How to protect your Innovations- An Approach to Intellectual Property Rights
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
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