This depends on the type of IP to be protected. Technical inventions, such as devices, methods, chemical or pharmaceutical products, operation methods or manufacturing processes, or the use of already known substances in new applications can be protected by a technical property right, in other words, by a patent or a utility model if applicable.
Rights to a name, which include words, word combinations, logos, or word/image combinations, are protected by the trademark law. New designs, for example, in the case of furniture, shoes, or other design products are protected by a design patent.
Industrial property rights (patents, utility models, designs, trademarks) achieve their protective function through application and registration of the property right at the German Patent and Trademark Office. In addition to these registration rights, there are statutory options for protection, which are based, for example, on copyrights or the competition law. Works of literature, science, and art as personal intellectual creations are subject to copyright protection.
Industrial property rights grant the owner monopoly rights to use and exploit his rights, whereas third parties are excluded if they do not have his consent. Industrial property rights in particular, such as patents, utility models, designs, or trademarks, give the owner an injunction right. You can prohibit third parties from using, offering, marketing, or advertising the intellectual property being protected. Through injunctive relief, the rights owner is entitled to damages, information, and if applicable the destruction of the infringing products.
In addition, industrial property rights have an advertising function and are an indicator of the innovative strength of a company. Technical property rights, such as patents or utility models, are essential for many investors for investing in a company or project. In evaluating a borrower, most lenders also require the availability of industrial property rights which can be subject to seizure. Industrial property rights therefore offer both legal and economic advantages.
An invention must basically be technical in nature. It must concern a new product, substance or substance composition, or a method (manufacturing method/operation method), or a new use of an already known substance. A business concept, an idea for a game, or software is not patentable. If the invention is novel and at the same time not obvious to a person having ordinary skill, therefore inventive, an application for a patent or a utility model can be filed to obtain protection.
In contrast to a utility model, after a request for examination has been made, a patent application is examined by the examining division of the patent office for patentability of the filed invention. Full property rights emerge in the form of a patent from the patent application only after the examination process has been successfully completed and a grant obtained.
A utility model is an unexamined property right; in other words, an application is made and, provided the formal requirements are met, it is entered in the register as a utility model without a substantive examination. An examination of the qualification for a utility model (whether the subject matter of the utility model is novel or based on an inventive step) does not occur.
A further difference is that in Germany a patent has a lifetime of at most 20 years, whereas the protection of a utility model can be extended to a maximum of 10 years. Further, no methods can be protected by a utility model. Another special aspect is that the utility model has a so-called 6-month grace period; during this period, an intentional or unintentional disclosure of the subject matter, protected by the utility model, by the utility model owner does not result in loss of validity of the utility model. Nevertheless, after a disclosure has occurred, a subsequent patent application is no longer possible in general.
A basic rule states: "File first, disclose later.” Unfortunately, this maxim is very often disregarded. Basically, prior to the successful filing of a patent application or a utility model, an invention may not be revealed to the public either in writing, or verbally, or by utilization in any form. This means that any presentation, exhibition at a trade show, or even a publication in a periodical invariably has the result that filing of a patent application and thereby protection of the invention are no longer possible.
If the invention has to be disclosed to a limited group of interested parties (e.g., as part of a project presentation or another type of presentation) before a patent application is filed, a non-disclosure agreement with the possible interested parties offers the option of being able to claim damages at least in a civil suit.
Basically, an invention must be practicable; this means that the person of ordinary skill must be capable of reproducing the invention. A prototype is not absolutely necessary. For a patent or a utility model application to be drafted by our patent law office, a description of the invention is sufficient, if possible supported by appropriate drawings. It is necessary to consider further whether the property right is to be registered to a private person or to a company. Because an industrial property right is an asset, it can have implications for both taxes and insolvency laws.
A name or logo (e.g., a graphic) is protected by the filing of a trademark application. This can be a wordmark, a wordmark/logo, a logo alone, or a 3D trade dress. In Germany, the period of protection for a trademark is at most 10 years, but it can be extended for another 10 years as often as desired. Care must be taken in creating a trademark that it cannot be mistaken for already existing trademarks or company logos for identical or similar goods or services of other companies. A trademark search will provide information on this. Another consideration is that a trademark must be used for the registered goods or services. Otherwise, the trademark protection for unused goods or services expires after a rather lengthy period of non-use. For this reason, only those goods or services should be entered in the goods register for which the trademarks will actually be used or for which the trademark will be used in the near future.
A design is protected by a design patent. In Germany, the period of protection is a maximum of 25 years. For a design patent to have validity, it is necessary that the submitted design is both new and unique. A design is regarded as new if no identical design has been disclosed before the filing date. Designs are regarded as identical when their features differ only in minor details. A design is unique when the overall impression of the design differs from the overall impression of a design that has been disclosed before the filing date. The degree of freedom of the designer in developing the design is taken into account here.
Examples of products that can be protected by a design patent are two-dimensional or three-dimensional forms of the whole product or a part of a product, which result in particular from the features of the lines, contours, colors, or shape, surface structure, or the materials of the product itself or its ornamentation.
The cost differs for each type of property right and depends on whether, for example, only a national property right or protection abroad as well is sought. Further, it depends on the countries in which an application for property rights is filed. Basically, the application and prosecution of industrial property rights are not inexpensive. Costs in the four-figure range in EURO should be expected. Five-figure amounts can also accrue rapidly if applications are made for protection in several countries. To maintain property rights, annual or maintenance fees also come due at regular intervals.
If the infringement is obvious, the infringer can be warned when there is a legally valid property right. In the case of unclear legal situations, a use inquiry can also be made in advance, in which the alleged infringer must explain why he believes he is justified in using the protected property.
If the warning is successful, the costs related to the warning are usually borne by the infringer. Otherwise, a civil suit can be filed at the competent district court to settle claims resulting from a property right.
We can further entrust the national custom authorities to seize goods, or enforce a right to inspection at the infringer facilites.
Basically, the owners of property rights are entitled to injunctions, damages, and information from the infringer. Depending on the type of property right, additional demands can be made, for example, the removal or destruction of the patent-infringing product.