How to protect your InnovationsAn Approach to Intellectual
Property Rights
Dr. Matthias Nobbe
German and European Patent Attorney
European Trademark and Design Attorney
Demski, Frank & Nobbe
Intellectual Property Rights
€
€
€
€
€
€
€
€
Introduction
What can be protected?
Introduction to IP Rights
Where can I get information on protective rights?
What can I do with the information?
Information management
Strategic considerations – planning IP rights
IP rights abroad
Exploiting IP rights
2
© Dr. Matthias Nobbe
Intellectual Property Rights
€
Protecting your creativity and ideas, i.e. ideas
on
€
€
€
Subject matter of any IP right is the effort in
€
€
€
the commercial field, e.g. by IP rights
non-commercial field, e.g. by Copyright
Substantial Results (inventions and designs)
Symbols (distinguishing marks)
Timely limited exclusive rights
3
© Dr. Matthias Nobbe
Intellectual Property Rights
€
Protection for ideas
€
on the field of techniques by a
€
€
€
on the field of aesthetic creations by
€
€
Design rights - Copyrights
on the field of names by
€
€
€
€
Patent (+ SPC)
Utility model
Trade marks ( Logos – colours – shapes – sounds)
Company names
Geographic indications
on the field of “pure” biology by
€
Plant variety protection
4
© Dr. Matthias Nobbe
Intellectual Property Rights
€
Institutions in Germany / Europe
€
€
German Patent and Trademark Office - European
Patent Office
Bar (Attorney ship)
€
€
€
Patent Attorneys – Attorneys at Law
Representatives before the EPO
Jurisdiction (National Courts)
5
© Dr. Matthias Nobbe
Intellectual Property Rights
€
German Patent and Trademark Office
€
€
€
Competent for granting and upholding patents
Superior Federal Authority
President
€
€
€
Main location Munich
€
€
€
5 Departments
Arbitrative Boards
Branch office Jena
Patent information centres
Internet: DPMA - GPTO
6
© Dr. Matthias Nobbe
Intellectual Property Rights
€
Patent Attorney Bar (Internet: www.patentanwalt.de)
€
€
€
Legal consultation on the IP field
Specialized education
Prerequisites for admission to the trainee program
€
€
€
€
€
€
Patent attorneys are members of the Patent Attorney Bar
approx. 2000 patent attorneys in Germany
Representative before the OHIM
€
€
Masters degree in natural or engineering science
One year practical work
Apprenticeship for ~ 3 years in a patent attorneys firm and GPTO
European Trademark Attorney
European bar examination
€
European Patent Attorney
7
© Dr. Matthias Nobbe
Intellectual Property Rights
€
Jurisdiction
€
€
German Federal Patent Court (Internet: BPatG )
District Courts
€
LG/OLG
€
€
Infringements of IP rights
Federal Supreme Court
(Internet: BGH – FSC )
€
€
Upholding IP rights
Considering legal questions (Revision)
8
© Dr. Matthias Nobbe
Intellectual Property Rights
IP rights = Commercial Success ?
€
€
€
€
Protecting your investments for research and development
Exclusive right for exploitation
Right to prohibit use of protected items
Freedom to producing non-protected items in Germany
€
€
€
€
Slavish imitation allowed
Licenses
Brand value and reputation
Advertising and marketing effects
9
© Dr. Matthias Nobbe
Patents
10
© Dr. Matthias Nobbe
Patents
NOTE:
The Patent application must be a clear and complete presentation of the
invention
An invention must be disclosed in the application documents in a manner
sufficiently clear and complete for it to be carried out by a person skilled in
the art. It does not suffice to simply fill in the request form.
Your patent application must comprise the following additional elements:
€
Technical description of the invention, list of reference signs, where applicable
€
Patent claims
€
Drawings, if required
€
Abstract
€
Naming of the inventor
11
© Dr. Matthias Nobbe
Patents
NOTE:
The technical description and the patent claims must be filed together with
the application. The abstract and the inventor's name can be submitted
subsequently, within 15 months from the date of filing.
You must fully present (disclose) your invention when filing the application
since a subsequent extension of the technical information is not
admissible.
Within one year from the date of filing, however, you can add further
details or a further development of your original invention by claiming a
domestic priority.
12
© Dr. Matthias Nobbe
Patents
13
© Dr. Matthias Nobbe
Patents
14
© Dr. Matthias Nobbe
Patents
15
© Dr. Matthias Nobbe
Patents
Note: Patent Claims
The patent claims are very important for your patent application
since they define the scope of protection of your patent. You
should draft the claims very precisely; all technical features to be
protected must be exactly specified in the claims.
Examples how to draft patent claims are given in the GPTObrochure 'Information for Patent Applicants'.
16
© Dr. Matthias Nobbe
Patents
§ 1 (1) German Patent Act 2005
Patents will be granted for inventions on each
technical fields, which are
€
novel,
€
based on an inventive activity and
€
susceptible for industrial application
17
© Dr. Matthias Nobbe
Patents
§ 1 (2) Patent Act
Patents will also be granted for:
€ Products made of biological material or containing it
€ Processes for producing or processing such biological
material or making use thereof
€ Biological material made or isolated from its natural
environment, even if it was present in nature
18
© Dr. Matthias Nobbe
Patents
Exclusions from Patentability - § 1 (3) Patent
Act
Discoveries
€ Aesthetic creations
€ Plans, rules and processes for mental activities, for
games or commercial activities or programs for
computers;
€ reproduction of information,
only, if protection is sought for the objects as such.
€
19
© Dr. Matthias Nobbe
Patents
The Human Body - § 1a Patent Act
€
The human body, at the various stages of its formation and
development, including the germ cells, and the simple discovery of
one of its elements, including the sequence or partial sequence of a
gene, cannot constitute patentable inventions.
€
An element isolated from the human body or otherwise produced by
means of a technical process, including the sequence or partial
sequence of a gene, may constitute a patentable invention, even if
the structure of that element is identical to that of a natural element.
€
The industrial application of a sequence or a partial sequence of a
gene must be disclosed in the patent application.
€
If a sequence or partial sequence of a gene the structure of which is
identical to the structure of a natural sequence or partial sequence of
a human gene , the use thereof has to be indicated in the claim.
20
© Dr. Matthias Nobbe
Patents
Exclusions from Patentability - § 2 Patent Act
1. Inventions against the public order and the “ordre public”
e.g.: tools for burglars
2. a. Processes for cloning human beings;
b. Processes for modifying the germ line genetic identity of human
beings;
c. Uses of human embryos for industrial or commercial purposes;
d. Processes for modifying the genetic identity of animals which are
likely to cause them suffering without any substantial medical benefit
to man or animal, and also animals resulting from such processes.
21
© Dr. Matthias Nobbe
Patents
Plants and animals - § 2a Patent Act
Exclusions:
€
€
Plants and animals as well as substantially biological methods for
breeding plants and animals
Methods for treatment of the human or animal body, surgically,
therapeutically or diagnostically – this does not apply for the products
used in such processes
No Exclusions:
€
€
Plants and animals if the invention is not restricted to a specific plant or
animal
A microbiological or other technical process, or a product obtained by
means of such a process other than a plant or animal variety
22
© Dr. Matthias Nobbe
Patents
Prerequisites for Protection:
Technical invention – No discovery
The technical invention must be
€
novel
€
based on an inventive activity
€
susceptible for Industrial applicability
23
© Dr. Matthias Nobbe
Patents
Novelty - § 3 (1) Patent Act (2005)
€
€
The invention has to be novel in view of
the state of art
State of art comprises
Written or oral description
€ Public use
€ Disclosure in any other way
anywhere in the world
€
24
© Dr. Matthias Nobbe
Patents
Examination for Novelty
€
Relevant date
€
€
Application date
optionally an earlier date, e.g. priority date of
€
€
€
an application abroad
exhibition
Exception: evident abuse
25
© Dr. Matthias Nobbe
Patents
Inventive Step - § 4 Patent Act (2005)
€
The invention is considered to be based on an inventive step if,
having regard to the state of art, it is not obvious to the skilled
man.
€
I.e.: the skilled man has to know the state of art which has to
be public
Industrial Applicability - § 5 Patent Act (2005)
€
The invention is considered to be susceptible for industrial
application if it can be used on any commercial field including
agriculture
26
© Dr. Matthias Nobbe
Patents
Granting Proceedings
€ Filing the application documents with the
patent office
€
Application documents § 35 Patent Act (2005)
€
€
€
€
Description of the invention
Patent claims for a
Drawings (if applicable)
Abstract
27
© Dr. Matthias Nobbe
Patents
€
Patent claims: Device claim
€
Subject of the claim can be
€
Device or part thereof
€
€
€
€
€
€
€
€
Machine
Tool
Component
Chemical substance
Chemical composition
Microorganism
Microbiological product
Genetically modified products
28
© Dr. Matthias Nobbe
Patents
€
Patent claims: Method claim
€
Working method
€
€
€
Manufacturing method
€
€
€
Starting Material = Product
e.g.: cleaning, measuring, delivering
Starting Material € Product
e.g.: milling, sintering, chemical conversion
Use of a
€
€
€
new substance
known substance
Working- or manufacturing method
29
© Dr. Matthias Nobbe
Patents
Specification – an Exemplary Structure
€
€
€
€
€
€
€
Introduction
State of the art
Disadvantages of the state of the art
Problem of the present invention
Solution for said problem
Advantages of the invention
Examples for the invention (if applicable)
€
€
€
Example for manufacturing
Example for use
Description of the Figures (if applicable)
30
© Dr. Matthias Nobbe
Patents
Granting Proceedings
€
Filing the application with the Patent Office
€
€
€
Request for granting a patent
Application documents
Naming (§ 37 Patent Act)
€
€
€
€
€
€
the inventor, or
or group of inventors?
Filing fee - € 60.If intended, further requests
Patent filing regulations !!
German Act on Employees' inventions!!!
31
© Dr. Matthias Nobbe
Patents
German Act on Employee´s Inventions
€
€
€
€
€
Generally, an inventor has the right to the invention
If an employed inventor makes an invention who has the
right to it? - Employee <-> Employer
-> Employee has to inform the Employer
-> Employer can decide if he accepts the transfer of the
invention of if he declines
Special Rules for People at the University in Germany
32
© Dr. Matthias Nobbe
Patents
§ 42 of the German Act on Employees' inventions as per the new version enacted by
the Act of 18 January 2002
€
€
€
€
€
€
Inventions made by persons employed by a university are governed by the following,
special regulations.
The inventor shall be entitled to make public the employment invention in the course of his
teaching and research activity, so long as he has notified the employer of this in good time,
normally two months' previously. Section 24 paragraph 2 shall not apply.
If an inventor declines the making public of his employment invention on the basis of his
freedom of teaching and research, he shall not be obliged to notify the employer of the
invention. Where the inventor decides to publish the invention at a later date, then he has
to notify the employer or the invention without delay.
In the event of the claim of the employment invention the inventor shall retain a nonexclusive right to the use of the employment invention within the framework of his teaching
and research activity.
Where the employer exploits the invention, the compensation for this shall be 30% of the
income received from the exploitation.
§40 number 1 shall not apply.
33
© Dr. Matthias Nobbe
Patents
Granting Proceedings
€
Process of the granting proceedings
€
Entry at the Patent Office: Date-stamp
€
Assigning an application number - 10 2004 034567.8
€
Technical Classification of the application by means of
the International Patent Classification
34
© Dr. Matthias Nobbe
Patents
International patent classification - IPC
€
€
€
€
€
€
€
€
Section
Section
Section
Section
Section
Section
Section
Section
A: Human necessities, Health
B: Performing operations; Transportation
C: Chemistry and Metallurgy
D: Textiles; Papers
E: Fixed Constructions; Mining
F: Mechanical Engineering, Lighting; et al.
G: Physics
H: Electricity
35
© Dr. Matthias Nobbe
Patents
Granting Proceedings
€
Process of the granting proceedings
€
€
€
€
Examination for obvious mistakes § 42 Patent Act
Publication of the application
€ Publishing the application documents for public
inspection 18 month after the
€ Filing date
€ Priority date
in the form of the published application § 32 Patent Act
Registration in the patent register - Patentrolle
36
© Dr. Matthias Nobbe
Patents
Granting Proceedings
€
„Substantive“ proceedings at the DPMA
€
Request for search § 43 Patent Act - € 250.€
€
Request for examination of the application § 44 Patent
Act
€
€
searching only for relevant documents
Requirements
€ Request max. 7 years after filing of the application
€ Examination fee € 150.-/ 350.-
Examination for
€
€
€
Novelty (absolute novelty)
Inventive step
Industrial application
37
© Dr. Matthias Nobbe
Patents
Granting Proceedings
€
Examination proceedings
€
Official communication § 45 Patent Act
€
Reply to official communication § 38 Patent Act
€
Restriction of patent claims if necessary
€
Oral Hearing § 46 Patent Act
€
Conclusion of the Examination proceedings by
€
Granting § 49 Patent Act
€
Publication of the grant and of the patent documents
€
Rejection § 48 Patent Act
€
If intended, appeal at the Patent Court BPatG
38
© Dr. Matthias Nobbe
Patents
National patent application in DE
DE patentapplication
Search/
Examination Filing abroad Publication
Grant
Expiration
• 12 months
18 months
ca. 1-3 years
• 20 years
39
© Dr. Matthias
Nobbe -DFN
© Dr. Matthias Nobbe
39
Patents
The granted patent
€
Period of protection max. 20 years from filing date - § 16 Patent
Act
€
€
€
€
Assignment of the patent - § 15 Patent Act
Licensing the patent rights
Opposition proceedings - §§ 59 etc Patent Act
€
€
€
Annual fees § 17 Patent Act
Purpose of the opposition proceedings
Time limit for opposition 3 month after granting
Nullity proceedings - §§ 81 etc Patent Act
€
Purpose of the action for revocation
40
© Dr. Matthias Nobbe
Patents
The granted patent
€
Effect of the patent § 139 Patent Act
€
€
€
€
Exclusive right for the patentee to use the invention
Right of the patentee to prohibit
Scope of protection § 14 Patent Act
Infringement litigation § 143 Patent Act
€
€
District courts have competence for suit
Assertion of claims for
€
€
€
Omission
Disclosure
Compensation
41
© Dr. Matthias Nobbe
Patents
The granted patent
€
Extension of the protection term by filing an Suppl.
Protection Certificate for
€
€
€
Pharmaceuticals
Pesticides
for up to 5 years additional protection
Requirements
€
€
€
Valid Patent in force
First Marketing Approval granted by e.g. EMEA (6 months
term)
No other Certificate granted
42
© Dr. Matthias Nobbe
Utility models
§1 (1) Utility Model Act
As utility model, inventions are protected, which are
€
new,
€
based on an inventive step and
€
are industrial applicable.
43
© Dr. Matthias Nobbe
Utility models
€
Exceptions for Registrability
€
€
as for patents, but methods and biological inventions cannot
be claimed
Requirements for protection
€
Novelty
€
State of the art differs from that of patents. Novelty destroying
are
€
€
€
€
€
Written descriptions
National use !!!, but
Grace Period of 6 month
Inventive step (not activity) !!
Industrial application
44
© Dr. Matthias Nobbe
Utility models
Registration Proceedings
€
€
Filing with the Patent Office
Application documents
€
€
€
€
€
€
Description of the invention
One or more claims
Drawings (if applicable)
Formalities examination
Registration without substantive examination
Protection term max. 10 years (3+3+2+2 years)
€
Effect of Protection
€ as for patents
€
Cancellation Proceedings
45
© Dr. Matthias Nobbe
Information management
Searching in patent databases (ESPACENET; Dialog;
WPI; Questel) and evaluating Search Results for:
€
Watching technical trends
€
Watching intellectual property activities of competitors
€
Assessing your own position:
€
€
How are your own activities influenced by intellectual property
rights of third parties?
Any Infringement ? Circumvention – Your own intellectual
property rights?
46
© Dr. Matthias Nobbe
Design Act
Act concerning Copyrights on Designs and Models
€
€
€
Industrial property right on the basis of copyrights with
aesthetic content
As design, creations (aesthetic creations) can be protected
which are new and have an individual character
Protection requirements
€
Coloured and/or shaped creations of distinctive two- or
three-dimensional industrial objects
€
Areal products – shaped products
€
Novelty
€
Individual character
47
© Dr. Matthias Nobbe - DFN
Design Act
€
Novelty
€
No definition for novelty in the act
€
Objective novelty
€
subjective novelty or
€
€
€
€
Relative-objective novelty, i.e. restricted to the same cultural
group
Case law: A design or model is new, if the design elements
which constitute its individual character are not known to
domestic experts nor could have been known even under
reasonable consideration of the available designs, at the date
of filing.
Grace period of 6 month
Individual character
48
© Dr. Matthias Nobbe - DFN
Design Act
€
Filing procedure
€
Filing with the patent office
€
€
Request for registration incl. drawings/ photographs
Application documents
€
€
€
€
€
€
Class filing of up to 50 designs
Filing fees
Formalities examination – removal of defects
Registration in the design register
Publication in the Official Design Journal
Period of protection of max. 5 x 5 years
49
© Dr. Matthias Nobbe - DFN
Trademarks, Brands and Company Names
First contact with the market
€
Name of the company
€
Name of the product
€
Name of the service
Choice of name – basic considerations:
€
€
€
Is the name available?
Are there any rights of other parties being
affected?
€
Rights to a name?
€
Rights to a brand name / trademark
If not, are there any legal bars?
50
© Dr. Matthias Nobbe - DFN
Trademarks, Brands and Company Names
Choice of name – legal requirements
€
Legal regulations for names in
€
BGB – German Civil Code
€
HGB – Commercial Code
€
GmbHG - Code for Companies of limited Liability
€
AktG – Stock Companies Act
€
Trade Mark Act
51
© Dr. Matthias Nobbe - DFN
Trademarks, Brands and Company Names
What can serve as a trade mark?
€
€
€
€
€
€
€
€
Words
Figures
Alphabetic characters
Numbers
Sounds
Three-dimensional creations
Form or packaging of goods
Colour/Colour combination
52
© Dr. Matthias Nobbe - DFN
Trademarks, Brands and Company Names
Trade mark law
€
What is a „trade mark / brand“ for?
€
€
€
€
€
Protection for
€
€
€
€
designates goods/services
designates the source of origin
allows identifying the connection between goods and
manufacturer
indicates quality of the goods
Brand name
Company name
Geographical indication
The Importance of the House Mark by Th. Nie
53
© Dr. Matthias Nobbe - DFN
Trademarks, Brands and Company Names
Trade mark law
€
Origin of trade mark protection
€
€
€
by registration
by constant prestigious use on the market
by using it as
€
€
€
€
€
€
Commercial names/brands
emblems of companies
specific commercial names
Work title (software)
Protection requirements
The trademark must be distinguishable, but must not be
descriptive, an indication that needs to be kept free,
misleading or an official indication, quality mark, symbol etc.
54
© Dr. Matthias Nobbe - DFN
Trademarks, Brands and Company Names
Trade mark law
€
Filing procedure
€
Filing with the patent office
€
€
€
€
€
Application documents
€
Request
€
Representation of the trade mark
€
List of goods (classified)
€
Filing fee 300,- Euro
€
+ fee for the 4th and each further class, per class 100,- Euro
First examination
„absolute“ examination procedure
Registration of the trade mark
Opposition procedure - „relative“examination procedure
55
© Dr. Matthias Nobbe - DFN
Trademarks, Brands and Company Names
Trade mark law
€
Registered trade mark
€
€
€
€
Territorial scope
Legal effect
Compulsory use after 5 years after registration
Protection for 10 years after filing
€
€
Prolongation for another 10 years
End of protection by
€
€
€
Expiration
Abandonment
Cancellation
56
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
National – International regulations
€
€
World Intellectual Property Organization
WIPO/OMPI
World Trade Organisation WTO
€
€
€
General Agreement on Tariffs and Trade - 1948
Agreement on Trade-related Aspects of IP-Rights –
1994 added to GATT
Paris Convention - PVÜ
57
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
International regulations on the field of
€
Patents
€
€
€
Trade marks
€
€
€
€
European Patent Convention
Patent Cooperation Treaty
Madrid Agreement concerning the international registration of
trade marks
Protocol relating to the Madrid Agreement
Community Trade Mark Convention
Design
€
€
Community design
International design
58
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
European Patent Convention
€
€
Common granting procedure for 38 countries
European Patent Office
€
€
€
€
€
€
Internet: EPO Presentation
Munich, The Hague, Berlin, Vienna
Three official languages: English, French, German
Filing of the application documents with the national Patent Offices
or the European Patent Office
Protection for up to 38 countries + 2 extension countries BA + ME
Requirements for patentability as under national law
59
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
European Patent Convention
€
€
€
€
€
Granting procedure
Formalities examination
Search
Publication of the European patent application
Substantive examination by the EP Examiner
€
€
€
€
Novelty
Inventive step
susceptible of industrial application
Grant or rejection
60
© Dr. Matthias Nobbe - DFN
Protecting y...
61
© Dr. Matthias Nobbe
Protecting your rights abroad
European patent application
Patent appl.
Search/
EP-filing
Examination
• 12 months.
Publication
Grant
Expiry
38 Nations
EP
18 months
ca. 1-3 years
• 20 years
62
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
European Patent Convention
€
€
Granting procedure
Publication of the grant
€ EP 2104520 B1
Transfer into single national patents where intended incl.
filing the translations
Effect as national patent
€
€
€
€
€
€
but national proceedings for revocation
Opposition procedure
Appeal Procedure
Target: Community patent
63
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
Patent Cooperation Treaty – PCT
€
€
€
€
One common application with one receiving office for all countries
designated by the applicant max. ~ 139 countries
Filing is possible in different languages: English, German, French,
Spanish, Russian, Chinese, Japanese
Filing with the receiving office
Acceptance of the application documents and forwarding them to
the international bureau of WIPO
64
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
Patent Cooperation Treaty – PCT
€
€
€
€
International search for prior art
Publication of the application and search report about 18 month
after application/priority application together with a First Opinion
Optional Request for preliminary int. examination up to the ~ 22nd
month for a Second Opinion
Entry into the national phase until 30th month and subsequent
procedure as for a national application
65
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
PCT patent application
First patent
application
PCT- appl.
National patent
filing
applications
PCT-Search Publication
• 12months
National
grants
Expiry
ca. 142 Nat. appl.
PCT
18 months
• 30 months
• 20 years
66
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
IR Trade mark according to the Madrid Agreement (incl.
corresponding protocol )
€
€
Common application for 81 member states
Trade mark according to the
€
€
€
€
€
€
€
Agreement ~ 56 states
Protocol ~ 78 member states incl. EU, US, GB, etc.
Filing with national office
Forwarding to the Intern. Office of WIPO
Registration and publication of the trade mark
Refusal of protection for single countries; local
representative required
Protection period 10 years
67
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
Community trade mark
€
€
€
€
€
€
One common trade mark
Protection in the European Union
Filing in Alicante with the Community Trade Mark
Office - OHIM
Protection requirements are similar to national
regulations
Registration
Opposition proceedings
68
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
The La Hague Design Treaty
€
Subject matter of protection: models with aesthetic effect
€
Common design application for 55 states
€
Direct deposit with the WIPO
€
Effect as national design
€
No national deposit required
€
Figures are sufficient for deposit – no original
€
Period of protection 15/25 years as national law
69
© Dr. Matthias Nobbe - DFN
Protecting your rights abroad
Community Design Registration
€
€
€
€
€
Registered – not-registered community designs for
the EU !!!
Central proceedings – Filing with the OHIM in
Alicante
Filing effective from 1. April 2003
Protection requirement similar to national
requirements
Period of protection 25 years
70
© Dr. Matthias Nobbe - DFN
Intellectual Property Rights
Thank you for your attention, and, one day hopefully ,
you might be the Inventor of the Year.
For further information, please contact:
Dr. Matthias Nobbe
Demski, Frank Nobbe
Reichspräsidentenstr. 21-25
45470 Mülheim an der Ruhr
Germany
T: +49-208-6946450
E: [email protected]
71
© Dr. Matthias Nobbe