Patents

 

Patents

We are happy to provide the information below in German as well, just send us an email to contact@hernandez-ip.com.

 

General

A patent can be used to protect substances, devices, methods, and uses of technical objects for up to 20 years, provided they are new, involve an inventive step and are industrially applicable. It is also possible to obtain protection on a computer program, provided that it produces a technical effect or solves a technical task by technical means. Under certain conditions, inventions in the field of medicine and medical technology are also eligible for patent protection in Germany and Europe.

An important requirement for a patent to be granted is that the invention must be new. The invention may not be published, exhibited, sold or the like before a patent application is filed. The invention may only be made available to a group of persons bound to secrecy. A so-called grace period is only available in certain jurisdictions.

A patent application is regularly published 18 months after the filing date. Within 12 months from the first filing date, patent applications or utility model applications in another state, a European patent application and/or an international patent application may be filed while maintaining the seniority (priority) of the first application.

Further information, for example on maintenance fees, third-party observations, opposition proceedings, infringement proceedings and nullity proceedings, is available on request.

 

German patents

The protective effect of a German patent extends to the territory of the Federal Republic of Germany. The German market is very strong in comparison with the rest of Europe and patent protection in Germany is therefore generally advisable.

A special feature of German patent law is that examination can be requested within the first seven years from the filing date. Patent applicants can make strategic use of this special feature. Contact us and we will be happy to work out a suitable strategy for and together with you.

Furthermore, the German Patent and Trademark Office does not impose the excessively high formal requirements for the unity of the application as does the European Patent Office. With a German patent application, in contrast to a European patent application, it is possible to file a divisional application up to about one month after the decision to grant.

In addition, a German patent application incurs relatively low official fees.

 

European patents

European patent applications are examined by the European Patent Office (EPO).

A European patent application has the advantage that patent protection for the invention can be achieved in all countries of the European Union as well as in other European countries with a central procedure. This saves translation costs and costs for correspondence attorneys.

If the intention is to file an international patent application at a later date, it makes sense for companies based in Europe to file a European first application instead of a national first application, since the search fee for the European first application is credited in the international application. Furthermore, it makes sense to file the European first application in English in order to save translation costs incurred at a later date if the European patent is to be in force in as many countries as possible.

A German utility model can be branched-off from a pending European patent application at any time, which can be used to take action against potential infringers.

In contrast to the procedure before the German Patent and Trademark Office, the European Patent Office binds the applicant into a relatively streamlined procedure, which is particularly disadvantageous if it cannot yet be decided how the invention is to be commercially exploited.

 

Employee inventions

The invention is first "owned" by the inventor or inventors upon its completion. The Employee Inventions Act regulates how ownership of the invention passes from an employee to the employer.

Invention disclosure

If the employee is subject to an employment relationship in the Federal Republic of Germany, the employee must submit a separate invention disclosure in text form to the employer. The text form allows the invention disclosure to be transmitted as a printed and signed document, (internal or encrypted) e-mail or fax.

Utilization of the invention

The employer may explicitly claim the invention in any form by means of a declaration within a period of four months. The employer shall also be deemed to have claimed the invention if it does not release it to the inventor in text form within four months of notification.

After the claim has been made, a patent application with effect for the Federal Republic of Germany must generally be filed. If the invention is released to the employee, the employee can apply for a patent or utility model for the invention.

 

Utility model

Like a patent, a utility model is a technical property right. Due to the comparatively low costs as well as the transparent procedure, the utility model is a real alternative to the patent in certain cases, but at least an interesting additional option.

The utility model information is divided into the following sections:

  • General information about the utility model
  • Protection requirements
  • Maximum protection duration
  • Relevant state of the art / grace period
  • Exhibition protection/exhibition priority
  • Search
  • Announcement and suspension of the announcement
  • Branching-off of a utility model from a German, European or international patent application
  • Infringement proceedings for utility models
  • Utility model cancellation
  • Advantages and disadvantages of a utility model compared to a patent

General information about the utility model

Due to the comparatively low costs, a utility model is particularly suitable for small and medium-sized enterprises (SMEs) and for inventions for which it is not yet certain whether or how they will be commercially exploited. Since the utility model law knows a grace period of 6 months for own prior publication, it is also suitable for inventions published in the last 6 months.

Protection requirements

Essentially, only technical products, devices and substances can be protected with a utility model, provided they are new and based on an inventive step. In contrast, utility model protection is not available for methods. The German Patent and Trademark Office only examines the formal registration requirements of a utility model application, but not novelty or inventive step.

Maximum protection duration

The maximum term of protection for a utility model is 10 years, for a patent it is 20 years.

Relevant state of the art / grace period

In contrast to the German patent or European patent, the utility model has a grace period of 6 months for own publication or use. Furthermore, use prior to the filing date outside the Federal Republic of Germany does not prevent protectability, whereas a written description within and outside the Federal Republic of Germany does prevent protectability.

Exhibition protection/exhibition priority

In addition, the utility model is entitled to exhibition protection or exhibition priority if the invention was published in a period of 6 months before the filing date at an exhibition for which the Federal Ministry of Justice has approved exhibition protection or exhibition priority in the Federal Law Gazette.

Search of the utility model

Optionally, a search of the utility model may be requested at the German Patent and Trademark Office by the applicant or any third party. A reply to the search report or the filing of amended claims is not required. However, limited claims may optionally be filed within the scope of the original disclosure.

Announcement and suspension of the announcement

A patent application is disclosed 18 months after the filing date or priority date. A utility model is normally published after formal examination by the DPMA, typically within a few weeks. With the publication of the utility model, the protective effect takes effect.

The registration and publication of the utility model may be postponed by up to 15 months upon request. Such a request may be useful, for example, if the subject-matter to be protected is to be further developed. This is because an own utility model is also considered to be prior art.

Branching-off of a utility model from a German, European or international patent application

A German utility model can be branched-off from a pending German, European or international patent application by claiming the filing date of the patent application. The branching-off is possible up to two months after the end of the month in which the patent was granted or the patent application was rejected.

Infringement proceedings for utility models

In contrast to a patent, the validity (novelty, inventive step, etc.) of a utility model can be examined by the court where the infringement proceedings are pending. Further details on infringement issues can be found in the section Utility Model Infringement and Patent Infringement.

Cancellation of a utility model

The Utility Model Act does not provide for opposition proceedings or nullity proceedings. A utility model that is not legally valid can be cancelled by means of cancellation proceedings at the German Patent and Trademark Office. An appeal against a decision in the cancellation proceedings at the German Patent and Trademark Office can be filed at the Federal Patent Court.

Advantages and disadvantages of a utility model compared to a patent

A utility model offers the following advantages over a patent:

  • Lower fees
  • Immediate protection from the publication of the utility model
  • grace period of 6 months compared to own prior use before filing date
  • Exhibition protection and exhibition priority for own exhibition at certain trade fairs 6 months before the application date
  • Use outside the Federal Republic of Germany is not to be considered as prior art
  • Alternative to a possibly costly divisional registration
  • By means of branching-off a utility model, action can already be taken against an imitator during patent grant proceedings that have not been completed
  • A utility model may be the last possibility to obtain protection for an aspect of the invention for which a divisional application can no longer be filed at the European Patent Office

A utility model has the following disadvantages compared to a patent:

  • The term of the utility model is only 10 years
  • Only devices and substances can be protected, but not methods
  • If no search has been carried out, there is legal uncertainty regarding the scope of protection and legal validity of the utility model
  • Unless a deferred publication is requested, the utility model will be published within a few weeks and thus may prevent protection of further development of the invention

 

International patent applications

With an international patent application through the World Intellectual Property Organization (WIPO), an examination procedure can be initiated in almost all industrialized countries of the world by means of a single centralized procedure. The international procedure comprises a so-called international phase before a so-called international search authority for prior art search (Chapter I) and optionally a preliminary international examination before an authority entrusted with international preliminary examination (Chapter II). This is followed by the national or regional phases in the countries in which patent protection is to be obtained.

General

An international patent application may be filed as a first application or as a subsequent application claiming a priority of a national application or a European patent application within 12 months from the filing date of the oldest application whose priority is claimed. Several priorities may also be claimed.

With the filing of an international patent application, all states in which a patent can be granted by means of an international patent application are automatically designated.

For applicants located in a state of the European Patent Convention, it is advisable to file a European patent application first and an international patent application later, since the search fee for a European application is lower than for an international application and the search fee for the European application is credited in the search of the international application.

International search

For an international patent application, the so-called international search authority prepares an international search report with a preliminary opinion on the patentability of the invention. For applicants from a contracting state to the European Patent Convention, the international search authority is, with few exceptions, the European Patent Office.

Preliminary international examination

Within 19 months from the priority date of the first application or the filing date of the international application, if no priority of a first application has been claimed, a so-called request for preliminary international examination may optionally be filed. This request is particularly useful if a patent grant is sought in states which do not have their own patent grant procedure.

National or regional phases

After 30 or 31 months from the priority date of the first application or the filing date of the international application, if no priority of a first application has been claimed, the national/regional phases are initiated in the countries where patent grant is actually sought. At this time, translations of the international patent application must be filed in the respective languages of the countries where patent protection is sought. The previously centralized procedure is now continued on a decentralized basis by the patent offices of the countries in which patent protection is sought. As far as possible, the search results and the examination results of the international phase are used.

Both, in Germany (from 01.05.2022) and before the European Patent Office, the national/regional phase must be initiated after 31 months.

Advantages of an international patent application

  • The decision, in which countries patent protection is actually sought, may be delayed to approximately 30 months from the priority date of the first application or the filing date of the international application, if priority of a first application has not been claimed.
  • Translations into the national languages of the states in which patent protection is sought need not be filed until approximately 30 months after the priority date of the first application or the filing date of the international application, if priority of a first application has not been claimed.
  • It is possible to centrally and thus with less effort differentiate from the state of the art.
  • The patent offices of some states follow the result of the international search and international preliminary examination, so that a patent grant can be obtained in these states with relatively little effort. Examples of this are China, Canada and the Russian Federation.

 

Opposition and nullity

A granted patent may be revoked upon request by means of an opposition or an action for revocation on the following grounds:

  • lack of novelty,
  • lack of inventive step,
  • unlawful taking (application by a non-authorized person) in the case of a German patent,
  • inadmissible extension or
  • lack of patentability.

Opposition proceedings

The opposition proceedings are official proceedings and as such are relatively inexpensive. Each party normally bears the costs of the opposition proceedings itself. The costs of the opposition proceedings are independent of the amount in dispute. Consequently, the opposition proceedings do not entail any major cost risk.

Nullity action

After the opposition period, if no opposition proceedings are pending at the DPMA or EPO, nullity action against a German patent or the German part of a European patent can be filed at the Federal Patent Court. Invalidity proceedings are court proceedings with court and attorney fees depending on the value of the dispute. Furthermore, the unsuccessful party has to bear the costs of the nullity proceedings. Invalidity proceedings therefore entail a considerable cost risk. Appeals against the judgments of the nullity senates of the Federal Patent Court are available to the Federal Court of Justice.

 

Patent infringement and utility model infringement

The patent owner or utility model owner is essentially entitled to injunctive relief and a claim for damages against a potential patent infringer. Patent infringement proceedings are usually initiated with a so-called authorization request or a warning. With the authorization request, the potential patent infringer is asked to explain why he should be entitled to use the protected object. The potential patent infringer can be requested to submit a cease-and-desist declaration with a penalty clause for the future by means of the warning letter, which is subject to costs for the infringer. It should be noted, however, that an unjustified warning triggers a cost reimbursement obligation for the property right owner vis-à-vis the potential patent infringer.

The scope of protection of a granted patent or registered utility model includes literal infringement and equivalent infringement. Equivalent infringement means the use of a means which has the same effect and is equivalent to a feature of a claim, and the finding of the equivalent means must not be inventive.

Patent infringement suits in Germany are filed with a competent district court. The most popular district courts for patent cases are the district courts in Düsseldorf, Mannheim and Munich. In urgent cases, a patent infringement can also be pursued with a preliminary injunction (cease and desist order). A preliminary injunction (cease and desist order) is also an option if an infringing item is offered or exhibited at a trade fair.

 

Search

Searches on patent applications, granted patents and non-patent literature (for example, scientific publications) are offered by selected patent offices, professional search services or private searchers. The procedure for a prior art search for opposition proceedings or nullity proceedings is fundamentally different from the procedure for a search for a freedom-to-operate analysis.

 

Freedom-to-Operate (FTO), Freedom to Exercise

Before a new product is developed or launched on the market or a new service is offered, it is very important to research property rights that may conflict with the product or service to be developed. The owner of an opposing patent, utility model or even design patent can, in addition to claiming damages, also demand an injunction against the distribution of the product or the offering of the service.

A freedom-to-operate analysis can significantly reduce the risk of disputes over property rights. Such property right disputes are associated with a cost risk and also unsettle both existing and potential customers. Once a patent has been granted, it can only be destroyed by means of an opposition or nullity action. Such proceedings are usually lengthy and costly. A German utility model can be cancelled by means of cancellation proceedings, a German design by means of a cancellation action and a European Community design by means of a request for cancellation at the EUIPO.

At the beginning of a freedom-to-operate analysis, a search is usually conducted for existing IP rights, IP applications, and so-called non-patent literature that could conflict with the product or service.

The more effort invested in the search, the more accurate the result. Nevertheless, it is impossible to find all relevant documents even with an extensive and thorough search. Therefore, depending on the product and the market environment, an economic compromise between costs and residual risk must be found. The expertise available in our firm will help you determine the right middle ground.

 

Defense against alleged patent infringement or utility model infringement

Against an alleged patent infringement or utility model infringement, one can essentially defend oneself with the following arguments:

  • The product offered or the method used does not fall within the scope of protection of the patent claims
  • There is a right of prior use
  • The subject-matter of the utility model or patent is not novel or non-inventive

If none of these arguments apply, a workaround must be found.

Scope of protection of the patent claims (literal sense and equivalence)

The scope of protection of the patent claims is determined by the literal sense of the patent claims and the scope of equivalence. A feature is considered equivalent if it has the same effect as a feature of a patent claim, is equivalent to the claimed feature and finding the equivalent feature is not inventive. If the product offered or the method used does not fall within the literal meaning of the patent claims and is outside the scope of equivalence of the patent claims, there is no patent infringement.

Right of prior use

A right of prior use arises if the subject-matter of the patent claim has already been manufactured or applied in an establishment within the territory of the Federal Republic of Germany before the filing date or priority date of the patent in suit or if serious measures have been taken for this purpose. The right of prior use entitles the holder to (further) use the previously manufactured subject-matter or applied method free of charge despite a conflicting patent or utility model. The right of prior use can only be transferred together with the business. Mere knowledge of the subject-matter of the invention or its documentation does not give rise to a right of prior use.

The subject-matter claimed by the patent in suit is not novel or non-inventive

Prior art can be identified by means of a search to show that the subject-matter of the patent or utility model is not novel or inventive. This prior art can be held against the patent or utility model owner out of court. A German infringement court is bound by the validity of a patent. A patent can be revoked in opposition proceedings or nullity proceedings. The lack of legal validity of a utility model can be raised in infringement proceedings or utility model cancellation proceedings can be initiated at the German Patent and Trademark Office to cancel the utility model.

Workaround

If the above possibilities do not exist, a workaround must be sought so that the product or method no longer falls under the claims of the opposing patent or utility model.

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