The patent – The IP right and prohibitive right for your technical inventions
Know-how, technical developments, and commercially successful ideas are the most precious assets of any company. Those who have invested financial and other resources want to secure the exclusive use of these and protect their innovative products and processes from imitation. It is precisely this protection of technical inventions that patents are for. As IP rights and prohibitive rights, patents secure a geographically restricted monopoly for patent holders with the option of licensing for a period of up to 20 years.
We will support you in all matters related to the granting of patents and patent protection, in particular in the fields of physics and materials technology, mechanical engineering, medical technology, chemistry, pharmaceuticals, life sciences, electrical engineering, IT, and communications technology. All patent attorneys at COHAUSZ & FLORACK are engineers, physicists, electrical engineers, or chemists, for example, and therefore boast profound technical knowledge combined with first-rate patent law expertise.
If a patent is granted following the examination procedure required for the granting of a patent, it is usually protected for up to 20 years after the application. In order to maintain a patent, however, the annual fees, which are continuously increasing, must be paid when due. To ensure that you do not inadvertently lose your IP rights and entail serious economic consequences, our Tax Department carries out careful monitoring to make sure that all payments to the relevant offices are made on time and in full.
Many valuable ideas are developed by a company’s own employees in the course of day-to-day work. If a company registers such an idea as a patent, the employee is entitled to compensation under the Employee Invention Act (Arbeitnehmererfindergesetz – ArbnErfG). We would be happy to advise you on how to develop a system of company incentives to promote innovation. If there is ever a dispute between you and an employee over this compensation, we will support you both before the Arbitration Board under the Employee Inventions Act at the German Patent and Trademark Office (DPMA) and in court proceedings.
From patent application to patent granting
The patent application process is so complex in terms of content and form that you should not tackle this without our support. After all, it forms the basis for the enforcement of your rights in future. When drafting and reviewing your patent application, our experts have the experience and expertise necessary to meet all content and formal requirements for the granting of a patent.
The content requirements for protection include the novelty of the invention, an underlying inventive step, and industrial applicability. A patent is only granted for technical inventions. In the application documents, the invention must be described in precise detail to enable a person skilled in the art to understand and reproduce the invention. In addition to the technical description of the invention, if applicable with a list of reference signs and drawings, the patent claims defining the scope of protection of the patent as well as an abstract and the designation of the inventor must be included in the documents. The simpler and more basic the wording of the patent’s scope of protection, the further it reaches. Leave this to our experts. No additions may be made to the technical information later on.
German patent applications are filed with the German Patent and Trademark Office in Munich for a fee. It is the date of filing that is relevant in terms of your priority over applications for the same or similar inventions filed later on by competitors. These can then no longer lead to a patent with the same scope of protection. In addition, you enjoy a prohibitive right over your competitors on the basis of the patent granted.
If you also wish to protect your invention in other countries, you must file an application to this effect with the national patent offices. Since this is time-consuming and costly, the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) have created possibilities to achieve the effect of a national application in all EPC/PCT contracting states with one single application. A European or international patent application can be filed directly with the relevant offices or the German Patent and Trademark Office. In the latter case, this is then transmitted to the European Patent Office (EPO) or the World Intellectual Property Organization (WIPO).
While European applications go through a uniform grant procedure before the EPO, the procedure for international applications is divided into an international phase and a national phase in selected countries. At the end of the international phase, the patent is not yet granted. An international preliminary examination report is drawn up by the international searching authority or the office entrusted with the international preliminary examination. This serves as a basis for the continuation of grant procedures in the countries then selected. We work with more than one hundred partner law firms around the world so we can guarantee comprehensive support.
For a European patent to obtain its protective effect in the countries desired, it must be validated after being granted. In countries where validation of your patent has taken place, it has the same effect as a national patent and can be used against infringers here.
After the patent has been granted, third parties may file opposition proceedings against the patent with the German Patent and Trademark Office (DPMA) or EPO within nine months if they believe that it has been wrongly granted – for example because the invention is not new, there is no inventive step, or an inadmissible extension of the subject-matter of the patent has taken place after the application. We will be happy to support you both in filing and defending against an opposition.
Even after more than nine months, however, if no opposition proceedings are pending, you have the option of bringing a revocation action against a granted patent before the Federal Patent Court (Bundespatentgericht) as the first instance. The second and final instance of appeal is the Federal Court of Justice (Bundesgerichtshof). In essence, grounds for revocation are lack of patentability, lack of feasibility, or usurpation of the invention. A successful revocation action as well as the opposition leads to the revocation of the patent and all associated rights.
We currently manage over 3,600 national patents, of which around 800 are in the USA, 700 in China, and over 300 in Japan. We also manage more than 12,500 EP validations.
Litigation – We enforce your patent rights.
Obtaining patent rights is one thing, enforcing them is another. We can support you, for example, in patent infringement proceedings before national courts. It goes without saying that we will also defend you against unjustified claims by third parties.
Düsseldorf, the home of our firm, has enjoyed a top position as one of the world’s leading locations for patent courts for decades. COHAUSZ & FLORACK has also played a part in this with successful proceedings conducted at Düsseldorf Regional Court (Landgericht) and Higher Regional Court (Oberlandesgericht) in the field of entertainment and communication technology, among others. Moreover, we represent our clients before all other courts in Germany, such as the Federal Patent Court (Bundespatentgericht) or the Federal Court of Justice (Bundesgerichtshof).
Patents are exclusivity rights that prohibit others from making or offering your invention without your consent. If you discover such an infringement, the following are some of the options available to enforce your patent right: the action against patent infringement, the preliminary injunction, and the application for border confiscation. In patent infringement proceedings, you can assert, for example, a cessation and desistance claim, a compensation claim, or a destruction claim. In parallel to the legal action, a preliminary injunction offers quick provisional legal protection.
Research – Avoiding risks, defending IP rights.
Thorough research is helpful for a successful patent application. Ultimately, it is wise to have an overview of the known prior art and IP rights that already exist to be sure that your own invention really is new and patentable.
Due diligence checks, freedom-to-operate searches, and research on the validity of IP rights or on the prior art are the right tools for this job. With the help of sophisticated modern tools and databases such as the Derwent World Patents Index (DWPI) or PatBase, our highly qualified research team will assist you in protecting and expanding your IP rights.
In addition, whenever a company wants to bring innovations to the market, there is always the risk of infringing the existing IP rights of others. To protect you from this, we investigate the IP rights of important competitors, for instance in freedom-to-operate (FTO) searches. In transactions, due diligence checks are particularly good tools for identifying risks related to third-party intellectual property in good time. We analyze IP rights, agreements relevant to IP rights, and contracts on patents, trademarks, and designs.
Despite official checks, it may turn out even after the patent has been granted that patents or utility models are not new according to the worldwide prior art. The same may apply to third-party IP rights for which you wish to acquire a license. In addition, the actual ownership of rights must be carefully examined, especially in the case of transactions and name changes. We support you with thorough research on the legal validity of IP rights and in-depth advice.
Last but not least, comprehensive research on the prior art provides information on which developments relevant to IP rights your competitors are currently working on. This ultimately gives you the peace of mind that your own developments can be exploited as free from third-party rights as possible.