Frequently asked questions on industrial property rights
The information provided below is of general nature and not a legally binding advice. In order to obtain legally binding advice, one should contact a patent attorney or attorney at law. e-IPconsult tries to provide information of high quality. However, e-IPconsult cannot guarantee the correctness and completeness of the provided information. Furthermore, e-IPconsult is not responsible for damages caused by the provided information.
What is meant by „industrial property rights“?
Intellectual property protection deals with the legal protection of intellectual property. This includes in particular the so-called industrial property rights such as
– patents and utility models for the protection of technical inventions,
– registered designs (design patents) for the protection of designs (objects),
– typography protection for fonts,
– topography protection for semiconductor topographies,
– plant variety protection for plant varieties,
– trademarks for the protection of marks for products and services, and
– copyrights for computer programs and databases.
In Germany, the legal sources of intellectual property protection are the
Patent Act (PatG),
Utility Model Act (GebrMG),
Design Act (DesignG),
Character Act (SchriftzG),
Semiconductor Protection Act (HSchG),
Plant Variety Protection Act (SSchG), Trademark
Act (MarkenG) and the Act
on Copyright and Related Rights (UrhG).
There are also several international treaties on intellectual property such as the European Patent Convention (EPC) for European patents, the Patent Cooperation Treaty (PCT) for international patent applications, EC regulations for European trademarks and designs as well as European plant variety protection, the Hague Model Convention (HMA) for internationally registered designs, and the Madrid Agreement (MMA) and the Protocol to the MMA (PMMA) for internationally registered trademarks.
Patent attorneys and specialized attorneys at law provide expert advice in intellectual property law.
What is a patent or utility model?
Like a utility model, a patent is an exclusive right granted by the state which gives its owner a temporary monopoly on a technical invention. For example, the owner may prohibit others from using the protected invention during the term of the patent or utility model. He can also license or sell his patent or utility model.
What can be protected by patents and utility models?
Patents and utility models protect inventions in all technical fields. For example, an electronic gearshift, a mechanical transmission or a bicycle gearshift can be protected. Inventions in non-technical fields cannot be protected by a patent or a utility model. The German Patent and Utility Model Act, for example, mentions mere discoveries, aesthetic creations and mathematical methods as non-technical inventions. The distinction between a technical and a non-technical invention can be difficult in individual cases. In case of doubt, however, every inventor should first of all assume a technical invention and ask an expert patent attorney for advice.
Can software be protected by a patent or a utility model?
Computer programs (software) are patentable if they are technical inventions. So far, it has been controversial, especially in Germany and Europe, whether software is a technical invention. Recently, however, it has become more and more common to classify software as a technical invention when it solves a technical problem.
What are the benefits of a patent or utility model?
As mentioned above, a patent or utility model confers an exclusive right on its owner. The monopoly granted by a patent or utility model can be economically very valuable. For example, for many years the copier patents secured the economic supremacy of its owner, the Xerox company, in this technical field. Today, patents and utility models are used by industry, sometimes very aggressively, as legal means in economic competition in order to obtain a better market position vis-à-vis the competition. In the USA, patents are called business tools which are used in the market against competitors in order to gain a competitive advantage.
Property rights such as patents and utility models represent an essential asset share, especially for innovative technical companies. For example, pure development and research laboratories usually only possess their development results as assets, which can be taken over by anyone else without legal protection. Patents and utility models are an effective means of protecting intellectual property and thus a very important, if not the most important, asset of an innovative company in order to prevent competitors from being able to participate free of charge in cost-intensive development and research activities of an enterprise. In addition, these intellectual property rights also strengthen the negotiating position in the event of a sale of technology or parts of a company. Every buyer of a development or research company wants to take over its intellectual capital, primarily technical know-how and intellectual property. Without intellectual property rights, however, intellectual property is freely available to the general public. If technical personnel leave the company after a company sale, the competition can profitably exploit the unprotected intellectual property with the help of this personnel at any time. Patent or utility model protection can therefore prevent the competition from using the protected technical inventions.
Patents as well as utility models also cause an advertising effect for their owner. The patent or utility model owner thus documents his technical innovation performance. Large companies even advertise with the number of patent applications per year to document their technical performance.
How do patents differ from utility models?
A patent has the following advantages over a utility model:
In contrast to a utility model, a patent is subject to a substantive examination for patentability. In contrast to a patent, a utility model can therefore be a fictitious right, especially if its owner does not know exactly the state of the art.
Patents can grant protection for up to 20 years, while utility models have a shorter maximum term of protection of 10 years.
No process can be protected by a utility model, regardless of whether it is a working process or a manufacturing process.
But utility models also have advantages over patents:
There is a grace period for utility models, but not for patents. This means that an inventor can still apply for utility model protection within 6 months of the publication of his invention by himself without having to fear that his own publication of the invention conflicts with the prior art.
In the case of utility models, the state of the art is more narrowly defined than in the case of patents: the state of the art only includes written prior publications and domestic obvious prior uses. Oral or other prior publications and obvious prior uses abroad are state of the art for patents, but not for utility models. Thus, if a patent can no longer be granted for an invention due to an obvious prior use abroad, protection by a utility model is still possible.
A utility model is entered in the utility model register after a purely formal examination. Registration usually takes place a few months after the utility model application has been filed with the Patent Office. By contrast, in many cases it takes several years before the official examination procedure of a patent application is completed and a patent is granted. Utility model protection can therefore be obtained much more quickly than patent protection.
Since a utility model is not subject to a substantive examination by the patent office but only to a formal examination, it is cheaper than a patent.
Whether patent or utility model protection, or even both, is the best protection for a product in parallel, can only be decided in individual cases after weighing all the advantages and disadvantages of the two types of property right. In practice, the diversion of a utility model from a pending patent application has proved to be useful, for example in order to obtain an effective protective right against an infringer as
quickly as possible.
What is a trademark?
A trademark, often also referred to as trademark protection, is similar to a patent or utility model, a state granted exclusive right for a sign for certain goods or services or a business establishment. Put simply, a trade mark is the name given to certain goods and/or services of an undertaking.
Why trademark protection?
A trademark is an indication of the origin of a certain company. Goods or services designated by a trade mark should be distinguishable from the goods or services of other undertakings. The brand also has a guarantee and quality function. A consumer trusts the goods or services designated by the mark because the mark guarantees him a certain quality and origin.
What is the benefit of trademark protection?
A trade mark proprietor may prohibit others from using the sign protected by the trade mark or similar signs for the duration of the trade mark right. Like patents and utility models, trademarks are tradable rights, i.e. a trademark right can be licensed or sold.
How is trademark protection created?
According to the German Trademark Act, there are two types of trademark protection in particular:
The registered trademark is created by registration of a trademark right in the central trademark register at the German Patent and Trademark Office in Munich. The registration is made on the basis of an application for trademark protection of a sign.
Trademark protection may also arise through the use of a sign in the course of trade if the sign has acquired a reputation within the relevant class of persons, for example among purchasers of goods bearing the sign.
Why registering a trademark?
Although the registration of a trademark entails costs, it has significant advantages over trademark protection through use:
Initially, trademark protection arises through use only if the trade mark is well known within the relevant public. This means that the sign used is protected as a trade mark only if a predominant proportion of the relevant or participating public, for example the end user of goods marked with the sign, perceives the sign as an indication of the origin of an undertaking. Proof of the reputation of a trade mark must normally be furnished by the party invoking the protection of the trade mark through use. This can cause very high costs in a dispute, as in most cases an expensive traffic survey has to be carried out among the traffic circles involved.
In the case of a registered trademark, it is not necessary to prove that the trademark is well known to the public, since it has undergone an official examination as to its protectability as a trademark.
Furthermore, trademark protection through use may be regionally limited, so that, for example, a trademark created through use in Hamburg cannot prohibit the use of the same trademark for the same goods in Hesse or Bavaria.
A registered trademark is generally protected in the entire territory of the country for which it was registered, for example Germany or the European Union.
When is a trade mark registered in the trade mark register?
Before a trade mark is registered in the trade mark register, the sign for which registration is sought must fulfil certain requirements under the Trade Mark Law.
For example, the sign for which registration is sought must not be descriptive of the goods or services claimed. For example, trademark protection cannot be obtained for the word mark „Furniture-online“ for all types of furniture, including kitchens, since this is merely a general factual reference to the online sale of furniture, which may not be monopolised by a trademark right.
Furthermore, the sign for which protection is sought must be distinctive. In other words, a trade mark must be perceived by the relevant public as an indication of the origin of the goods or services identified by that mark in relation to an undertaking. As a general rule, purely descriptive terms are devoid of distinctive character, such as the sign ‚The Chair Furniture Design‘ for the furniture product, since such terms are not perceived by the relevant public as an indication of origin.
What is a design (registered design)?
A design or registered design in the sense of the Design Act protects products that affect the sense of colour and form, i.e. the design of a product. Like a trademark, a patent or a utility model, a design is a state granted exclusive right for a two- or three-dimensional design product, for example a specially designed chair, a lamp, a bag or textiles.
How to obtain design protection?
In order to obtain national design protection, a design application must be filed with the German Patent and Trademark Office. For EU-wide design protection, a design application must be filed with the Intellectual Property Office of the European Union (EUIPO) in Alicante, Spain. International design protection under the Hague Convention can be obtained by filing a design application with the World Intellectual Property Organization (WIPO) in Geneva.
A design application is only subject to a formal examination. If the application is without defects, the competent office will enter a design in a design register. The design register can be viewed by any third party.
Since 6 March 2002, design protection in the EU has also been possible through publication of the design without official registration. However, the term of protection of an unregistered design, at 3 years, is much shorter than the term of protection of a registered design, which can be extended up to 20 or even 25 years.
Under what conditions can a design product be protected by a design?
The design product to be protected must be registered for design at the patent office or published in the EU. The protective effect of the design is created with the registration.
The registered design is eligible for protection if the underlying product is new and has individual character. Novelty exists if no identical design has been disclosed before the filing date of the design. A design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on that user by another design disclosed before the date of filing. When assessing the individual character, the degree of design freedom of the designer is taken into account in the development of the design.
How do I know whether my design product meets the requirements for design protection?
The Patent Office examines only formal requirements for protection of a design application, but not substantive ones, i.e. novelty and individual character. The substantive requirements for protection are only examined in a legal dispute about a design infringement. It is the documents relating to the design application, in particular the images of the protected product, which are then most important. If the application was not filed carefully, the protection of the design may prove worthless in infringement proceedings.
The design is therefore similar to the utility model: what it is worth is usually only revealed when it is used, i.e. in an infringement dispute.
What is a patent attorney?
A patent attorney usually is a scientist or engineer with additional legal training in intellectual property law. He is a liberal profession and an independent organ of the administration of justice like a lawyer. In Germany, the Patent Attorney Regulations (PAO) regulate the profession of patent attorneys.
What does a patent attorney do?
Pursuant to Section 3 (2) No. 1 of the Patent Attorney Regulations (PAO), a patent attorney advises and represents a client in matters of obtaining, maintaining, defending and challenging a patent, a supplementary protection certificate, a utility model, the protection of a semiconductor topography, a trademark or another sign protected under the Trademark Act (industrial property rights) or a plant variety right.
The patent attorney may represent his clients before the German Patent and Trademark Office, the Federal Patent Court, the Federal Plant Variety Office and in certain cases before the Federal Supreme Court. Most of the German patent attorneys are also admitted before the Intellectual Property Office of the European Union EUIPO in Alicante, Spain, and can represent their clients in matters relating to EU-wide trademark and design protection. If a patent attorney has passed the European Qualifying Examination for Professional Representatives before the European Patent Office, he may also represent clients before the European Patent Office in matters relating to the obtaining, maintenance and challenge of European patents. A professional representative before the European Patent Office may also call himself a „European Patent Attorney“.
However, the patent attorney’s advisory and representation powers are not limited to industrial property rights. Rather, the patent attorney may also advise others and represent them vis-à-vis third parties in matters for which a question is of importance which concerns an industrial property right, a design, a data processing program, an unprotected invention or other service enriching the technology, a plant variety right or an unprotected service enriching the plant production in the field of plant breeding or for which a legal question directly connected with such a question is of importance, without an industrial property right having to exist (Sec. 3 (3) No. 1 PAO).
How to become a patent attorney?
The training for patent attorneys in Germany is regulated by § 7 PAO. According to this, an applicant for the patent attorney’s profession must have been trained for at least 34 months in Germany in the field of industrial property rights, namely at least 26 months with a patent attorney or a patent agent in the patent department of a company, two months with the patent office and six months with the patent court. Training at a patent litigation court is credited against training at a patent attorney or patent agent for up to two months. In addition, the applicant must complete the training with a patent attorney or patent agent by studying general law at a university. This course should cover those areas of law which a patent attorney or patent agent must know in addition to the field of industrial property law; it must impart knowledge of the fundamentals of contract law, employment contract law, commercial law, judicial procedural law, constitutional law, general administrative law and European law. The course of study must be completed with an examination.
To become a „European Patent Attorney“ or a professional representative before the European Patent Office, an applicant must first obtain an appropriate qualification in the scientific or technical field, for example by studying engineering or science at a scientific university. This is followed by training over a period of three to six years (depending on his scientific or technical qualifications) under the supervision of an already accredited European patent attorney to acquire extensive practical knowledge of European patent law. The applicant may then take the European qualifying examination for professional representatives before the European Patent Office. After passing this examination, the applicant may be admitted as a representative before the European Patent Office.