In contrast to other property rights such as designs, trademarks, etc., a patent is always a technical property right. In principle, it can therefore be obtained for inventions in all fields of technology. Among the main requirements are novelty and inventive step of the underlying invention, i.e. the invention must not belong to the prior art and must not be obvious to a person skilled in the art.

The prior art is any disclosure that was available to the public in written or oral form (in any language), by prior use or in any other way before the filing date of the patent application.

Furthermore, the underlying invention must also be industrially applicable, i.e. the invention must be open to being manufactured or used in at least one industrial field.

However, non-technical inventions, such as discoveries, scientific theories and mathematical methods, aesthetic creations, plans, rules and methods for mental activities, for games or for business activities, programs for data processing systems, as well as the reproduction of information, at least insofar as these objects or activities are claimed as such, are not patentable, for example in accordance with the European Patent Convention.

Also excluded from patentability are inventions whose commercial exploitation would be contrary to public policy or morality, plant varieties or animal breeds, as well as essentially biological processes for the breeding of plants or animals, processes for the surgical or therapeutic treatment of the human or animal body and diagnostic processes performed on the human or animal body.

The terms "patent" and "patent application" are often used interchangeably in everyday language. From a patent law perspective, however, a distinction between these two terms is essential.

An invention is first submitted to a national, regional or international patent office in the form of a patent application.

The patent application then goes through an examination phase, during which the responsible examining division checks whether the patent application meets the requirements for a patent grant. Among other things, the aforementioned criteria of novelty and inventive step are checked. After a successful examination, the patent office then grants a patent. The scope of protection that the granted patent grants to its proprietor (usually the applicant) is determined primarily on the basis of the claims as granted.

Every patent application remains secret for 18 months before it is published by the relevant patent office. However, earlier publication is usually possible upon request. A published patent application already grants the applicant provisional protection in some countries. This makes it possible, for example, to demand an injunction or compensation from a potential infringer on the basis of the claims pending at the time of publication. However, it is important to note that the final scope of protection is only determined retroactively by the scope of protection of the patent actually granted (or an amended patent following opposition). This could therefore result in compensation payments if it turns out afterwards that the alleged infringer does not infringe the scope of protection of the patent actually granted.

Only the granted patent definitively defines the scope of protection and grants complete protection with a certain degree of legal certainty. However, a patent does not automatically give the patent proprietor the right to freely manufacture or sell his invention. Rather, a patent gives its proprietor the right to prohibit third parties from manufacturing, using, selling or importing the patented invention without the proprietor’s permission. For this reason, a patent is not regarded as a "positive right of use" in industrial property law, but as a "prohibitive right".

You can obtain protection for a technical invention via both the patent and the utility model. One of the differences is the term. While a patent has a term of 20 years, a utility model is only valid for a term of 10 years. This is why the utility model is sometimes colloquially referred to as a "small patent". Another important difference is that it is generally not possible to obtain protection for a method using a utility model. In the case of a patent, novelty and inventive step are examined. A utility model, on the other hand, is only registered but not examined for novelty and inventive step. This means that you can quickly obtain an enforceable property right by means of a utility model, but its legal validity is only determined in the case of a dispute.

Unfortunately, the most frequently asked question in the patent system cannot be answered in a generalized manner. In addition to the attorney's fee, which is charged on an hourly basis, there are also official fees, which can vary considerably depending on the country, and costs for associate attorneys in foreign countries.

As an inventor, you present your invention to us, in person, by telephone or in writing. We will work with you to draft claims that offer you the best possible scope of protection. Based on this, we then draw up the description, together with drawings. As you can imagine, the time required for this depends largely on the complexity of your invention. For simple objects, this takes about 10-12 hours of pure working time. For more complex topics, the time required can easily double or even exceed this. Please feel free to ask for our current hourly rate in order to obtain a rough initial estimate.

In addition to the attorney's fee, the Patent Offices charge fees for each patent application. In addition to application and examination fees, (additional) search fees are charged, depending on the office. Grant fees must be paid for the grant of the patent. In the case of a European patent, official fees must also be paid to the national offices selected by the future patent proprietor to validate the European patent. Once the patent has been granted, the offices charge renewal or maintenance fees in order to maintain the patent for the desired term. These fees increase with the age of the granted patent.

A current list of the official fees charged by the EPO, including PCT fees and Unitary Patent (UP) Fees, can be found via the following link:

https://www.epo.org/de/applying/fees

A current list of the official fees charged by the German Patent and Trademark Office (GPTO) can be found via the following link:

https://www.dpma.de/service/gebuehren/index.html

For German patent applications, legal representation is mandatory if the applicant (including natural and legal persons) has neither their residence nor their registered office in Germany.

The situation is similar for EP applications. Natural and legal persons who have neither their residence nor their registered office in an EPC contracting state must be represented by an authorized representative in any procedure established by the EPC and must perform acts through them, with the exception of filing a European patent application.

Conversely, there is no obligation to appoint a representative for persons domiciled or resident in Germany or an EPC member state. Even if representation is not mandatory in this case, it may make sense to appoint a representative before the respective patent office. This is because the entire patent granting process is associated with a number of legal pitfalls which, if not observed, can quickly lead to the application being rejected or deemed withdrawn.

Here, too, a clear distinction must first be made between a patent and a patent application (see above). Although there is an international patent application, there is no international patent.

It is possible to file an international patent application under the international patent system PCT (Patent Cooperation Treaty) with the WIPO (World Intellectual Property Organization). This international application is valid for all PCT contracting states (link).

The PCT application then undergoes a fixed examination procedure. Usually, the international search report is received within 16 months of the filing date (or priority date), which can (but does not have to) be replied to by filing a request for examination for a fee. The time limit for this is 22 months from the filing date (or priority date).

If the request for examination has been filed, the so-called preliminary report on patentability (IPER: International Preliminary Examination Report) is usually received within 28 months of the filing date (or priority date).

Within 30 or 31 months, depending on national regulations, the national or regional phase can then be initiated in one or more countries or associations of countries (such as the EPC). The application can then only be continued in the countries in which the international application has been nationalized or regionalized. Only in the selected countries can a national or regional patent be granted.

No. The European Patent Convention - EPC - does not include the same countries as the EU. Currently (as of 09/2024), the EPC has a total of 39 member states (link) as well as one extension state (link) and five validation states (link).

A European patent application initially names all the above-mentioned states as a standard. However, once a European patent has been granted, it must be explicitly validated in the respective states in which protection is desired. Only after validation has taken place does the European patent become protected in the respective state. The European patent validated in the respective state is equivalent to a national patent valid there.

If you have received a warning notice, it is advisable to remain calm and seek legal advice before taking any steps of your own. There are many options regardless of whether you are actually infringing or not, and it must be clarified whether there is actually a warning notice or a preliminary stage notice, a so-called authorization enquiry. You should respond to the warning letter in any case, even if you are of the opinion that you are not infringing. We can help you in collaboration with cooperating lawyers.