Adequate strategies forregistration
Although the type of industrial property right is often predetermined by the subject matter to be protected – technical inventions by patents and utility models, signs for goods and services by trademarks and the aesthetic design of a product by design patents – there are several options available in each case to obtain the desired protection as comprehensively, quickly or cheaply as possible.
Patents and utility models
- First of all, the question arises as to which aspects of the invention are to be incorporated into products and in what way, and how these - device or process claims - are to be protected. This also raises the question of how the claimed subject matter can be proven on the allegedly infringing product. Is the invention of a product recognizable from the outside? Can the process by which it was manufactured be demonstrated on the product?
- Furthermore, the known state of the art and knowledge of competitors' products must be taken into account. How can the invention be differentiated as clearly as possible from the known technology? What alternatives are there to the invention that would offer competitors a way of circumventing their own property right and must be covered when drafting the application?
- Alternatively, a property right application can also be deliberately waived if the invention is to be kept secret, particularly in the case of processes whose application to the product is often difficult to prove. In this case, however, employee invention law must also be observed! Furthermore, evidence of the existence of the invention should be documented in order to prove use in the event that a third party obtains protection for the same invention and proceeds from it (right of prior use).
Patents per se
- Patents can be registered purely nationally, e.g. for Germany and in almost all other countries in the world. If protection is only required in one country, this is the simplest and cheapest way:
- If several states are of interest, the standardized application procedure of the PCT or the standardized registration procedure of the states of the European Patent Convention (EPC) are more suitable instead of several national procedures. This also makes it possible to postpone the decision in which countries national patents are to be obtained, e.g. in order to wait for the success of a product on the market or the feasibility and economic viability of an invention.
Patents versus utility models - or together
- The greater legal certainty of the patent due to its substantive examination for protectability comes at the price of a delay in granting, generally at least one and a half years after application. If an enforceable technical property right is to be obtained quickly, the utility model offers the advantage of speed, as registration generally takes place after four months.
- However, the utility model is an unexamined property right whose protectability will generally be challenged in court by the alleged infringer in cancellation proceedings. This means that the protectability of a utility model is generally reviewed by an ordinary court instead of the German Patent and Trademark Office (DPMA).
Trademarksin the application
- The sign of the trademark should avoid the absolute obstacles to protection; nevertheless, "speaking" trademarks that have a descriptive appeal are very popular in advertising, as they already indicate the goods or services for which they stand by themselves and can therefore achieve the desired association between the sign and the goods or services more quickly and with less effort on the part of the customer. It is important to find a "happy medium" here.
- The goods or services to which the sign is linked should be defined for the long term, as a trademark can run indefinitely if renewed. Therefore, the goods and services for which use may only take place in the distant future should also be registered. However, a trademark must be used seriously for the goods and services applied for after a five-year grace period, so it makes sense to weigh this up. Furthermore, the trademarked use of the sign should be documented from the outset in order to be able to counter later claims of non-use by third parties with evidence.
- The combination of sign and goods or services can be registered both nationally and uniformly throughout the EU. Here, a decision must be made on the costs, whether one or individual states should be covered by national trademarks or whether the expense of a Community trademark for the entire EU is worthwhile.