Advice On Application Strategies
Whilst the type of industrial property right is frequently predetermined by the object to be protected – technical inventions through a patent or utility model, identifying marks for goods and services through trademarks and the aesthetic design of a product through design patents – in each case there are several options available for obtaining the desired protection in the most comprehensive, quick or cost-effective way possible. Patents and utility models:
- The first question that arises is which aspects of the invention are to be incorporated into products and in what way, and how these – device-based or process-based claim – are to be protected. Here the question also arises as to how the claimed object of protection can be detected in a supposed infringement product. Is the invention outwardly discernible on a product? Can it be detected from a product what method was used to produce it?
- In addition, the known prior art and the knowledge of the products of competitors must be borne in mind. How can the invention be delimited as clearly as possible from the known technology? What alternatives exist to this invention which would give the competitors a possibility of circumventing one’s property right and would need to be covered when drawing up the application?
- Alternatively, a deliberate decision can be made to dispense with an application for a property right if the invention is to be kept confidential; this particularly applies to methods, where it is frequently difficult to prove their use in a product. In this case too, however, employee invention law must be borne in mind! Furthermore, evidence must be provided of the existence of the invention in order to prove its use, in the event that a third party has the same invention protected and acts on the basis of this (right of prior use).
Patents per se:
- Patents can be applied for at a purely national level, e.g. for Germany and in nearly all other countries in the world. If it is intended for there to be protection in only one country, then this is the most straightforward, most economical route:
- If several countries are of interest, then instead of multiple national procedures there are, instead, the unified application procedure of the PCT and the harmonized registration procedure of the countries party to the European Patent Convention (EPC). By this means, the decision as to in which countries national patents are to be obtained can be postponed, in order, for example, to wait and see how successful a product is on the market or find out the feasibility and profitability of an invention.
Patents versus utility models – or both together:
- The greater legal security offered by the patent owing to the examination of its content for protectability comes at the price of a time delay in granting, in general one and a half years after application. It the intention is to obtain an enforceable technical property right quickly, then the utility model has the advantage here of speed, since the registration generally takes place after four months.
- Nevertheless, the utility model is an unexamined property right whose protectability is generally legally challenged by the supposed infringer by means of cancellation proceedings. Therefore in general, the examination of the protectability of a utility model is generally performed by a court of law rather than by the German Patent and Trademark Office (DPMA).
- The identifying mark of the trademark ought to avoid absolute grounds for refusal; nevertheless “expressive” trademarks in particular, which have a descriptive appeal, are very popular in advertising because they themselves already indicate the goods or services which they represent and can consequently achieve, more quickly and through less effort, the desired association in the customer between identifying mark and goods or service. Here it is all about finding a “happy medium”.
- The goods or services with which the identifying mark is linked ought to be specified long term since a trademark, if extended, can have an unlimited life. Consequently, goods and services for which use can only occur in the distant future ought also to be registered. However, a trademark must be used seriously for the registered goods and services after a five-year period of grace, meaning that there must be careful consideration here. Furthermore, the use of the identifying mark as a trademark must be documented from the beginning in order, later, to be able to counter the claim by third parties of non-use with proof.
- The combination of identifying mark and goods or services can be applied for both nationally and EU-wide in a unified form. Here, it must be decided upon on the basis of the costs whether one or specific countries are to be covered by national trademarks, or whether the effort of a community trademark for the whole EU is worthwhile.