Every day countless ideas are born with which money and fame could be achieved. But how can I, as an inventor, protect myself from imitators and prevent others from adopting my idea?
In addition to the possibility of having one’s inventions protected throughout Europe (presented in Gewerbereport 1/1998, p. 18 f), there is the less expensive solution of filing an application with the German Patent Office. The patent, the utility model, the trademark, the service mark, the design patent or the protection according to the copyright law can be considered as protective rights.
In this case, the inventor should already seek advice from a lawyer or patent attorney as to which protective right comes into question for his idea. In the following article the “German Patent ” shall be presented: The idea itself is never patentable. A patent can only be granted for new, technical inventions which are clearly distinguishable from the existing prior art and which are commercially applicable. The patent is therefore a technical property right.
The formalities to be observed when filing a patent application are contained in the information sheet for patent applicants, the Patent Application Ordinance and the Inventor Designation Ordinance. The costs sheet provides information on fees and expenses. A prescribed application form must also be completed. An effective, formally complete patent application consists of patent claims, the description, drawings, an abstract and the completed application form. The registration fee is DM 100.
If the application is to become a patent, an application is absolutely necessary. The application fee is DM 400. Of course, in this article it is not possible to refer to all the particularities of the patent procedure. You should therefore seek expert advice! If it is unclear whether the invention made is patentable and problems arise when drafting a patent application, you can take advantage of free inventor advice from patent attorneys.
You can also visit an information center. The information centres receive publications of the German Patent Office on an ongoing basis and keep them available for inspection during opening hours. A list of patent information centres can be obtained from the Patent Office. It is usually advisable to be represented by a legal or patent attorney from the outset in order to obtain comprehensive patent protection. For nationals, however, representation by a lawyer or patent attorney is not mandatory. Information on preparing and filing a patent application as well as on the patent granting procedure can be found in the “Information Leaflet for Patent Applicants”, which is available from the German Patent Office.
Technical inventions which are new, based on an inventive step and industrially applicable are protected. What constitutes an invention in any particular case can best be determined by consulting with a lawyer or patent attorney. An invention is new if it does not belong to the so-called “state of the art”. The date of filing is decisive for the state of the art. The inventor should carefully inform himself about the current state of the art before applying for a patent.
The advice of a legal or patent attorney is very helpful here. In any case, the publications of the technical field to which the subject matter of the patent belongs should be searched. An inventive step is deemed to exist if it is not obvious to a person skilled in the relevant technical field from the prior art and thus exceeds the skill of the average person skilled in the art (inventive step). The subject matter of the patent is industrially applicable if it can be made or used in any industrial field.
It is also important to observe the “principle of unity of invention “.
This states that only one invention may be described in an application. Several applications are therefore required for inventions which are not homogeneous among themselves. For foreigners, (i.e. those who do not reside in the country and do not have a registered office here) must be represented by a legal or patent attorney appointed in the country when filing the application. In principle, domestic inventors can file the patent application themselves. To obtain patent protection, the invention must be filed with the Patent Office. The application and summary must be in writing and in German. The application for grant is available from the German Patent Office and from specialist dealers.
The following entries, among others, must be made: – address for service – sign, telephone, date – function of the addressee – applicant/representative – code numbers – designation of the invention – other requests – declarations – priority – fees and expenses (for this purpose, a special cost information sheet is available from the German Patent Office). It should be noted in particular that, in the case of bank transfers, only the date on which the amount is credited to one of the accounts of the German Patent Office is deemed to be the date of payment. Furthermore, it cannot be pointed out often enough that failure to pay the fees on time is considered a withdrawal! Annexes, namely, e.g. – power of attorney – designation of inventor – abstract – description – list of reference signs, if any – claims – drawings – copies of the prior application The “application documents ” must disclose the invention so clearly and completely that a person skilled in the art can readily carry it out.
Thus, the invention must be fully disclosed. The “patent claims shall state the essential features of the invention. Finally, the invention must be described. The description is followed by the drawing of the invention. A summary must be attached to the application. A separate leaflet, which can also be obtained free of charge from the German Patent Office, provides information on the preparation of the abstract. Herein, the invention must be summarized schematically according to the following criteria:
– Designation – abstract, namely technical problem and solution of the same, as well as field of application – drawing However, models and samples of the invention shall be filed only upon request of the Patent Office. The inventor (first name, surname, address) shall be designated by the applicant without request within 15 months from the filing date.
The designation of the inventor shall be made even if the applicant himself is the inventor. If the applicant is a joint inventor, he must also be named. A separate form is also available from the German Patent Office for this purpose. After filing, the applicant receives a receipt confirming the filing date. The application is followed by the patent granting procedure. In the latter, the subject-matter of the application is examined for obvious obstacles to patentability. Should such exist, they will be communicated to the applicant and the latter will be invited to remedy the situation within a specified period or to withdraw the application within a specified period. If the deficiencies are not remedied or the application is not withdrawn, the application must be expected to be refused. After the request for examination has been filed, the substantive patentability of the subject-matter applied for is examined. Thereafter, the examination communication is issued, the questions of which are to be answered as completely as possible by the applicant. Here, too, failure to meet the set deadline is deemed to be a withdrawal of the application! If the application meets the prescribed requirements, and the subject matter of the patent application is patentable, and objected defects are eliminated, then the patent office decides to grant the patent.
This Decision shall be published in the Patent Bulletin. Upon publication of the grant in the Patent Gazette, the legal effects of the patent come into effect. The patent specification is published at the same time. However, the appropriate fee must be paid before the patent is granted. Again, failure to pay on time is considered a withdrawal of registration! Finally, the inventor has a property right to which he can refer in case of infringement. Almost – there is still one last hurdle to clear: Within three months of publication, the patent can be challenged by anyone by filing an opposition.
The opponent must give detailed reasons why, in his opinion, the invention is not worthy of protection. He must prove an obvious prior use, e.g. by naming printed matter or presenting drawings, delivery notes or by providing witnesses. If an admissible opposition is filed, the patent is reviewed to determine whether it was rightly granted and should be maintained or revoked because the oppositions contain material that is contrary to maintenance. This decision of the Patent Office can be challenged by appeal, which is heard by the Federal Patent Court. How can the patent granting procedure be made more cost-effective for the inventor ” On the one hand, the applicant can declare in writing to the patent office that he is prepared to allow anyone to use the invention in return for a fee.
In this case, the fees to be paid are reduced by half. Secondly, if payment is temporarily economically unreasonable for the applicant, he may request deferment of the fee for grant and the renewal fees. Furthermore, in the grant procedure there is the possibility of legal aid if there is sufficient prospect of the patent being granted. A free form with an information sheet is also available from the Patent Office for this purpose. An applicant who has been granted legal aid may, in certain circumstances, be assisted by a patent attorney or a lawyer for the purpose of dealing with the grant proceedings. The Patent Office also provides information and assistance.
However, it should be borne in mind that the grant of legal aid is not a substitute for an application for deferment of the grant fee and the annual fees. Attention: The Patent Office is not responsible for the assessment and exploitation of inventions or the prosecution of patent infringements. However, the patent information centres as well as patent attorneys or lawyers dealing with patent law can give advice. The Chamber of Patent Attorneys at the German Patent Office in also offers a free consultation service for inventors. Finally, important addresses that every (potential) inventor should remember: 1) DEUTSCHES PATENTAMT 80297 München Telephone 089/2195-0, Telex 523 534 Fax 089/2195-2221 Telephone information 089/2195-3402 Internet address http://www.deutsches-patentamt.de (2) DEUTSCHES PATENTAMT Berlin 10958 Berlin Telephone 030/25992-0, Telex 183 604 Fax 030/25992-404 Telephone information 030/25992-220
One final note:
By missing or insufficient consultation in the apron more money is often given away, than a careful consultation by a lawyer or patent attorney would cost. Expert advice can therefore not be recommended often enough to every inventor.
by Dr. Johannes Fiala
Our office in Munich
You will find our office at Fasolt-Strasse 7 in Munich, very close to Schloss Nymphenburg. Our team consists of highly motivated attorneys who are available for all the needs of our clients. In special cases, our law firm cooperates with selected experts to represent your interests in the best possible way.
About the author
Dr. Johannes FialaPhD, MBA, MM
Dr. Johannes Fiala has been working for more than 25 years as a lawyer and attorney with his own law firm in Munich. He is intensively involved in real estate, financial law, tax and insurance law. The numerous stages of his professional career enable him to provide his clients with comprehensive advice and to act as a lawyer in the event of disputes.
»More about Dr. Johannes Fiala
On these pages, Dr. Fiala provides information on current legal and economic topics as well as on current political changes that are of social and/or corporate relevance.
Arrange your personal appointment with us.
You are already receiving legal advice and would like a second opinion? In this case please contact Dr. Fiala directly via the following link.
(The first phone call is a free get-to-know-you conversation; without consulting. You will learn what we can do for you & what we need from you in terms of information, documents for a qualified consultation.)
