Patent protection

How to apply for a patent

What is a patent?

A patent protects the functioning of a technical invention against imitation. The invention can be a product (e.g. a machine or device) or a process (e.g. a manufacturing process). The invention must be applied for and granted a patent at the relevant office. The patent holder then receives a kind of state monopoly right for the maximum term of the patent of 20 years. Patent holders can therefore prohibit others from manufacturing, offering and selling, placing on the market, using, producing, importing or exporting the protected invention. This creates a massive competitive advantage over the competition.

In order for a patent to be granted for an invention, the invention must be

• technical,
• industrially applicable,
• be new and inventive.

The patent application process

First of all, we need to get to know your invention. This is best done in a personal meeting at our office or at your premises. Alternatively, a video call or telephone call is also possible. In this meeting, we clarify what the essential features of your invention are compared to the known prior art, what advantages are achieved with your invention and what modifications of your invention are possible. It is important that the invention is fully developed - at least in your mind. It should be clear which technical means can be used to implement the idea. We are happy to look at an existing prototype during the appointment. However, a prototype is not necessary for a patent application.

If your invention is a somewhat more complex technical object, we would be happy to help you with the drawings. You often already have technical drawings or other conceptual graphics. We are happy to use these as the basis for the patent figures. How and in what form you can send us the drawings is explained in our FAQs. If you do not yet have any corresponding drawings, please contact us. We are sure to find a suitable solution together.

In most cases, we do not need any further documents from you.

After the initial consultation and, if applicable, receipt of the drawings from you, we can start preparing the application documents consisting of the description, patent claims and figures. Our main focus here is on the accurate presentation of your invention and the optimal formulation of the claims, which should offer the broadest possible scope of protection and cover possible workarounds by competitors, but must also comply with the comprehensive legal requirements . We also pay attention to avoiding potential pitfalls in the wording, to the necessary accuracy, the reasonable scope of the documents and to the inclusion of many fall-back positions for the examination procedure. After correction and approval by you, the patent application is then filed with the Office. From the day the patent application is filed, it is no longer necessary to keep the invention secret and you can present your new invention to the public.

Examination of the patent

The official examination procedure now begins for your patent application. In addition to technicality and industrial applicability, the patent office will examine the novelty and inventive step of the patent claims. The examination result together with the searched prior art is communicated by the offices in so-called Office Actions. The first office action is usually received within 10 months of filing the application. The office actions set a response period in motion. This response deadline must be strictly adhered to. Otherwise the patent application may be lost.

Normally, the first office action is negative. In this case, the office does not promise to grant a patent, but threatens to reject the application. However, this does not mean that a grant is not possible! As in a good price negotiation, it is important not to go straight into the examination procedure with the smallest possible scope of protection, but to allow for some room for negotiation. In the reply to the Office (the so-called rejoinder), we now have the opportunity to precisely define your invention with fall-back positions from the description in relation to the prior art cited in the office action and thus secure the largest possible scope of protection for you.

Experience shows that the Office can be expected to issue approximately one office action per year. It usually takes 1 - 3 office actions before the patent is granted. If this takes too long for you, there are various ways of speeding up the procedure. Please contact us so that we can advise you individually on the most promising procedure in your case.

In which countries can I obtain patent protection?

Patents are granted by states or associations of states. They therefore always have a defined geographical scope of protection. A German patent offers protection in Germany, while a Chinese patent provides patent protection in China.

A patent application can be filed in almost any country in the world. To do this, a patent application must be filed with the relevant patent office. To do this, we rely on our extensive network of partner law firms. We can also handle an international application, the PCT application.

For companies based in Germany, the first option is always to file a German patent application with the German Patent and Trade Mark Office (DPMA) or a European patent application with the European Patent Office (EPO). By claiming priority, applications in other countries can be filed within 12 months of the first (German or European) patent application without any time pressure.

What is priority?

With the first patent application for an invention, the first application, the applicant receives a priority right for this invention. This priority right can be claimed for further patent applications for the same invention, the so-called subsequent applications. As a result, subsequent applications are treated as if they had already been filed on the filing date of the first application. The subsequent applications are therefore backdated by the right of priority. This has the advantage that the first filing does not pose a risk to the novelty and inventive step of the subsequent applications.

In order for the priority claim to be effective, the subsequent applications must be filed within 12 months of the first application. All applications must also relate to the same invention.

The advantage of using priority for foreign applications is that the invention can be sold, advertised and tested for almost a whole year after the first application and the economic viability in the various sales markets can be evaluated before a decision has to be made on potentially expensive foreign applications.

Various complex filing strategies are also possible through the use of priority. We will be happy to advise you individually as to which procedure is the right one for you.

Utility model application

The utility model is also a technical property right. The same requirements apply for obtaining protection as for a patent.

The invention must

• technical,
• industrially applicable,
• be new
• and there must be an inventive step.

The application documents to be submitted largely correspond to those for a patent application. In addition to an application for registration of a utility model, protective claims and a description of the invention, possibly with figures, must be submitted.

Differences between patent protection and utility model protection

These are the main differences to patent protection:

• The term: while a patent offers protection for an invention for up to 20 years, the term of protection for a utility model is limited to 10 years. This is only half as long, but is very often sufficient. In fact, many patents do not remain in force for the entire 20 years because new models replace the "old" invention.
• The subject matter of protection: With utility model protection, only technical products, but not processes, can be protected. Therefore, if the invention involves a process, a patent should be chosen instead of a utility model.
• The examination procedure and registration: Once the patent has been applied for, the Office examines it for novelty, inventive step and industrial applicability. The patent is only granted after a successful examination. The utility model is registered without examination. In the case of a utility model, the examination is postponed until the dispute (which may never occur) or the utility model cancellation proceedings. This makes the registered utility model legally less secure than the examined and granted patent. On the other hand, you also save valuable time and costs without the examination procedure and quickly obtain a registered IP right.
• The grace period: In contrast to patents, utility models have a grace period of 6 months. This means that if you have already published your invention, utility model protection may still be possible.
• The state of the art: The definition of the state of the art differs for patents and utility models, i.e. what knowledge your invention must be new and inventive in relation to. In the case of utility models, only written descriptions worldwide and uses in Germany count as prior art. Prior use of the same invention abroad would therefore be prejudicial to novelty for a patent application, but not for a utility model.

In summary, it should always be carefully considered for each individual case whether a utility model or patent application is the better choice. We will be happy to advise you.

Contact us for an initial consultation!