FAQ

Can I talk to all the patent attorneys at Hannke Bittner & Partner about my secret invention?

Yes, according to Section 39a of the German Patent Attorney Act, we are obliged to maintain confidentiality. We also impose this duty of confidentiality on all our employees, such as our patent engineers, patent attorney assistants and office staff.

What costs are incurred for the patent application, trademark or design protection?

Every invention, every trademark and every design is unique! That's why the filing effort and therefore the costs are different. We generally agree on package prices when registering patents, utility models, trademarks and designs. This gives you the best possible cost control. We will be happy to provide you with an individual offer.

For the processing of objections and examination notices in registration/grant proceedings, different costs are incurred depending on the work involved, but these are usually within certain limits. We will be happy to inform you in a personal meeting about the costs to be expected. We will also be happy to provide you with an individual quote for inquiries regarding searches, the drafting of contracts or the preparation of expert opinions.

In IP infringement proceedings, the costs are generally calculated in accordance with the German Lawyers' Fees Act (RVG). We will be happy to explain to you in detail what costs you can expect in your case.

Before which authorities and courts does Hannke Bittner & Partner represent me?

As German Patent Attorneys, European Patent Attorneys, European Trademark and Design Attorneys, we represent you in matters of intellectual property protection before the following offices and courts:

German Patent and Trademark Office (DPMA)
European Patent Office (EPO)
European Union Intellectual Property Office (EUIPO)
World Intellectual Property Organization (WIPO)
Federal Patent Court (BPatG) and Federal Court of Justice (BGH) in appeal and nullity proceedings
Regional and higher regional courts and the Federal Court of Justice (BGH) in patent, trademark, design and utility model litigation
Unified Patent Court (UPC)
Court of Justice of the European Union (CFI) and European Court of Justice (ECJ) in Community trademark and Community design appeal proceedings

We advise and represent you out of court in all matters relating to intellectual property rights.

What documents are required for a patent, trademark or design application?

For a patent or utility model application, we first need information about your invention. The best way to find this out is to talk to you in person. You do not need to prepare any special documents. We also need the name and address of the natural or legal person in whose name the application is to be filed as well as the name and address of the inventors.

Patent and utility model applications usually contain drawings of the subject matter of the invention, the so-called figures. If the subject matter is more complex, technical drawings in pdf format can be used as the basis for creating these figures. Here we count on your cooperation. During the consultation, we clarify exactly which drawings of which views and details of your invention we need from you. The graphic and technical requirements for such drawings can be found here.

For a trademark application, we need the trademark to be applied for (in the case of word or figurative trademarks, an image file) as well as the name and address of the natural or legal person in whose name the application is to be filed. We will prepare the list of goods and services for you.

For a design application, we need images of the design to be protected, the so-called design reproductions. The graphic and technical requirements for this can be found below in the FAQ. We also need the name and address of the natural or legal person in whose name the application is to be filed. We will take care of the brief description of the design subject matter and the classification in the Locarno Classification for you.

What must the drawings for a patent or utility model application look like?

For a patent or utility model application, we require line drawings in black and white. Photos or photorealistic representations in color or grayscale are not suitable. The assembly instructions of a well-known Swedish furniture store are suitable for comparison.

In our experience, the following points should be noted:

Use different shading instead of colors or shades of gray
Do not "wrap" graphics in Word or PowerPoint files or embed them in an email, but attach them to the email instead
use lossless formats for graphics (BMP or TIF, for example), not JPG (as they are lossy, keyword: compression artifacts)
if the graphics are too large (35 MB maximum per e-mail including attachment), pack them in an archive, e.g. standard ZIP, alternatively RAR or 7z
Alternatively, or if the file is still too large, you can share it via a web portal, e.g. Microsoft OneDrive (included in the Microsoft Office 365 package)
All common CAD software supports PDF export, alternatively CDR (CorelDRAW 2019)

Tips from the German Patent and Trade Mark Office on the subject of drawings can be found here

Tips from the European Patent Office on the subject of drawings can be found here.

What are the requirements for the image file of a brand representation?

To register a figurative mark or a word/figurative mark, we require a representation of the mark as a file in JPEG format. The file should have a good resolution (not pixelated, min. 96 dpi, max. 300 dpi). The image size must be at least 945 pixels in width or height and max. 2835x2010 pixels, or max. 2 MB.

For other trademark formats, e.g. sound trademarks, multimedia trademarks or three-dimensional trademarks, you will find the technical requirements under the following links:

the German Patent and Trade Mark Office
at the European Intellectual Property Office (expand first question)

What are the requirements for the image files of a design rendering?

To register a design, we need images of the design. Up to 10 (DPMA) or 7 (EUIPO) reproductions of the design can be submitted per application. Here, for example, images of the front, back, left, right, top and bottom with an additional perspective representation are suitable. The images should show the product to be protected on a neutral background without accessories. Only one product design can be registered per design application. The different reproductions must therefore show the same product from different angles.

Please also observe the instructions of the German Patent and Trade Mark Office.

As well as the instructions of the European Intellectual Property Office.

The technical requirements for the image files of the German Patent and Trade Mark Office are as follows:

File format: JPEG, resolution: min. 300 dpi, image size: min. 3 x 3 cm, max. 2 MB.

The technical requirements of the European Intellectual Property Office can be found here (fold out second question).

What is the priority?

When a patent application is first filed, the so-called first application, the applicant receives a priority right for the invention in question. They can assert the priority right in other applications for the same invention, the so-called subsequent applications. The subsequent applications are then treated legally as if they had also been filed on the date of the first application. The subsequent applications are therefore dated retroactively. This has the advantage that the first application does not affect the novelty and inventive step of the subsequent applications.

In order for the priority right to be used effectively, the subsequent applications must be filed within 12 months of the first registration. All applications must relate to the same invention.

The advantage of using the priority right for international applications is that the invention can be sold, advertised and tested for almost a year after the initial application and its commercial viability can be assessed in various markets before expensive international applications are considered.

In addition, the use of priority rights enables various complex application strategies. We are happy to offer you individual advice to determine the best approach for you.

How does the granting procedure for a European patent application work?

A European patent application is filed with the European Patent Office (EPO). It should be noted that a European patent application is not an EU application. The European patent application can be valid in all member states of the European Patent Convention (EPC). The EPC includes significantly more member states than the EU, e.g. also Switzerland, Norway and the UK. Currently, 39 states are members of the EPC, plus one extension state and five additional validation states. A current list of member states can be found here.

After filing, the European patent application undergoes a uniform examination procedure at the EPO for all member states. The EPO conducts searches, issues office actions and examines, among other things, the novelty and inventive step of the invention. At the end of the examination procedure, the European patent application is granted.

After grant, the European patent application must be validated in the member states of the EPC in which protection for the invention is desired. Depending on the member state, translations of the entire patent application or parts of the application must be submitted and fees paid. The member state in question then grants a national patent for the invention, which then protects the invention in the member state in question. This means that protection is not automatically granted in every member state, but only in the validated states.

Since June 1, 2023, it has also been possible to file an application for unitary effect and thus obtain a unitary patent. The unitary patent protects the invention in the following states

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden and Romania (from 01.09.2024).

The request for unitary effect can be combined with traditional validations. This means that EPC member states that do not participate in the unitary patent system can also be covered.

The Unitary Patent is always subject to the jurisdiction of the Unified Patent Court (UPC). If no request for unitary effect is filed, the jurisdiction of the UPC for the validated national IP rights can currently still be excluded by a so-called opt-out. The national courts of the respective member state are then responsible for infringement and nullity actions for these validated IP rights.

What is an international patent application?

An international patent application, also known as a PCT application, is a patent application filed within the framework of the Patent Cooperation Treaty (PCT). Such an international patent application therefore has the same status as a national patent application in every member state of the PCT. This means that an invention can be applied for a patent very efficiently in a large number of countries at the same time. Currently, 157 countries are members of the PCT. The current list of member states can be found here.

Once the application has been filed, the so-called international phase begins. This lasts a maximum of 31 months from the priority date of the application. During the international phase, the international search report is issued by the World Intellectual Property Organization (WIPO), which provides an initial assessment of the patentability of the invention.

At the end of the international phase, the international patent application must be nationalized. This means that the applicant must select the countries from the PCT member states in which patent protection is desired. This is followed by a national patent examination procedure in the selected countries. The final step is the granting of national patents.

The PCT application means that patent applications can be filed very cost-effectively in a large number of countries. The international phase also postpones the time of the final selection of the countries of protection. This can be very advantageous if there is still uncertainty about the sales markets or the success of the invention at the time of filing or at the end of the priority year and a decision about possibly expensive foreign applications cannot yet be made.

What is an international trademark application?

An international trademark application is a trademark application filed under the Protocol to the Madrid Agreement (PMMA). The member states of the PMMA in which trademark protection is desired must be named in the application. In these designated states, the international trademark application has the same status as a national trademark application. This means that a trademark can be registered very efficiently in a large number of countries at the same time. Currently, 115 countries are members of the PMMA. The current list of member states can be found here.

A national basic trademark is required for an international trademark application. An existing German or European trademark is suitable here. However, a newly filed national trademark application can also be used, which is then "internationalized".

After filing the international trademark application, the World Intellectual Property Organization (WIPO) examines the formal aspects of the trademark application and then registers the international trademark. Each designated state then examines the trademark according to national requirements and can confirm or provisionally revoke trademark protection with effect for the state in question. In the event of a provisional revocation, a national examination procedure follows. This means that each international trademark has a very individual geographical scope of protection based on the selection of designated states.

What is an international design application?

An international design application is a design application filed under the Hague Design Agreement (HMA). The member states of the HMA in which design protection is desired must be named in the application. In these designated states, the international design application has the same status as a national design application. This means that a design can be registered very efficiently in a large number of countries at the same time. Currently 79 countries are members of the HMA. The current list of member states can be found here.

After filing the international design application, the World Intellectual Property Organization (WIPO) examines the formal aspects of the design application and then registers the international design. Each designated state then examines the design according to national requirements and can confirm or provisionally revoke the design protection with effect for the state in question. In the event of a provisional revocation, a national examination procedure follows. In the case of designs, it should be noted that the protection requirements in different countries can vary considerably. An international design application should therefore take these different protection requirements into account. Thus, each international design has a very individual geographical scope of protection based on the selection of the designated states.

We would be happy to advise you in detail and create an individual application strategy for your patent, trademark and design!

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