If you want to file a patent for an invention, important information relating to the invention it must not have been published or, exhibited, and the invention must not have been sold previously. In many industrial countries, a patent application is subject to an objective investigation, during which a search is carried out for prior art is published before the filing date. A patent application is published one-and-a-half years after the filing date or priority date. Annual fees must be paid to preserve the patent application and the patent. Within one year of the first filing date, patent applications in another state, a European patent application or an international patent application can be submitted with a ‘priority claim’ back to the filing date of the earlier applications for the invention. Before a patent is granted, third party objections against patentability of an invention described in a patent application may be filed by any interested party. After the patent has been granted, an opposition procedure is typically available within a period of objection. Revocation proceedings are also available post-grant in order to revoke problematic, third-party patent.

With a utility patent, only technical products, devices and materials can be protected; it is not possible to protect procedures. The utility patent is only examined by the German Patent and Trade Mark Office in relation to formal requirements. In comparison to a standard patent, no examination is carried out concerning inventive step. For this reason, a utility patent is considered the “little brother” of a standard patent, and the fastest route to protect technical innovations. However, the period of protection only lasts ten years. In addition, in the case of infringement proceedings for a utility patent, a series of particularities take effect, which must be considered tactically.

A visually memorable product or striking symbol can be important distinguishing features in the market today, making them part of a successful sales concept. Design patents protect such designs. In order for a design to be protected, by a design patent, the design must be new and distinctive. A design is distinctive if the overall impression, to an informed member of the public, is different from the corresponding overall impression of designs which have been published before the filing date. When evaluating distinctiveness, the degree of design freedom of the designer when developing the design is taken into consideration. A 25-year term of protection for the entire European Union can be obtained with just one registration (using the Community design system).

Registered trademarks are protected in respect of specific goods and services. Beyond a trade mark, unregistered symbols, images and work titles can also be protected as part of trademark laws, which prevent improper exploitation and any damages. As a result, words, images and slogans can become the asset of the copyright holder if the visible or audible appearance is combined with the good reputation of the company and its products.

First and foremost, the invention is owned by the inventor(s). However, if the employee is subject to an employment relationship in Germany, he/she must provide a separate invention disclosure in text format to the employer. The employer can make a claim to the invention or release it to the inventor. After a claim is made, a patent application must normally be submitted with effect for Germany. If the invention is released to the employee, the employee can file a patent application or utility patent application for the invention.

If no out-of-court agreement about an allegation of patent infringement or the payment of a licence can be achieved, a patent infringement suit can be filed with a relevant district court. However, each specific case must be investigated as to whether an appropriate contract, for example a knowledge or licence agreement, is more practical. Patents have come to supersede the significance of shares in companies. For this reason, the dividends achieved with patents, which is known as licence revenue, can contribute not insignificantly to the economic success of a company.

As well as compensation, the holder of an opposing patent, utility patent or design patent can also demand that the sale of a product or provided service is ceased. A freedom-to-operate analysis avoids any conflicts about trademark rights with competitors after the product introduction. Such trademark right conflicts contain considerable cost risks and can unsettle customers and potential customers. A granted patent can only be eliminated by means of an opposition or revocation suit, which can take several years and be very expensive.

A violation always raises fundamental questions: is it advisable to contest the violation in court from a business point of view? What could the procedure look like? What obstacles are to be expected? Herrmann Patentanwälte will also provide you with help and advice if you are the defendant in an infringement case. With technical and legal expertise, and taking into account the economic consequences, we will discuss with you the correct strategy to keep the time and monetary costs manageable. If necessary, we can also enforce your rights internationally with our network of experienced partner law firms.

Before any legal conflict, it is first necessary to analyse the situation precisely: what are the chances of success? Are any more relevant if property rights expected to be granted. In this and, of course, in the case of defending an intellectual property right, you will benefit from the interdisciplinary focus of our law firm, in which both technical and legal expertise are consolidated. Before the beginning of an objection process, a nullity suit or cancellation action against a property right, it is necessary to recognise any possible weak points of the patent in suit. By carrying out a patent search, further information about the state-of-the-art can be collected, which can be used to invalidate an intellectual property right.

Intangible assets, known as intellectual property (IP), enjoy a high level of importance in our knowledge and information society. As part of an IP portfolio analysis tailored to your company, our specialists will show you how commercial property rights can consolidate a position on the market, by making access to new capital easier and incorporating it profitably into the company’s own result.

In terms of the value of intangible assets, very specific questions arise during a transaction. As well as financial aspects of the company, the question may also concern economic and legal aspects: for example, will the existing property rights and possible licence contracts create a short-term or long-term competitive advantage? Or can the company act freely in the disputable business sector? And last but not least is the question of the strength of IP rights, i.e.: Can the registered patents be maintained and enforced if the occasion arises?

With a substantiated expert report, you will find a stable basis for decision-making for your IP rights strategy and protection of your innovative edge in an early development stage. In relation to issues of violation, the expert report provides you with a solid basis for evaluating the risks and making the decision for a legal conflict or an amicable settlement.