PATENT AND TRADEMARK PROTECTION

PATENTS

In general, patents are granted for inventions in all fields of technology, provided that they are new, involve an inventive step, have a technical character and are industrially applicable.
A patent is a technical protective right that is examined in particular for novelty and inventive step.

To obtain a patent, an application must first be submitted to the relevant office. If protection is to be granted in the Federal Republic of Germany, an application to the German Patent and Trade Mark Office (DPMA) in Munich is sufficient. The scope of the patent is determined during the examination procedure.

To obtain protection outside of Germany, for example to be able to take action against the manufacture and distribution of the products in other countries, it is possible to apply for a European patent at the European Patent Office (EPO) in Munich. After a successful examination procedure, protection can be obtained for a large number of European countries (and other extension states). Some non-EU countries such as Switzerland and Turkey are also party to the EPC. While the procedure up to the granting of the patent is carried out uniformly before the European Patent Office, the European patent (“bundle patent”) can be nationalized in the desired countries after granting. In these countries, the patent then has the same effect as a national patent.

Recently, a European patent with unitary effect (also known as an EU patent) has been available as an option. Once granted, this patent has unitary validity in large parts of the European Union. Thus, after a corresponding European patent grant, it is possible to choose both an EU patent and further national parts of countries that are not members of the EU or the EU Patent Agreement (for example: Switzerland, Turkey, Great Britain, Spain).

To obtain a patent in the US, China or numerous other countries, an international patent application (PCT application) can be submitted in addition to direct national applications. The PCT procedure consists of an international phase in which the PCT application is examined for novelty and inventive step so that the applicant can evaluate the commented search result to decide whether to continue the current PCT application. After a period of usually 30 months from the priority date of the first filing, the so-called national and regional phases (i.e. the follow-up in the desired countries (e.g. USA) and regions (e.g. Europe) are initiated. In these subsequent examination procedures, the relevant patent offices examine the corresponding patent application, taking into account the search (including comments) carried out in the international phase.

Advantages of a patent application

A patent or a successful patent application offers numerous advantages:

• As a rule, and if desired, a term of protection of no less than 20 years!
• The patent can be used for advertising purposes (for example, by referring to the existing protective right).
• A patent offers a decisive competitive advantage, as the monopoly right can create a strong market position. This often also allows you to charge higher prices for your products, as the patented developments are protected from imitators.
• If a third party infringes a patent, they can be required to refrain from future infringements, to pay damages and to disclose sales figures, origin and distribution channels.
• A patent can increase the value of your company.
• It is possible to license or sell a patent.
   

Brief description of important aspects of our work in the field of patents:

• Drafting and filing of national, regional and international patents
• Detailed analysis of examination reports and replies to these examination reports for further defense and prosecution before the individual patent offices
• Opposition proceedings
• Maintaining patents and patent applications by means of monitoring and payment of the corresponding renewal fees
• Updating the relevant patent registers in particular in the event of a change of ownership or location
   

Extrajudicial and judicial representation (in particular enforcement of and defense against claims) by patent attorneys and external lawyers carefully selected by us from our international network:

• Authorization requests to competitors
• Written warnings for patent infringement and preparation of cease-and-desist declarations
• Preliminary injunctions for patent infringement
• Patent infringement lawsuits 
• Patent nullity actions
   

General services:

• Patent advice and drafting of patent applications
• Prior art searches (exclusively through highly specialized search institutes) in advance of a patent application or in preparation for opposition/nullity proceedings
• Searches for intellectual property rights to assess possible infringements (for planned or ongoing product developments or for freedom-to-operate)
• Infringement opinions
• Patent monitoring of competitors and relevant technical fields
• Patent license agreements

TRADEMARKS

For example, the names of companies (firm), logos or product names can be registered as trademarks, provided that these are suitable for distinguishing the goods and/or services of one company from those of other companies.

Before registering a trademark, the relevant office checks whether there are any so-called absolute grounds for refusal. Among other things, it is determined whether the trademark is merely descriptive or whether there is a need to keep it free.

However, it is not examined whether there are other identical or similar trademarks (relative grounds for refusal). Nevertheless, an owner of a trademark or business designation with an older priority may file an objection to the registration within three months of the date of publication of the trademark registration.

The main types of trademark are word marks, device marks and composite marks. Word marks consist of words, numbers or letters. By contrast, graphic designs can be protected as device marks. Combinations of word and device elements are referred to as composite marks.

A trademark is always registered for certain classes of goods or services according to an international classification. When selecting the right classes for the goods and services and, in particular, the wording within these classes, the specifics of the respective trademark law must be taken into account in order to avoid mistakes and unnecessary objections. This requires a high level of experience and trademark knowledge.

As a rule, trademark protection is achieved by filing a trademark application with the relevant office. By registering a trademark with the German Patent and Trademark Office (DPMA) in Munich, protection can be obtained in the territory of the Federal Republic of Germany.

In addition, it is possible to apply for a European Union trademark at the European Union Intellectual Property Office (EUIPO) in Alicante to obtain protection in all countries of the European Union.
Furthermore, an application for international registration can be filed with the World Intellectual Property Organization (WIPO/OMPI) in Geneva in order to obtain trademark protection for numerous economically interesting countries (e.g. USA, China, Japan or India) in a relatively simple manner by means of an international trademark.

Compared to other protective rights such as patents or designs, a trademark offers the great advantage that its term of protection is unlimited and that it can be renewed as often as desired. Initially, the registration is usually for ten years. Subsequently, it can be renewed for a further ten years at any time, subject to a fee. However, in many countries, unlike a patent, for example, the trademark must be used within a certain period of time.
 

A successful trademark registration offers numerous advantages:

Trademarks are relatively inexpensive to register and maintain (extend).

Since a trademark is usually entered in the register relatively quickly, protection can be obtained within a short period of time.

Trademark protection for an unlimited period of time is possible.

Various forms of trademarks make it possible to protect different elements of logos (or even products).

A trademark can be used for advertising purposes (for example, with the symbol ® after the trademark).

In the event of trademark infringement by third parties, they can be required, for example, to refrain from future infringements, to pay damages and to disclose sales figures, origin and distribution channels.

Furthermore, there may be a claim for destruction of the unlawfully marked goods.

For example, you can take action against third parties by promptly filing your own trademark application if they themselves register the sign you use as a trademark. Otherwise, a competitor could, under certain circumstances, even prohibit you from continuing to use your sign.

Your own trademarks can also be licensed to third parties.
 

Brief description of important aspects of our trademark work:

• Preliminary analysis of the respective trademark representation and creation of a dedicated list of goods and services to define what is to be protected by the trademark
• Registering national, regional and international trademarks (e.g. German trademark at the German Patent and Trademark Office in Munich, European Union trademark at the European Union Intellectual Property Office in Alicante, international trademark / IR trademark at WIPO in Geneva)
• Opposition proceedings
• Cancellation proceedings (e.g. due to non-use)
• Trademark renewals
• Maintaining trademarks by means of monitoring and paying the corresponding renewal fees
• Updating the corresponding trademark registers in the event of a change of ownership or location
   

Extrajudicial and judicial representation (in particular enforcement of and defense against claims) by patent attorneys and external attorneys carefully selected by us from our international network:

• Authorization requests to competitors
• Written warnings for trademark infringement and preparation of cease-and-desist declarations
• Preliminary injunctions for trademark infringement
• Trademark infringement lawsuits 
• Trademark cancellation proceedings and lawsuits
   

General services:

• Trademark advice and drafting of trademark applications
• Development of trademark portfolios
• Search for older, potentially relevant third-party trademarks (exclusively through highly specialized research institutes) in advance of a trademark application
• Search for intellectual property rights to assess possible infringements (for planned or ongoing trademark developments or for freedom-to-operate)
• Infringement opinion
• Trademark monitoring of competitors and relevant areas
• Trademark license agreements
• demarcation agreements for the extrajudicial settlement of potential trademark conflicts

DESIGNS / DESIGN PATENTS

Design law (DesignG) relates to aesthetic creations, i.e. the shape and/or color scheme of products. To be eligible for protection, a design must be new and have individual character.
As a rule, a design is an unexamined protective right, i.e. it is not examined whether the design is new and has individual character. Possible earlier designs only become relevant if the design is challenged (in the course of cancellation proceedings).

In addition to a German design, it is possible to register a Community design with the European Union Intellectual Property Office to obtain protection in the territory of the European Union. A Community design has uniform effect in all EU member states.

To obtain protection in countries outside the European Union, it is possible to file an international design application (international design) via the Hague Agreement Concerning the International Registration of Industrial Designs with the World Intellectual Property Organization (WIPO).

A successful design application offers numerous advantages:

• A design can be used to protect the non-technical features of your product that are not covered by patent or utility model law.
• The term of protection for German designs is relatively long at 25 years.
• A design offers a decisive competitive advantage, as the monopoly right can create a strong market position.
• In the event of design infringement by third parties, the latter may be required, for example, to refrain from future infringements, to pay damages and to disclose sales figures, origin and distribution channels. Furthermore, there may be a claim for destruction of the unlawfully marked goods.
• Licensing or sale of a design.
   

Brief description of important aspects of our activities in the field of designs/registered designs:

• Registration of national, regional and international designs (e.g. German Design, Community Design, International Design)
• Invalidity proceedings
• Renewals
• Register changes
   

Extrajudicial and judicial representation (enforcement and defense of claims) by patent attorneys with carefully selected attorneys from our international network:

• Authorization inquiries
• Warnings for design infringement and cease and desist declarations
• Interim injunctions due to design infringement
• Lawsuits due to design infringement
• Cancellation actions
   

General services:

• Design consulting and design development
• Design searches (exclusively carried out by specialized service providers) for earlier rights of third parties or for prior art
• Design license agreements

MEDIUM-SIZED COMPANIES

We are only too familiar with the special requirements that medium-sized companies have in their competitive environment, so that non-forensic (i.e. out-of-court) advice in particular takes up a great deal of our time, since in many cases these companies often strive for practical and “lean” solutions in order to concentrate on their core business. In such cases, it is often advantageous to have the practice-relevant essential individual aspects of an important invention complex protected equally in different areas of protection, in order to be able to act more flexibly in such cases (often only individual partial aspects are used for extra-judicial settlements/contractual solutions in order to avoid unnecessarily restricting oneself and to leave out).

We advise in particular small and medium-sized companies in the field of intellectual property rights, whereby company owners and development managers are often our points of contact in order to provide active and valuable assistance with a wide range of issues.

• Contact person for general and specific questions in the diverse field of intellectual property
• Development of (worldwide) intellectual property strategies (selection of suitable IP rights and application strategies, IP strategy advice, IP consulting) as well as assistance in implementing the respective “IP strategy”
• Support in building an IP portfolio and in optimizing worldwide property right portfolios
• Support for new developments, from identifying protection options to legal protection (e.g. support for inventors and, if necessary, coordination with external patent attorneys)
• Management of property right portfolios (patents, utility models, trademarks, designs, domains, etc.)
• Intellectual property right searches (e.g. patent searches, trademark searches)
• Preparation of infringement opinions
• Monitoring of intellectual property rights of competitors
• Support in the evaluation of intellectual property rights
• Support in the financial exploitation of intellectual property rights (e.g. sale or licensing of intellectual property rights)