on if any patents have been granted.
Even if officials do conduct state of the art searches prior to granting, it is always conceivable that these official searches do not find all the relevant patents in their search. If a critical patent by a competitor has been found, we usually recommend conducting an additional search.

Potential third party patents critical for one’s own development should be found using an FTO search.

We conduct state of the art searches and FTO searches both internally as well as in collaboration with service providers that specialize in searches. In both cases, we draft suitable search parameters for the search with our clients.

Third Party Patents – Opposition, Nullity and Cancellation Proceedings

If patents are asserted against our clients or a critical patent becomes known, we evaluate the relevance of these patents with regard to current or planned products for our clients.

Should patents or utility models be attacked, we represent our clients in opposition, cancellation and nullity proceedings before the German offices, the Federal Patent Court, the Federal High Court of Justice as well as before the European Patent Office.

Patent Glossar

Date of application

Day on which the application is filed with the patent office. Relevant for maximum duration.

Claim

Patent and patent application each contain at least one independent claim (main claim). Based on technical features, the independent claim defines the subject matter for which protection is sought (patent application) or granted (patent) As a rule, dependent claims are provided, which further limit the protected subject matter (fall back position in granting process or if the patent is attacked), dependent claims must be read with the main claim.

GPTO

German Patent and Trademark Office

EPO

European Patent Office

EPC

European Patent Convention

Inventive Step

According to the EPC and the German Patent Act, an invention is considered as based on an inventive step if it is not obvious to the person skilled in the art from the whole of the relevant state of the art.

European Patent

Patent that is granted with a single application filed at the EPO for all EPC Contracting States. A granted European patent is broken down into a "bundle" of national patents (parts), which must be validated by the national patent offices in the states where the patent should take effect as requested by the applicant.

Utility Model

Unexamined proprietary right that grants the proprietor the exclusive right to the commercial use of a technical invention limited to a maximum period of 10 years.

International application

A patent application filed according to PCT: With a single international patent application the applicant can simultaneously request patent protection in as many PCT contracting states as desirable. A search procedure is carried out centrally. The national offices are responsible for examination and granting. National phases must be initiated for national offices to take action.

Novelty

An invention is considered new if it does not belong to the state of the art, i.e. if it has not been made available by means of a written or verbal description, through use or in any other way to the public prior to the application date of the patent application. Can be published by anyone, including the inventor, by any means, any time and anywhere in world. Examination by individual comparison.

Publication document (Offenlegungsschrift)

Publication of (unexamined) application documents 18 months after the date of application to inform the public of possible future patents.

Patent

Legal title that gives the proprietor an exclusive right to the commercial use of a technical invention limited to a maximum period of 20 years.

Patent specification

Document in which the invention is described and the scope of protection is presented.

PCT

Patent Cooperation Treaty; Treaty on the international collaboration in the area of patents

PCT application

See International patent application

Priority

Right to file later applications at different patent offices for the same invention. Valid for a period of 12 months after the date the initial application of a patent is filed.

The date of the initial application is called the priority date.