Our areas of law

The patent protects technical inventions. These can be, for example, products, devices, substances, processes, applications, software programmes and other aspects. After filing the application for a patent, the patent application initially remains secret and is only published 18 months after filing.It is renewed annually in most countries up to a maximum term of 20 years from the filing of the patent application.  

The patent is a regional property right, i.e. it must be applied for separately for each country or each group of countries (e.g. the European EP patent) for which patent protection is sought. There is no patent protection in countries in which no patent application is filed. The decision as to whether a patent should take effect in countries other than the first country of filing must be made within the priority year, i.e. within 12 months of filing the first patent application. In principle, there are two ways of doing this: direct nationalisation in selected countries or the multinational PCT application procedure, which allows the decision on the individual countries to be postponed for a further 18 months.

A patent application document comprises the patent claims, the description and the drawings. The patent claims define the scope of protection of a patent. A patent claim is deemed to be infringed if all the features of the patent claim are found in the infringing subject matter or the infringing process. The description and drawings serve to explain and support the patent claims. The wording of a patent specification must be very precise so that the desired scope of protection can be achieved. Small errors can have a major impact here and may jeopardise the entire protection of a patent.

After the patent application has been filed, it undergoes several examinations. In the formalities examination, the completeness of the documents submitted and their conformity with the respective formal requirements are checked. These can vary from country to country.

Once the formal examination has been completed, it is checked whether the patent claims of the patent application fulfil the substantive requirements. These are novelty, inventive step, technicality and industrial applicability.

The patent claims must fulfil four requirements. These are novelty, inventive step, technicality and industrial applicability.

Patent or utility model claims are subject to the requirement of novelty. An invention is considered "new" if it is not part of the state of the art. The state of the art comprises all knowledge which has been made available to the public by written or oral description, by use or in any other way before the date relevant for the priority of the application. This definition includes all knowledge that was available to the public worldwide in any conceivable way before the application for the invention in question was filed. This may be the case through written or oral descriptions, use or exhibition. Written descriptions include, for example, books, journals and other patents. Oral use includes, for example, a lecture at a conference.

In German patent law, the relevant date for the seniority of the application is the filing date. In some countries, the seniority of the prior art differs from the filing date. This is the case in the USA and Japan, for example. Here there is a grace period of 12 and 6 months respectively.

The term " state of the art" does not, as the word " state of the art " might suggest, embody the current state of a technical field, but rather its scope with all the things and methods that have arisen, including everything that has long since become technically obsolete or was ineffective from the outset. This state of the art – or prior art - includes everything that became public somewhere and somehow in the world at some point before the date of the invention for the patent or utility model that is decisive for the seniority of the application.

In contrast to German patents, German utility models have a grace period. This is also handled differently in many countries. For example, there is a grace period in the USA, Japan, China and many other countries. However, there is no standardised international regulation here. The grace period regulations in the various countries differ in terms of the time before the patent application is filed during which a publication is not taken into account (sometimes 6 months, sometimes 12 months), the source of the state of the art that is taken into account and the type of state of the art that is not taken into account.

The state of the art for assessing novelty or inventive step does not include publications that were published only 6 months before the filing date. The grace period of the utility model is therefore an important advantage of the utility model over the patent.

The devices and processes protected by the claims of the patent or utility model must also have an inventive step over the prior art so that they can be granted patentability and the patent can be granted. An inventive step is present, for example, if it is not obvious to the average person skilled in the art from the prior art. The patent or utility model claims are therefore compared with the prior art from the perspective of a person skilled in the art and examined for non-obvious differences.

The average person skilled in the art is not a real person, but a fictitious person to whom the average skills of, for example, a university graduate in the respective field are attributed. An invention is considered non-obvious if the average person skilled in the art cannot be expected to have come up with the invention on his own and with reasonable effort, based on the state of the art.

In contrast to novelty, inventive step is not clearly defined and is therefore repeatedly the subject of technical discussions between patent attorneys and examiners during examination proceedings.

Patents and utility models are only granted for technical inventions. A claimed invention must therefore have a "technical character" or - to put it more precisely - relate to a "teaching for technical action" which "is to be understood as being outside of human intellectual activity for directly bringing about a causally foreseeable result". This means that a patent is only granted for specific technical means that solve a specific technical problem.

The requirement of technicality for patents and utility models arises from the purpose of patent and utility model protection, namely the promotion of technical progress.

Excluded from patent protection are:

• Discoveries as well as scientific theories and mathematical methods;
• plans, rules and methods for mental activities, for games or for business activities as well as programmes for data processing systems; or
• the reproduction of information.

The characteristic of technicality plays a major role in software protection, for example. The common opinion that "software is not patentable" is fundamentally wrong. Computer-implemented inventions can indeed be patented if they have a technical character. In the case of software that exhibits an inventive step with a technical character that goes beyond purely technical programming activities, the inventive step can be realised by the software. A programmed software package is already protected by copyright with regard to the programme code (source code etc.).  

According to the legal requirement, the invention must also be applicable in any industrial field - including agriculture (Section 5 (1) PatG, Art. 57 EPC). According to the patent law tradition still alive today, particularly in the Romance countries (FR, BE, ES), inventions that do not work (e.g. a perpetual motion machine), are not yet technically realisable (e.g. beaming) or whose implementation does not bring any material products onto the market are excluded from patenting.

However, it is sufficient that a patent or utility model object can be manufactured or otherwise utilised in a commercial enterprise. Therefore, for example, teaching aids for universities and schools or devices for liturgical use are also patentable. However, methods for surgical and therapeutic treatment and diagnosis of the human or animal body are not considered to be industrially applicable (Section 5 (2) PatG, Art. 52 (4) sentence 1 EPC 1973); they may not be patented pursuant to Section 2a (1) no. 2 PatG. However, this does not apply to products, in particular substances or mixtures of substances, for use in such a process. Therefore, for example, an artificial hip joint is patentable, whereas hip surgery is not.

To make it easier to obtain international patent protection, the priority of the first application for an invention can be claimed for one year in other countries that have acceded to the Paris Convention. With the exception of Taiwan and Argentina, the right of priority can be claimed in all industrialised and newly industrialising countries, as well as for the EP patent and the PCT patent application. This means, for example, that a patent application filed in Germany on 8 January 2023 can then be filed with the WIPO and the EPO for one year, i.e. until 8 January 2024 in other countries. It should be noted that the date of receipt of the application at the respective patent office (first to file) is decisive, so that there is effectively less time left for the decision on the country selection and processing, as applications in other countries usually have to be filed in their official language.

After the final examination, the patent is granted, entered in the patent register and the granted patent specification is published or rejected. An action for infringement of a patent can only be brought after the patent has been granted and published.

The claims of the utility model are subject to the same requirements as the patent. These are novelty, inventive step, technicality and industrial applicability.

Novelty

see above.

Inventive step

see above.

Technicality

see above.

Industrial applicability

see above.

The following table lists the differences between patents and utility models under German law:

The patent has significant advantages over the utility model in terms of its term of protection. However, the grace period and the rapid publication of the utility model are an important strategic advantage of the utility model over the patent in certain situations.

 The utility model protects technical inventions. These can be, for example, products, devices or substances. Processes, applications and software programmes cannot be protected by a utility model. In contrast to a patent, a utility model is published immediately after registration in the official register. In most countries, it is renewed at intervals of several years up to a maximum term of 10 years from the filing of the utility model.

The utility model is a regional property right, i.e. it must be applied for separately for each country for which utility model protection is sought. Utility models cannot be protected in all countries. In those countries where there is no utility model, patent protection must be used. In countries in which no utility model is applied for, there is no utility model protection. The decision as to whether a utility model should be effective in countries other than the first country of filing must also be made within the priority year, i.e. within 12 months of filing the first utility model application.

A utility model document comprises the claims, the description and the drawings. The claims define the scope of protection of a utility model. A claim of a utility model is deemed to be infringed if all features of the claim are found in the infringing subject matter or the infringing process. The description and the drawings serve to explain and support the claims.

 Once the utility model application has been filed, it undergoes a formal examination to check that the documents submitted are complete and that they comply with the relevant formal requirements.

Once the formal examination has been completed, the utility model is entered in the official register and published. There is no examination as to whether the claims of the utility model fulfil the substantive requirements.

Protection can therefore be obtained more quickly from a utility model than from a patent application. However, an action based on an unexamined utility model is also fraught with risk because the claims of the utility model are initially unexamined and this examination usually only takes place in the subsequent legal proceedings.

The claims of the utility model are subject to the same requirements as the patent. These are novelty, inventive step, technicality and industrial applicability.

Novelty

Patent or utility model claims are subject to the novelty requirement. An invention is considered "new" if it does not belong to the state of the art. The state of the art comprises all knowledge which has been made available to the public by written or oral description, by use or in any other way before the date relevant for the priority of the application. This definition includes all knowledge that was available to the public worldwide in any conceivable way before the application for the invention in question was filed. This may be the case through written or oral descriptions, use or exhibition. Written descriptions include, for example, books, journals and other patents. Oral use includes, for example, a lecture at a conference.

In German patent law, the relevant date for the seniority of the application is the filing date. In some countries, the seniority of the prior art differs from the filing date. This is the case in the USA and Japan, for example. Here there is a grace period of 12 and 6 months respectively.

Inventive step

The devices and processes protected by the claims of the patent or utility model must also have an inventive step over the prior art so that they can be granted patentability and the patent can be granted. An inventive step is present, for example, if it is not obvious to the average person skilled in the art from the prior art. The patent or utility model claims are therefore compared with the prior art from the perspective of a person skilled in the art and examined for non-obvious differences.

The average person skilled in the art is not a real person, but a fictitious person to whom the average skills of, for example, a university graduate in the respective field are attributed. An invention is considered non-obvious if the average person skilled in the art cannot be expected to have come up with the invention on his own and with reasonable effort, based on the state of the art.

In contrast to novelty, inventive step is not clearly defined and is therefore repeatedly the subject of technical discussions between patent attorneys and examiners during examination proceedings.

Technicality

Patents and utility models are only granted for technical inventions. A claimed invention must therefore have a "technical character" or - to put it more precisely - relate to a "teaching for technical action" which "is to be understood as being outside of human intellectual activity for directly bringing about a causally foreseeable result". This means that a patent is only granted for specific technical means that solve a specific technical problem.

The requirement of technicality for patents and utility models arises from the purpose of patent and utility model protection, namely the promotion of technical progress.

Excluded from patent protection are, for example:

• Discoveries as well as scientific theories and mathematical methods;
• plans, rules and methods for mental activities, for games or for business activities as well as programmes for data processing systems; or
• the reproduction of information.

The characteristic of technicality plays a major role in software protection, for example. The common opinion that "software is not patentable" is fundamentally wrong. Computer-implemented inventions can indeed be patented if they have a technical character. In the case of software that involves an inventive step of a technical nature that goes beyond purely technical programming, the inventive step performed by the software can be patented. A programmed software package is already protected by copyright with regard to the programme code (source code etc.).

Industrial applicability

According to the legal requirement, the invention must also be applicable in any industrial field - including agriculture (Section 5 (1) PatG, Art. 57 EPC). According to the patent law tradition still alive today, particularly in the Romance countries (FR, BE, ES), inventions that do not work (e.g. a perpetual motion machine), are not yet technically realisable (e.g. beaming) or whose implementation does not bring any material products onto the market are excluded from patenting.

However, it is sufficient that a patent or utility model object can be manufactured or otherwise utilised in a commercial enterprise. Therefore, for example, teaching aids for universities and schools or devices for liturgical use are also patentable. However, methods for surgical and therapeutic treatment and diagnosis of the human or animal body are not considered to be industrially applicable (Section 5 (2) PatG, Art. 52 (4) sentence 1 EPC 1973); they may not be patented pursuant to Section 2a (1) no. 2 PatG. However, this does not apply to products, in particular substances or mixtures of substances, for use in such a process. Therefore, for example, an artificial hip joint is patentable, whereas hip surgery is not.

Registration gives the owner of the trademark an exclusive right of prohibition: he can prohibit third parties from commercially using a sign (the trademark) that is identical or confusingly similar to the trademark for identical or similar goods or services and, if necessary, claim damages for acts of use to date. However, the descriptive use of a sign as an indication of characteristics or properties of goods or services cannot be prohibited in principle (absolute grounds for refusal).

Commercial use includes everything from production to marketing, distribution, use for own purposes, dispatch and delivery - provided there is a commercial purpose behind it. A trade mark can therefore prohibit such use - or permit it, for example in return for a corresponding consideration such as a licence fee. A trademark is published in the official register after the application has been filed. In most countries, it is renewed at intervals of several years. In Germany, the initial term of a trade mark is 10 years and can be extended on an ongoing basis. There is no maximum term.

A trade mark protects the identification of goods and/or services. Trade marks can be registered in different categories. These are, for example, word marks, figurative marks, three-dimensional marks, colour marks, sound marks, position marks, identification thread marks, design marks, motion marks, multimedia marks, hologram marks or other marks.

Trade marks are registered for different goods and services. The goods and services are divided into 45 classes according to the Nice Classification. There are 34 classes of goods and 11 classes of services. These are

I. Goods

Class 1

Chemical products for industrial, scientific, photographic, agricultural, horticultural and forestry purposes; artificial resins in the raw state, plastics in the raw state; fertilisers; fire extinguishing preparations; preparations for hardening and soldering metals; chemical products for preserving foodstuffs; tanning preparations; adhesives for industrial purposes

Class 2

Paints, varnishes, lacquers; anti-rust preparations, wood preservatives; colouring preparations; mordants; natural resins in the raw state; sheet metals and metals in powder form for painters, decorators, printers and artists

Class 3

Washing and bleaching preparations; cleaning, polishing, scouring and abrasive preparations; soaps, perfumery, essential oils, preparations for body and beauty care, hair lotions, dentifrices

Class 4

Industrial oils and greases; lubricants; dust absorbing, wetting and binding preparations; fuels (including motor fuels) and fluorescent substances; candles and wicks for lighting purposes

Class 5

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic preparations for medical purposes, food for babies; plasters, dressings; dental fillings and impression materials for dental purposes; disinfectants; preparations for the destruction of noxious animals; fungicides, herbicides

Class 6

Base metals and their alloys; building materials of metal; transportable buildings of metal; railway construction material of metal; cables and wires of metal (not for electrical purposes); metalwork; metal pipes; safes; goods of metal not included in other classes; ores

Class 7

Machines and machine tools; engines (other than for land vehicles); clutches and transmission gears (other than for land vehicles); non-hand-operated agricultural implements; egg incubators

Class 8

Hand-operated tools and implements; cutlery, forks and spoons; slashing and thrusting weapons; razors

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, converting, storing, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic recording media, discs; automatic vending machines and mechanisms for money-operated apparatus; cash registers, calculating machines, data processing apparatus and computers; fire-extinguishing apparatus

Class 10

Surgical, medical, dental and veterinary instruments and apparatus, artificial limbs, eyes and teeth; orthopaedic articles; surgical suture material

Class 11

Lighting, heating, vapour generating, cooking, refrigerating, drying, ventilating and plumbing apparatus and sanitary installations

Class 12

Vehicles; apparatus for transport by land, air or water

Class 13

Firearms; ammunition and projectiles; explosives; fireworks

Class 14

Precious metals and their alloys and goods made of or clad with them, not included in other classes; jewellery, precious stones; watches, clocks and watch making instruments

Class 15

Musical instruments.

Class 16

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding materials; photographs; stationery; adhesives for paper, cardboard and paperboard; other printed matter and goods made from these materials, not included in other classes, Lettering; printing blocks.

Class 17

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; goods made of plastics (semi-manufactures); sealing, packing and insulating materials; hoses (not of metal)

Class 18

Leather and imitations of leather, and goods made of these materials and not included in other classes; hides and skins; travelling trunks and suitcases; umbrellas, parasols and walking sticks; whips, harness and saddlery

Class 19

Building materials (not of metal); pipes (not of metal) for building purposes; asphalt, pitch and bitumen; transportable buildings (not of metal); monuments (not of metal)

Class 20

Furniture, mirrors, picture frames; goods not included in other classes, of wood, cork, reed, rushes, willow, horn, bone, ivory, whalebone, tortoiseshell, amber, mother-of-pearl, meerschaum and their substitutes or of plastics

Class 21

Household and kitchen utensils and containers; combs and sponges; brushes and paint brushes (except for painting); brush-making materials; cleaning materials; steel wool; unworked or partially worked glass (except glass for building); glassware, porcelain and earthenware, not included in other classes

Class 22

Ropes, twine, nets, tents, tarpaulins, sails, sacks, not included in other classes; upholstery stuffing (other than of rubber or plastics); raw spun fibres

Class 23

Yarns and threads for textile purposes.

Class 24

Woven fabrics and textile goods included in class 24; bed and table coverings.

Class 25

Clothing, footwear, headgear.

Class 26

Lace and embroidery, ribbons and laces; buttons, hooks and eyes, needles; artificial flowers.

Class 27

Carpets, rugs, mats, mats, linoleum and other floor coverings; wallpaper (other than of textile material).

Class 28

Games, toys; gymnastic and sporting articles, to the extent included in class 28; Christmas tree decorations.

Class 29

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruit and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

Class 30

Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flours and preparations made from cereals, bread, pastry and confectionery, ice cream; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice cream

Class 31

Agricultural, horticultural and forestry products and seeds not included in other classes; live animals; fresh fruit and vegetables; seeds, live plants and natural flowers; animal fodder, malt

Class 32

Beers; mineral and aerated waters and other non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages

Class 33

Alcoholic beverages (except beers).

Class 34

Tobacco; smokers' articles; matches.

II. Services

Class 35

Advertising; business management; business administration; office work.

Class 36

Insurance; finance; money transactions; real estate.

Class 37

Construction; repair; installation work

Class 38

Telecommunications

Class 39

Transport; packaging and storage of goods; organisation of travel.

Class 40

Processing of materials

Class 41

Education; training; entertainment; sporting and cultural activities.

Class 42

Scientific and technological services and research and design services relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43

Catering and accommodation services.

Class 44

Medical and veterinary services; health and beauty care for humans and animals; agricultural, horticultural or forestry services.

Class 45

Legal services; security services for the protection of property or persons; personal and social services provided by third parties relating to individual needs.

The trade mark is a regional property right. This means that a separate application must be filed for each country for which trade mark protection is sought. The decision as to whether a trade mark with the same seniority as the first trade mark application should take effect in countries other than the first country of application must also be made within the priority period of 6 months after filing the first trade mark application. However, a trade mark application can also be filed in other countries independently of the first trade mark application and therefore at a later date.

Once the trade mark application has been filed, it undergoes a formal examination. Here, the completeness of the submitted documents and their conformity with the respective formal requirements are checked. Once the formal examination has been completed, the trade mark is checked for absolute grounds for refusal. Following the examination procedure, the trade mark is entered in the publicly accessible official register. The respective examination status is entered in the trade mark register and is also visible to third parties. After registration, third parties have the option of filing an opposition against the trade mark within 3 months of registration.

A trade mark is subject to the obligation to use. This means that the trade mark must be used commercially within a certain period of time (in Germany within 5 years) after registration to the extent of the goods and services registered for this trade mark. If this is not done, the trade mark can be cancelled for the unused goods and services at the request of a third party.

Absolute grounds for refusal under Section 8 MarkG is the collective term for numerous legal circumstances that prevent a sign from being registered as a trade mark in the trade mark register of the German Patent and Trade Mark Office. They include

Trade marks are excluded from registration,

• which lack any distinctive character for the goods or services,
• which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the services, or other characteristics of the goods or services,
• which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services,
• which are likely to deceive the public, in particular as to the nature, quality or geographical origin of the goods or services,
• which are contrary to public order or morality,
• which contain national coats of arms, national flags or other national emblems or coats of arms of a domestic place or a domestic association of municipalities or other local authorities,
• which contain official inspection or certification marks,
• which contain official test or guarantee marks,
• which contain coats of arms, flags or other marks, seals or designations of international intergovernmental organisations,
• which are excluded from registration under German law, under European Union law or under international agreements to which the European Union or the Federal Republic of Germany is a party and which protect designations of origin and geographical indications,
• which are excluded from registration under European Union legislation or international agreements to which the European Union is a party and which protect traditional names for wines,
• which are excluded from registration under European Union legislation or international agreements to which the European Union is a party and which serve to protect traditional specialities,
• which consist of or reproduce in their essential elements an earlier variety denomination registered for plant variety rights in accordance with German law, the law of the European Union or international agreements to which the European Union or the Federal Republic of Germany is a party, and which relate to plant varieties of the same species or closely related species,
• the use of which can obviously be prohibited under other provisions in the public interest, or
• which have been registered in bad faith.

The design right is exhausted when the goods were originally placed on the market by the owner of the property right or with his authorisation. The examination of an infringing act is based on the overall appearance that is visibly reproduced in the design application. This does not depend on identity, but on whether the same overall impression is created for an informed user.

The design therefore offers the owner a prohibition right - or also the right to permit use, for example in return for a corresponding consideration such as a licence fee. The design is a registered property right that is kept in the register of the respective patent office. In addition, there is also an unregistered Community design in the EU, whose protection arises solely through its first use. International design protection is possible via the Hague Agreement Concerning the International Deposit of Industrial Designs. The term of the design is 25 years in most countries. Fees must be paid regularly for maintenance.

The design is a regional property right. This means that a separate application must be filed for each country or association of countries (e.g. the EU) for which design protection is sought. There is no protection in countries in which no design is registered. The decision as to whether a design should be effective in countries other than the first country of application must be made within the priority period of 6 months after filing the first design application.

The design is a so-called unexamined property right. This means that the requirements for novelty and individual character are not examined prior to entry in the official register. Only the formal requirements for the design application are examined in the examination procedure.

The aesthetic design to be protected must be new and have an individual character.

Pursuant to Section 2(2) sentence 1 DesignG, a design is deemed to be new if no identical design has been disclosed prior to the filing date. Two designs are considered identical if their features differ only in insignificant details. However, according to Section 5 sentence 2 DesignG, a design is deemed not to have been disclosed if it has only been made known to a third party under the express or tacit condition of confidentiality.

According to Section 4 DesignG, a design that is the component of a complex product, is used or incorporated into a product is only considered new if the component that is incorporated into a complex product remains visible when the product is used as intended and these visible features of the component itself fulfil the requirements of novelty. This is intended to prevent parts of a whole, e.g. spare parts, which are not (or no longer) visible after incorporation into the whole, e.g. into a machine or a vehicle, from being registered as a design or enjoying legally valid design protection.

Pursuant to Section 2(2) sentence 1 DesignG, a design is deemed to be new if no identical design has been disclosed prior to the filing date. Two designs are considered identical if their features differ only in insignificant details. However, according to Section 5 sentence 2 DesignG, a design is deemed not to have been disclosed if it has only been made known to a third party under the express or tacit condition of confidentiality.

According to Section 4 DesignG, a design that is the component of a complex product, is used or incorporated into a product is only considered new if the component that is incorporated into a complex product remains visible when the product is used as intended and these visible features of the component itself fulfil the requirements of novelty. This is intended to prevent parts of a whole, e.g. spare parts, which are not (or no longer) visible after incorporation into the whole, e.g. into a machine or a vehicle, from being registered as a design or enjoying legally valid design protection.

According to § 2 DesignG, a design fulfils the requirement of individual character if the overall impression it produces on the informed user differs from the overall impression produced on that user by another design which was disclosed before the filing date.