Fields of law and our services
Patents and utility models are technical intellectual property (IP) rights.
Technical intellectual property rights protect the technical features of an invention. To obtain such a right, those features of an invention that constitute the essential difference compared to the prior art - i.e., that limit the invention against established knowledge - must be elaborated and described.
The combination of these features must be novel, i.e., it must not have been known before.
The combination of these features must furthermore constitute an inventive step, meaning that, for a person skilled in the relevant filed, the invention would not have been obvious from the prior art.
The prior art comprises any public knowledge. It comprises also the features that the applicant himself has disclosed prior to filing the application. This applies without any limitation to patents. For utility models, there exists one exception: The disclosure made by the applicant himself within six months before filing of the application is not taken into account as prior art.
A patent application must be filed at the patent office before an invention is publicly disclosed, as otherwise the invention will be included in the prior art against which the patent application is assessed.
Formulation of application documents
The features of the invention are described in the claims of the technical IP right.
It is important to limit the independent claim to the essential features constituting the actual invention. The features relating to details of the invention are described in subclaims, which refer to the independent claim. Listing all the features in the independent claim limits the scope of protection of the IP right too severely.
Grant procedure, period of protection
Patents are technical IP rights obtained by filing an application, whereupon the patent office conducts a search and an examination procedure. On completion of the latter, the patent office decides whether it grants a patent or not.
A patent remains valid for a maximum of 20 years provided the maintenance fees are paid.
Applications can be filed for national or regional patents. In the former case, the application is filed with the patent office of the relevant country and in the latter case the European Patent Office, for instance.
A further alternative is to file an international patent application (PCT application). On expiry of what is known at the international phase, this application may be processed by any designated national or regional office for the grant of national or regional patents.
The validity of a patent can be contested in an opposition procedure or in a nullity procedure; the validity of a utility model can be contested in a nullity procedure only.
Registration procedure, period of protection
Utility models are non-examined IP rights that are registered as they were filed. Third parties may request their examination and routinely do so if rights deriving from the utility model are asserted against them. Utility model only protect inventions directed to devices, not processes or methods.
They are renewed by multiannual intervals up to a maximum duration of 10 years.
A special feature of German utility models is that the prior art does not include publications
- made during 6 months prior to the utility model filing date, provided that
- the publications are based on the work of the applicant or its legal predecessor.
In such a case, you can still obtain a technical IP right in the form of a utility model even if you have already disclosed an invention to a third party.
We should be happy to offer you advice on individual issues, including both the assessment of novelty/inventive step and the preparation and compilation of application documents. We also can assist you in checking whether a product or a method falls within the scope of protection of a technical IP right. This assessment is the so-called “freedom to operate (FTO)” assessment.
Furthermore, we can assist you in special fields of the patent right, such as the protection of computer-related inventions.
Trademarks, domain names, the titles of works (including of computer programs), company names and commercial designations are examples of rights in distinctive signs. The latter serve to identify goods, services or companies.
Forms of trademarks
- Word-only marks
- They may be word-only marks, for instance, in which case a combination of letters is generally protected independently from its graphic representation. The letters may constitute an existing word, a slogan or even an imaginary term.
- Figurative marks
- Trademarks may also be figurative, in which case a graphic design is protected.
- Combined marks
- Word elements may also be combined with figurative elements (word/figurative trademark).
- 3D marks
- Trademarks may furthermore serve to protect three-dimensional shapes of goods or their packaging.
- Colour marks
- Colours and colour combinations can also be protected as trademarks.
- Other forms of trademarks
- Other distinctive sensory identifiers can also be considered as trademarks, such as smells or melodies.
Conditions of protection
A trademark is protected for defined goods or services.
Patent- and Trademark Offices do not check whether newly registered trademarks infringe existing third-party trademarks. For this reason, it is a good idea to perform a trademark search prior to filing for registration, as it may otherwise be impossible to continue to use a trademark after several years due to prior senior rights.
The capital that has meanwhile been invested in communication of the trademark will then be lost.
Individual trademarks must be able to distinguish the goods or services of an enterprise from those of other enterprises. Trademarks must furthermore be capable of graphic representation or must be explained in words.
Collective trademarks, quality trademarks
A collective trademark or a quality trademark allows to obtain trademark protection for one of the above-mentioned forms of signs in cases where the ability to distinguish the goods and services of an enterprise form those of other enterprises is not the main objective, but the respect of certain quality criteria or the origin of a certain region.
A trademark watch can be set up for proprietary trademarks as this enables timely discovery of whether third parties have applied for protection for identical or similar trademarks. This allows not only to watch the market, but also to act at an early moment against activities of competitors.
Period of protection
A trademark is registered for a period of 10 years and can be renewed for the same period as often as desired.
Enforcement of trademark rights
A trademark grants its holder the right to prohibit third parties from using identical or similar marks for identical or similar goods or services.
Obligation of use
Trademarks must be used in connection with the relevant goods and/or packaging of these goods within five years of registration in order to remain valid. Significant sales must also be generated with them.
German trademarks enjoy protection only in Germany.
Applications for registration of national, regional (e.g., European Union trademark (EU trademark), granting pan-EU protection) or international trademarks under the Agreement of Madrid may also be filed in order to obtain a more extensive protection.
Trademarks and internet
Trademark issues also arise often in connection with the internet. The main issues are legal ones relating to domain names that also enjoy trademark protection or, for instance, issues surrounding the permissibility of using doreign trademarks in search-engine keyword advertising.
Unregistered distinctive signs
No prior use for trademarks
In trademark law, there is no such thing as a right of prior use. Even if an unregistered sign has been in use for many years, such use must be abandoned if an application for registration of this sign is filed by a third party. It is therefore advisable to start filing for registration of a trademark well in advance of commencement of use thereof. This is the only way to achieve protection against subsequent trademark registration by a third party.
Distinctive signs protected due to their use
The rights in company names and commercial designations are acquired by use, but such use may be limited to a certain region. If the area of use is subsequently expanded, protection may possibly remain restricted to the original region.
To avoid this problem, trademark protection is advisable because trademark registration provides nationwide protection (and thus nationwide protection against conflicting commercial designations and company names, too).
A use as a trademark must be distinguished from a use as a company name or a commercial designation in order to check whether the use of a sign results in a protection.
Trademarks are distinctive signs that are used in connection with goods or services.
Company names or commercial designations refer to the activities of a certain company.
We are pleased to provide you with a more detailed consultation on these topics.
The outward appearance of products can be protected via registered designs.
Two-dimensional or flat-surface designs such as wallpapers or printed images on T-shirts can be registered for protection, as can be three-dimensional designs of objects as a whole.
No protection for technically determined characteristics
Design protection is available for all features of product's appearance, provided that they are not solely dictated by its technical function. Tire tread designs, for example, are eligible for protection. Although the main purpose of a tread is to fulfil technical requirements, they can nevertheless be satisfied in various ways. Design considerations may therefore also play a role in the development phase, when the decision in favour of a certain tire tread is taken.
Delimitation from copyright
In Germany, the aesthetic designs of consumer products enjoy copyright protection only in very rare and exceptional cases, the reason being that the standards applying to creativity an originality are much higher under copyright law than under design protection law. As a rule of thumb, it can be said that it is not enough for a product merely to reflect the taste of the time. Instead, it must be possible to show that the product will have a lasting effect within the context of the history of design. One relatively strong indicator of such an effect exists if the product is still associated with the name of the creator even after a long period. This applies, inter alia, to products designated jointly as “Bauhaus classics”, e.g. the “Mies van der Rohe chair”, the “Le Corbusier chaise longue”, the “Wagenfeld lamp WG 24” or other similarly important designs. What results at all events from the above is that copyright protection for consumer products is a rare exception.
Conditions of protection
The subject of a registered design must be new and must possess “individual character”. This means that it must not be directly obvious or occur automatically to a person skilled in the art of design.
The novelty requirement makes it advisable to file a registered design application prior to the date of first public disclosure. If the design is seen by others, who then apply for design protection themselves, it might be difficult to prove who designed and disclosed first. If, however, you disclose a design that you do not consider especially important but subsequently decide to apply for design protection as a result of the way in which third parties have reacted to the design, you can still take this step up to 12 months after the date of first public disclosure (so-called “grace period for own disclosures”, “Neuheitsschonfrist für eigene Veröffentlichungen”).
Design protection can be obtained in the form of a national, regional (e.g., registered Community design, affording protection throughout the EU) and International Registered designs (under the agreement of The Hague).
Up to 100 different designs can be combined in a multiple application, making it much cheaper to register several designs.
Period of protection
The maximum protection period is 25 years. An extension fee is charged every five years.
Design protection without registration
Another special feature characterizes community design protection: the protection of “unregistered Community designs”. The aesthetic features of designs are protected from copying throughout the territory of the European Union for a period of three years from the date upon which the designs were first made available to the public within the territory of the EU. There is, however, no grace period for unregistered Community designs. Protection as an unregistered Community design will no longer be available in the event of prior disclosure of the design outside of the European Union. If a product is put on the market prior to registered design application, the protection afforded by the “unregistered Community design” is often useful in cases where imitator products appear on the market shortly after the product’s launch.
Please contact us for a more detailed consultation.
Our contract consulting services focus on license agreements, sales contracts concerning intellectual property rights and know-how, confidentiality agreements, contracts concerning development cooperation and contracts between joint applicants.
License agreements may grant a simple or an exclusive right to use intellectual property or know-how. Although freedom of contract applies to license agreements as a basic principle, a large number of clauses are problematic or impermissible from an antitrust perspective. There are also warranty and liability issues that require clarification, making explicit contractual arrangements advisable in certain cases. The statutory provisions are sometimes ambiguous, which may lead to protracted litigation, and furthermore not always in line with the contracting parties’ intentions.
Sales contracts concerning intellectual property rights
Intellectual property rights may also be sold, in which cases care must be taken to ensure that the contract of sale provides for transfer of all rights in the intellectual property and that the vendor grants the purchaser the relevant intellectual property warranties.
We are at your disposal for further questions concerning these topics.
The German Legal Provisions on employee inventions impose a duty on employees to report inventions to their employers as service inventions. When making the report, they must satisfy various formal requirements. Employers can then decide whether to release the relevant invention rights to the employee or not.
If the invention rights are released to them, employees may exploit the inventions themselves. Otherwise, the rights lie with their employers. In the latter case, the employees merely enjoy the right to compensation for use of their invention by their employers. This right to compensation is not covered by an employee’s normal wage/salary. Instead, compensation must be calculated on the basis of the scope of the invention.
Assessment of the level of compensation
Assessment of the level of compensation is governed by compensation directives and a large body of case law. Various assessment parameters come into play, in particular the problem addressed by the invention, the solution found and the employee’s position in the company. Once the employee an employer have agreed on certain values with respect to these parameters, a compensation agreement can be concluded. All that needs to be done after that is to enter the annual sales figures generated with the invention in the relevant mathematical formula in order to calculate the amount of compensation.
We offer you our services concerning the handling of employee inventions.