Frequently asked questions.

FAQs – or what you always wanted to know but never dared to ask.

Here we answer the most pressing questions on topics such as patents, patent law, costs, utility models, design law, trademark law, infringements of patents, utility models, designs or trademarks, as well as basic information on employee inventions.
 

Overview

Patents

A property right for a technical object or process. It allows its owner to prohibit others from commercially using the protected invention for 20 years.

A description, usually accompanied by drawings, and patent claims defining the protection. In addition, an abstract and an inventor’s designation.

Articles and processes from all fields of technology which are industrially applicable, practicable, new and inventive.

In case of regular payment of the renewal fee up to 20 years from the date of registration

The costs depend on the effort required for the drafting. Including official fees and attorney’s fees, a German patent application usually costs between 4000 and 6000 EUR plus VAT, a European application about 6000 EUR and an application in other countries between 4000 and 6000 EUR.

No, but an international (PCT) patent application covering almost all states, which can be converted into national or regional patent applications after 31 months.

The term for a patent is 20 years, for a utility model 10 years. A patent is officially examined and granted, a utility model is registered without substantive examination. With a utility model, no processes can be protected.

Utility Models

A utility model is a protection for a technical innovation. In contrast to a patent, this is not examined by the patent office for protectability, but is registered after a formal examination has been carried out. From the time of registration, the utility model then offers protection against imitations, provided that it is protectable against the state of the art.

For the utility model application, a description of the object to be protected is usually required, usually with drawings, as well as the so-called protection claims, which define the actual scope of protection.

Technical objects and devices are eligible for utility model protection, whereas, in contrast to the patent, no processes can be protected.

A utility model can last a maximum of 10 years if the corresponding maintenance fees are paid to the Patent Office after 3 years, 6 years and 8 years.

The costs for a utility model consist on the one hand of the official application fees and on the other hand of representation and elaboration costs of a patent attorney and are typically between 2,500 and 3,500 EUR. In simple or complicated cases, the costs may also vary upwards or downwards.

Design

A property right for an aesthetic creation of form or color of an object, which is protected by registration with the German Patent and Trademark Office or the European Intellectual Property Office.

By filing an application with the German Patent and Trademark Office or the European Intellectual Property Office.

With regular payment of renewal fees up to 25 years.

Design is the so-called “small coin” of copyright. A copyright requires a considerable level of creation and is then protected – without registration with an office – for up to 70 years after the author’s death. With a design, smaller creative creations can also be protected, whereby the protection only lasts for a maximum of 25 years after registration with the patent office.

Trademark

An industrial property right which, after registration of the trademark, allows its owner to prevent third parties from using an identical or similar designation for identical or similar goods or services.

Usually by filing an application with the German Patent and Trademark Office or the European Intellectual Property Office after payment of an official fee and definition of the goods and services to be protected.

The term of protection is 10 years from the filing date. The trademark can then be renewed as often as desired for a further 10 years.

Unter Einschaltung eines Patentanwalts kostet eine deutsche Markenanmeldung ab 700 EUR inklusive der amtlichen Gebühren. Die Kosten steigen mit der Anzahl der zu benennenden Waren- bzw. Dienstleistungsklassen. Für eine Anmeldung in der Europäischen Union sind die Kosten in der Regel ca. 2- bis 3-mal so hoch.With the involvement of a patent attorney, a German trademark application costs from EUR 700 including official fees. The costs increase with the number of classes of goods or services to be designated. For an application in the European Union, the costs are usually about 2 to 3 times as high.

Durch einen Löschungsantrag bei dem Amt, bei welchem die Marke registriBy filing a request for cancellation with the office where the trademark is registered. An application for cancellation can be filed, among others, on the grounds of earlier rights, absolute grounds for refusal, bad faith or revocation due to a period of non-use exceeding 5 years.

Yes, the same trademark can be protected for goods or services that are not similar to each other for different companies. For example, there are Hermés luxury goods and a Hermes parcel service provider.

Infringement, Warning, Employee Inventions and Co.

A patent infringement requires that the technical subject matter defined by the independent patent claims be realized or manufactured, offered, put on the market, used or imported or possessed for these purposes identically or equivalently in all features. In the case of a protected process, it is forbidden to use it or offer it for this purpose if it is known or circumstantially obvious that the patentee does not permit this. The product directly manufactured by the process is also protected.

A utility model infringement requires that the technical subject matter defined by the independent claims is realized identically or equivalently in all features and is manufactured, offered, put on the market, used or imported or possessed for the purposes just mentioned.

A trademark is infringed if a similar or identical sign is used in the course of trade without the consent of the trademark owner for identical or similar goods or services protected under the trademark.
The exception to this is well-known trademarks, where even dissimilar goods and services may not be used under certain conditions.

Use of a trademark includes, among other things, affixing it to goods or their presentation or packaging, offering, putting on the market or possessing them for this purpose, as well as importing or exporting such goods, and offering or providing protected services.

A design is infringed if a design is used that does not create a different overall impression on the informed user than the protected design.

The protection of the design is defined by the features visibly reproduced in the design application, and the degree of freedom of the designer in developing the design is included here.

In particular, the manufacture, offering, putting on the market, import, export or use of a product in which the registered design is incorporated or to which it is applied, or the possession of such a product for these purposes, shall be deemed to be unauthorized use.

It is best to quickly consult a lawyer or patent attorney specializing in trademark law and have the possibilities of a defense reviewed. There are numerous possible defenses here

An authorization request is a common “mild” procedure in patent and utility model disputes to give the potential infringer an opportunity to justify its conduct before a formal cease-and-desist order is issued.

Not before the German and European Patent Offices, but before most foreign patent offices. However, due to his technical and patent, trademark and design law expertise, the involvement of a patent attorney is always recommended.

An invention made by an employee in the course of his or her work is a service invention which the inventor must report to his or her employer, observing certain formalities. The employer can then decide whether to claim or release the reported invention.

The claim is the transfer of the inventor’s rights to the employer. This is legally feigned 4 months after notification and triggers various obligations for the employer. For example, the invention must be registered as a patent or, in exceptional cases, as a utility model, and the inventor is generally entitled to remuneration, which, however, usually also requires sales of the product.

In the event of a release, all rights remain with the inventor, who can then register the invention as a property right at his own expense and, if necessary, also prohibit others from using it, including, in principle, his employer. During the employment relationship, however, the inventor must offer his employer at least one non-exclusive use on reasonable terms before exploitation.

The 10 most important questions and answers on the Unitary Patent and the Unified Patent Court

1. The new Unitary Patent (European patent with unitary effect) is based on the established system of the European patent under the European Patent Convention (EPC) with a centralized examination and grant procedure before the European Patent Office (EPO). The European patent, which has been established for more than 50 years, is a so-called “bundle patent” which, once granted, breaks down into a bundle of national patents for the EPC countries selected by the patent owner. The EPC currently comprises 38 EPC contracting states (EPC-38), including all European Union (EU) states and also non-EU states such as Switzerland, Norway, Turkey and the United Kingdom. In order to obtain the effect of a granted European patent in selected EPC contracting states, the owner of the patent so far has to carry out an elaborate validation of the European patent in selected countries, which in some cases requires the filing of translations of the European patent specification into the respective national language in addition to the payment of fees. In addition to or instead of the validation of a European patent, the new Unitary Patent makes it possible to obtain patent protection in up to 24 member states of the EU (participating member states: EU-24) by filing a single application without a separate validation of the European patent in individual countries. The examination and grant of the Unitary Patent will be subject to the European Patent Office, which will continue to be responsible for granting European bundle patents (effective for European countries within or outside the EU). The unitary patent thus coexists with the classical European bundle patent.
The main advantage of the new Unitary Patent (European patent with unitary effect) is a simplification of the process for validating a granted European patent in the participating member states of the EU (EU-24). A further advantage arises with regard to the costs, which are lower with the Unitary Patent than with the previous European bundle patent, if this is to be validated in at least four EPC contracting states. Compared to the validation of a conventional European patent in individual EPC contracting states selected by the patent proprietor (EPC-38), the costs of the Unitary Patent are lower, because the validation of a conventional European bundle patent involves translation costs and national fees for the patent offices in the selected EPC contracting states. Furthermore, the Unitary Patent results in cost savings for maintenance by paying the annual maintenance fees (renewal fees), because the renewal fees for the Unitary Patent are paid centrally (at the European Patent Office) for all participating member states (EU-24) and not, as in the case of the European bundle patent, to the national patent offices of the individual selected EPC contracting states. As a rule of thumb, it can be assumed that the maintenance fees for a Unitary Patent are more favorable compared to a European bundle patent if the bundle patent would be validated in four or more EPC contracting states. Another advantage of the new Unitary Patent is the broader territorial protection, because the Unitary Patent, once granted, automatically develops protection in all participating member states (EU-24) and not only – as with the conventional bundle patent – in the EPC contracting states selected by the patent proprietor (EPC-38).
The Unitary Patent may be applied for at the European Patent Office (EPO) within one month from the publication of the grant of a European patent. To apply for a Unitary Patent, a formal request to the EPO is required together with the filing of a translation of the patent specification. If the language of the proceedings of the European patent is German, an English translation of the patent specification must be filed with the request for the Unitary Patent at the European Patent Office. If the language of the European patent is English, a German or a French translation of the patent specification must be filed. The application for a Unitary Patent at the EPO can be filed for European patents whose grant will be published after the entry into force of the Agreement on the Unified Patent Court (UPC). It is expected that the UPC will enter into force in April 2023. For pending European patent applications, a delay in publication of the grant to a date after the EPC enters into force can be requested from the EPO, and this request can be filed as soon as the Federal Republic of Germany has deposited its instrument of ratification of the UPC Agreement (UPCA). It is expected that the deposit of the instrument of ratification by the Federal Republic of Germany will take place in December 2022.
For the grant of a Unitary Patent, the same costs are initially incurred for the application and examination of a European patent as are incurred for the application and grant of a European patent in the conventional European patent system. Depending on the course of the examination procedure, average costs of between approx. € 7,000 and € 20,000 may be incurred here, including official fees. Unlike the European bundle patent, the Unitary Patent at least does not have to be validated in the participating member states (EU-24) after grant, i.e. in particular no national fees have to be paid to the national patent offices of the selected EPC contracting states (EPC-38). To maintain the Unitary Patent, only the renewal fees payable centrally at the European Patent Office are due after the grant of the European patent, whereby the amount of the renewal fees for the Unitary Patent increases progressively with increasing term and is, for example, € 315 for the fifth patent year, € 1,175 for the tenth patent year and € 4,855 for the last (20th) patent year. These renewal fees for the Unitary Patent are more favorable compared to the renewal fees incurred in the selected EPC contracting states (EPC-38) of a European bundle patent if the European bundle patent has been validated in four or more EPC contracting states. However, when comparing the costs of a Unitary Patent and a classical European bundle patent, not only the renewal fees have to be taken into account, but also the costs incurred for the validation of a European patent, which in particular include translation costs that are not incurred or only to a limited extent in the case of a Unitary Patent. As a rule of thumb, a Unitary Patent is less expensive than a European bundle patent validated in four EPC contracting states, whereby the cost advantage of the Unitary Patent is greater the higher the number of EPC contracting states (EPC-38) in which the European bundle patent used for comparison purposes is to be validated.
A Unitary Patent has legal effect in the participating member states (EU-24). The participating member states (EU-24) are the states of the European Union (EU) which have ratified the UPCA. After filing a request for unitary effect with the European Patent Office, the Unitary Patent automatically takes effect in all participating member states (EU-24) which have ratified the UPCA at the time of filing the request for unitary effect. Currently, 16 of the participating member states (EU-24) have ratified the UPCA. A total of 24 EU states (EU-24) will ratify the UPCA, including Germany. Only the EU states Spain, Poland and Croatia have not signed the UPCA. It should be noted that the unitary effect of a Unitary Patent will not be subsequently extended to further participating member states (EU-24) if, at the time of requesting the unitary effect of the European patent, not all 24 participating member states (EU-24) have ratified the UPCA. Thus, a Unitary Patent will only have effect in those participating member states (EU-24) which have already ratified the UPCA at the time of the application for unitary effect of the European patent.
The Unified Patent Court (UPC) is a civil court established by the participating member states (EU-24) with cross-border jurisdiction to hear questions of infringement and validity of both Unitary Patents and European (bundle) patents in the participating member states (EU-24). The Unified Patent Court is composed of a central chamber located in Paris with a branch office in Munich and several national or regional chambers in the participating member states (EU-24). A registry of the Unified Patent Court is established at the central chamber, which is responsible for the administration as well as the formal examination of incoming cases. In addition to the central chamber and the national/regional chambers, there is a court of appeal located in Luxembourg, where appeals against first instance decisions of the UPC are heard. In Germany, four local chambers have been established (Hamburg, Düsseldorf, Munich and Mannheim), where actions arising from European patents subject to the UPC can be filed.
The Unified Patent Court (UPC) is responsible for all proceedings concerning European patents which are subject to the UPC. These are all Unitary Patents and also granted European bundle patents which have been validated in at least one oft he participating member states (EU-24) and for which no “opt-out” has been declared. The central chamber of the Unified Patent Court is responsible for isolated nullity actions against granted Unitary Patents and European patents subject to the UPC, and – in special cases – also for infringement actions and negative declaratory actions. The national and regional chambers are competent for patent infringement proceedings in which claims from a Unitary Patent or a European patent which has been validated in the respective state of the national/regional chamber are to be enforced, if a local competence of the national or regional chamber exists. A local jurisdiction of a national or regional chamber is established, for example, by the place of the infringing act or the seat of the defendant. The national or regional chambers are also competent for invalidity counterclaims filed by the defendant against the validity of the patent in suit in infringement proceedings before the national or regional chamber. In infringement proceedings before the UPC, the patent proprietor can enforce all infringement claims, in particular claims for injunctive relief, information and damages, for all participating member states (EU-24) in a single action. This leads to a considerable simplification of the EU-wide enforcement of rights in case of a patent infringement, as multiple litigation in different countries can be avoided.
The main advantage of the Unified Patent Court (UPC) is a uniform enforcement of claims arising from a European patent subject to the UPC (Unitary Patents or European patents validated in at least one oft he participating member states (EU-24)). In patent infringement proceedings before the UPC, the patent proprietor can enforce all infringement claims arising from a Unitary Patent for all participating member states (EU-24) or for all participating member states in which a European bundle patent has been validated in a single action. In this respect, this will lead to a considerable simplification of the enforcement of rights, since multiple litigation in individual countries, as is currently necessary for the enforcement of a European bundle patent, can be avoided in the future. The UPC is expected to provide a fast and efficient procedure for the enforcement of European patents. For example, it is expected that in a patent infringement case before the UPC, a first instance judgment will be available after approximately one year of litigation. In terms of procedural costs, the proceedings before the Unified Patent Court are more favorable at least in that the sum of the procedural costs in a national enforcement of the European bundle patent in the individual jurisdictions of several EPC contracting states (EPC-38) in which the European bundle patent is validated is expected to be higher.
A major disadvantage of the new Unified Patent Court (UPC) for patent owners is that patents subject to the UPC (Unitary Patents and European patents which have been validated in at least one of the participating member states (EU-24) and for which no “opt-out” has been declared) can be destroyed centrally with effect for all participating member states (EU-24) by way of a (central) nullity action. In the previous European patent system, a granted European patent could only be destroyed on a country-specific basis, i.e. only with effect for the individual EPC contracting states in which the patent had been validated, by way of an action for revocation before the respective competent national courts. Due to the central attack on the European patent possible with the UPC, a patent proprietor runs the risk that his European patent will be declared invalid with effect for all participating member states (EU-24) in a single nullity action. Further disadvantages of the UPC are likely to be the high procedural costs, which will be significantly higher, at least in comparison to the procedural costs for patent infringement proceedings and nullity proceedings in Germany.
10. Following the entry into force of the Agreement on a Unified Patent Court (UPC), European patents can be enforced in the participating member states (EU-24) in centralized proceedings with transnational effect. In particular, all infringement claims, especially claims for injunctive relief, information and damages, can be enforced in the event of an infringement of a European patent for all participating member states (EU-24) in a single action. This leads to a considerable simplification of EU-wide enforcement in the event of a transnational patent infringement, as multiple litigation in individual countries in which a validated European patent is infringed, which was necessary in the previous European patent system, can be avoided.

Abreviations