PATENT

protects: technical solutions
e.g.: objects, devices, work and manufacturing processes
is: an officially examined prohibitive right, therefore difficult to challenge
prerequisites: novelty and an inventive step required: claims, description of the invention, possible figures, summary
official process: grant of patent following examination by the competent patent office
where: in individual countries or across several countries (e.g. European patent)
length of protection: maximum 20 years

There is no generally applicable approach to protecting your ideas. Many factors must be considered, such as the competitive environment, your market position (strong or more defensive), your existing portfolio, budget and intended goal. Do you want to be granted a technical monopoly, execute a “reserve registration” or determine if the novelty might better be kept secret? We take the time to develop the optimal solution with you.

One approach that has often proven its worth is to conduct a patent search to identify the state of technology regarding the invention. Rest assured that if after such a search we believe that applying for a patent for your invention is not advisable, we will tell you so frankly. When we weigh the pros and cons of a patent application together with you, it is generally useful to commission an official search from the patent office. Based on the official search report as well as further developments in the intervening time period, subsequent domestic and international applications can be made during the priority year.

Worldwide patent literature is also the most comprehensive source of technical literature and can provide developers with decisive help in addressing problems. The wheel is frequently reinvented a second or third time – or more – through simple ignorance.

Every patent application is subject to an examination process before a patent is issued. It is important to understand that, in this context, a patent granted provides you with a prohibitive right, but not a right of use. This means that you may forbid competitors from using your protected invention based on the patent, but not that you are authorised by the patent to use your own patent-protected product. There is an ever-present risk that your own patented product infringes on other patents. 

An innovation can be a two-edged sword. It can and should improve your own product, and thus your market position. However, the competition has likely had the same goals and perhaps the same ideas – and possibly they have already protected these as well. In short: a search for third-party IP rights should be performed before any market introduction. At the very least you should regularly monitor the patents of your direct competitors. Conflicting IP rights, when discovered in a timely manner, need not be accepted without protest. A claim can be made in your name (or on behalf of a straw man) against a recently granted patent, for example. This represents a cost-effective alternative to an action for annulment.

If you are accused of patent infringement, the first order of business is to remain calm and consult rationally about the (often available) solutions. First we investigate whether the claim is in fact justified. We also check the validity of the disputed patent. Provided the other party has not yet filed suit, our primary goal is generally to reach an out-of-court settlement, which might include a royalty payment, for example. If the other party has already begun legal proceedings, filing suit for annulment of the disputed patent (action for annulment), appended to the infringement proceeding with the German Federal Patent Office, creates breathing space and is often the basis for further settlement negotiations. We carry out all discussions with the opposing party in consultation with you – ultimately, many infringement cases are settled out of court. We also guide and support you in all proceedings before the courts as well as the patent office or the German Federal Court of Justice.

To avoid future infringement claims or royalty payments, we develop workarounds in close cooperation with your development department, which are equivalent to the protected competitor solution, feasible from an economic standpoint, and eliminate the risk of damages to the greatest possible extent.

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