FAQ - Patents
What is a patent?
In general, a patent is a special kind of protection for an intellectual property an “ownership” over a technical invention for a period of maximum 20 years. A patent gives the inventor or the patent holder the right to claim the invention his own. Broadly spoken, the protected invention cannot be copied or used by anyone but the patent holder himself.
To ensure this and to create a successful scope of protection over an invention the invention must be grasped in its entirety and every detail of the invention with its outcomes must be listed.
Patentability
A patent can offer an effective, important and strategic economic advantage. Because of this and the exclusive right that the patent holder bears, the decision on whether or not an invention should be patented can only be made after profound research and discussion of the topic with a qualified patent attorney. Furthermore the invention must originate from a technical field and meet three essential requirements. It must be novel; it must involve an inventive step and the invention must be industrially applicable. In cooperation with the European Patent Act, the German Patent Act provides a list of non patentable subjects like discoveries, scientific theories, mathematic methods, aesthetical creations, plant and animal varieties and inventions which would violate the public moral and order.
Novel
In the case of patents “novel” indicates a strict absolute novelty regulation, meaning that the subject to be protected must be entirely new. This includes all publications made worldwide and all disclosures made before the day of the patent application. Therefore it is advisable to obtain an exact overview of all relevant prior art before the patent application is filed. As the German Patent and Trademark Office and the European Patent Office both offer a free access to their database, the inventor is able to conduct a first search himself. Further and more precise databank searches are offered by patent attorneys.
Inventive step
The German Patent law states, that an invention must at least involve an “inventive step”. A legal definition though, is not given. Just because something is new, it does not automatically lead to a patent. It must become clear to the examination division that the invention in itself would not have been obvious to a person skilled in the art and that the brainchild is not only a logical conclusion. The invention must stand out as an absolute novelty and development. Patent Offices have specified certain methods and criteria to help and determine this requirement.
Industrial applicability
The third requirement for patentability is the requirement of an invention having to be industrially applicable. After the fourth session of the Standing Committee on the Law of Patents (SCP) further information of this subject has been provided. Deriving from these published papers a broad definition has been given. This definition suggests that an invention is patentable, if it can be made use by any industry including agriculture. “Industry” is here to be understood in the broadest possible sense. It is to be noted, that the invention although industrially applicable, does not have to be useful.
Application Process
Underestimating the complexity and range of a patent application can lead to a refusal of the application. In any case it is therefore advisable, to consult a patent attorney for the process. The patent application is to be handed in either at the German Patent Office in Munich, Berlin or Jena. The application may be sent in by mail or handed in personally.
The German Patent Office offers a special and standardized application form which is downloadable from their website (www.dpma.de). Together with the form provided by the DPMA, the patent application must include a full and exact description of the invention. In the description, the invention must be disclosed and presented in such a way, that a skilled person could manufacture the described subject. Since later modifications and alterations to the technical descriptions are impossible it is important, that exact technical descriptions and claims with drawings of the invention are handed in with the application. Details or amendments to the invention may be added within a period of 15 months after the application.
All documents must be in filed German. English or French applications may provide for German translations within 12 months. If applications are submitted in any other languages than English or French, translations are to be handed in latest 3 months after the application.
Regarding priority regulations and the payment deadline of maximum 3 months it is important to know, that the day on which the application is received for processing, counts for the registration date.
Priority
When it comes to patent applications or inventions that require a scope of protection for commercial reasons the priority is one of the most important aspects of a patent application.
According to article 4 of the Paris Convention the German patent holds the right to claim priority. This enables priority to a foreign patent application up to 12 months after the filing date. Also, earlier patent applications by the same applicant may be used to claim an “inner priority” in Germany. Derived from this, any prior patent application with effect in Germany can serve as a priority to a newer one. This also includes European and PCT applications designating Germany.
The exhibition priority creates a specific case. In the event of an invention being displayed at one of several special trade fairs, annually announced by the Federal Ministry of Justice in Germany, the priority of the initial display may be claimed. In order for this to be taken into consideration, the application must be handed in within 6 months after display. This special priority can be combined with a grace period.
EP (European Patent Application)
Besides the German patent application, the inventor has the possibility of expanding his application to a European patent application, an EP or a PCT within 12 months from the initial patent application. If the inventor decides on applying for a European patent, he has up to 3 months after the approval of the application to specify on the countries he wants to continue the scope of protection for his invention.
PCT (Patent Cooperation Treaty)
The Patent Cooperation Treaty is an agreement, signed by 148 member states in 1970, to simplify the international patent application.
If a patent applicant decides to widen and internationalize the scope of protection for his invention, the PCT procedure offers the simplest solution.
By submitting a PCT application, the inventor has the right to nationalize the application in each of the 148 member states within 30 – 31 months from the priority date or the application date if the priority is not claimed.
Regarding Matthias Rößler:
Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.