Securing the Future: Clear Strategy and Effective IP Rights Required

Germany is rich in resources—not in gas or oil, but in ideas, innovation, and knowledge. These resources must not be used carelessly, as they secure employment and growth for Germany as a high-technology location. Still, the transformation of good ideas into marketable products does not always succeed. Two steps are usually essential for economic success: first, a precise analysis of the market and competitive situation along with a clear strategy, and second, the early filing of industrial property rights such as patents or trademarks. These create a solid foundation to ensure that innovation efforts pay off.

What some decision-makers do not know: slavish imitation—meaning the millimetre-accurate copy of, for example, a new machine—is generally permissible. Even an attractive and successful design may, in principle, be imitated. Even more alarming: after many years of using one’s own but unregistered trademark, continued use can be prohibited if a competitor registers that same mark in their own name.

The fact is: in the Federal Republic of Germany—as in many other countries—the principle of freedom to imitate applies. New products, manufacturing processes, trademarks, and designs may generally be copied without the imitator being held accountable.

Patent Attorney: Strategies to Protect Against Imitators

Against unwanted competitors who might copy one’s technical innovations, successful product designs, or strong trademarks, only one thing truly helps: the timely filing of industrial property rights. Patents and utility models are available for technical inventions; aesthetic three-dimensional or two-dimensional designs are protected by design rights and sometimes by (three-dimensional) trademarks. Company and product names or logos can be secured by trademarks.

Furthermore, a special IP right—plant variety protection—can safeguard new plant varieties and their names, provided the varieties are not yet listed in the official register. Patent attorneys are also highly knowledgeable when it comes to the protection of topographies (the three-dimensional structures of semiconductors) as well as securing and protecting domain names on the Internet.

All IP rights share one core feature: the right to prohibit—i.e., the ability to prevent third parties from copying or commercially using the protected product or mark. Without such rights, competitors could simply “copy” the innovation and bring it to market shortly thereafter—at significantly lower prices, since they bear no development costs. Patents also have promotional value because they demonstrate technological capability. Finally, licences can be granted, further strengthening profitability.

A brief look at consistently successful companies is enough to see: only a constant willingness to think about improvements in all business areas ensures a leading market position.

Patent Searches Can Prevent Misdevelopments

Patent attorneys can serve as highly qualified advisors in managing these tasks. These IP experts are not only specialists in technical patents; they are also trademark experts, trained accordingly, and have passed the state examination in trademark law. Typically, a German patent attorney is also a “European Trade Mark Attorney,” admitted before the European Union Intellectual Property Office (EUIPO) in Alicante, Spain—where a single application, a European Union Trade Mark, provides EU-wide protection.

By the way: the expertise of patent attorneys is built on 125 years of experience in industrial property protection. It is accumulated knowledge about the success of patents, trademarks, designs—and the law.

To file an invention as a patent, application documents must be prepared and the completed documents must be submitted together with a formal request to the German Patent and Trade Mark Office (DPMA).

In the following, you will find a typical example of a patent application (source: Information Sheet for Patent Applicants), followed by a list of important points that should be observed.

Title (technical designation, as specified in the request for grant).

Diffuser Lens for Signal Lanterns

Description

The invention relates to a diffuser lens.

Prior art with references: It is known to arrange diffuser lenses in front of the optical system of signal lanterns, which divert sufficient light from the sharply defined beam in height and width to generate lateral scattering (DE 31 32 016 A2). To be able to modify the distribution of the long-range light beam—without impairing the near-range lateral scattering—depending on whether the track in front of the signal runs straight or curved, it is also known to use different diffuser lenses with varying long-range scattering in different types of signal lanterns (journal “Signal und Draht”, year …, issue …, pages … to …). Problem with the prior art: A large number of different diffuser lens types must be provided, each differing in multiple degrees of long-range and near-range scattering.

Indication of the effects to be achieved by the invention: The problem underlying the invention defined in claim 1 is to reduce the number of diffuser lens types and simplify their storage.

Solution: This problem is solved by the features listed in claim 1 (if necessary, cite the features verbatim).

Achieved advantages: The advantages achieved with the invention consist particularly in the fact that instead of many complete diffuser lenses for different applications, only one mounting frame and a small number of different lens segments need to be manufactured and kept in stock. The most suitable combination of lens segments can then be assembled at the place of use with just a few manual steps; it can be tested immediately and modified if necessary.

Further embodiment of the invention: An advantageous embodiment of the invention is given in claim 2. The development according to claim 2 makes it possible for a diffuser lens assembled for a specific signal lantern to be put together easily by auxiliary personnel.

Description of one or more embodiments: An embodiment of the invention is shown in the drawing and is described in detail below.

Shown are:

Fig. 1 …

Fig. 2 …

What follows is an explanation of the invention based on the drawings, according to structure and, if applicable, the mode of operation of the illustrated invention.

Patent Claims

1. Diffuser lens for a signal lantern with a predetermined light intensity distribution in the region around the optical axis, in particular for railway and/or road traffic signal lanterns, the diffuser lens being composed of a mounting frame and several lens segments, each manufactured separately and each producing a defined portion of the light scattering.

2. Diffuser lens according to claim 1, wherein the diffuser lens segments and the associated mounting frame are provided with fitting elements for unmistakable joining of the lens segments.

Notes on drafting a patent application:As a general rule: the fewer features included in the first patent claim, the better. The lower limit is reached when “even fewer features” would result in the claimed subject-matter no longer being novel.

Example: Imagine you have invented a padded chair.

The following claim:

Device comprising …
a) a first board,
b) the first board has a square shape,
c) rods of equal length are attached perpendicular to one of the two sides of the first board,
d) the first board has padding on the side opposite the rods,
e) four rods are provided and arranged near the corners of the board,
f) the length of the rods corresponds to half the length of a human leg,
g) a second board is attached to one edge of the first board,
h) the two boards are arranged essentially perpendicular to one another,
i) the second board is located on the side of the first board where no rods are attached,
j) the second board has padding,
k) the padding is located on the side of the second board facing the first board,
—this indeed describes your padded chair very precisely. However, such a claim is generally not advisable, because you would obtain a patent with a very narrow scope of protection. (A broad scope means that much is protected; a narrow scope means only little is protected.)

It is better to include in the first claim only the features essential for sitting: in this case, features a) and c).

A better first claim could therefore read:

Device
– with a first board,
– rods of equal length are attached perpendicular to one of the sides of the first board.

It must now be examined whether such a board with perpendicular rods is known from the prior art. If it is not known, the claim should be formulated in this way.

Now, it is essential that the description specifies the purpose of the device with the features of claim 1. In this case, the description should state that a person can sit on such a device (with a first board and perpendicular rods as legs) when it is placed upright on the rods. The use of rods to achieve an elevated seating position results in a lightweight device that is easy to move and economical in materials. The perpendicular arrangement of the rods contributes to stability.

The second claim should now include the features of claim 1 plus an additional feature that produces an additional effect—for example, feature d).

The second claim would then read:

2. Device according to claim 1, wherein the first board has padding on the side opposite the rods.

The description must now indicate the effect of the padding. It could state: The device according to claim 2 provides particularly comfortable seating.

Proceed similarly with further claims.

Additional points to observe:

• Do not use vague terms such as “large,” “fast,” “wide,” “strong” in the claims, as they are generally inadmissible.
• Do not use invented words or obscure terminology. The simpler and more common the wording, the better.
• Use the same term consistently for the same component. In the example, always use “first board” for the seat. Avoid synonyms—what is good in an essay is bad in a patent application!
• Use generalized terms in the claims. For example, instead of “nail” or “screw,” use “fastening means.” But the description must provide at least two concrete examples and must expressly state that a “nail” or “screw” are examples of “fastening means.”
• The embodiment must describe your invention precisely. What is good for the claims (general terms, few features) is bad for the embodiment. To be safe, have a confidentiality-bound person—ideally a non-expert—confirm that they understand your embodiment.

The completed application documents (claims, description and drawings) must be submitted together with an application form to the German Patent and Trade Mark Office. The examiners at the DPMA are generally happy to assist inexperienced applicants. As soon as you receive an office action, simply give the named examiner a call.

 If you have any questions, contact one of our patent attorneys or use the contact form.

There are several types of patent searches, each serving a different purpose:

Searches for Prior ArtA prior-art search is conducted when an initial assessment of the likelihood of obtaining patent protection for an invention is desired. Depending on the result, it can then be decided whether a patent application should be commissioned or not.

A prior-art search is also used when preparing an attack on an existing patent, in order to demonstrate that the contested patent is not novel and/or lacks inventive step.

Searches for Conflicting Patents (FTO – Freedom to Operate)An FTO search is conducted when a product modification or new development needs to be examined to determine whether it would infringe an existing, active patent.

Searches for Public-Domain Prior ArtPrior art that is older than 20 years (i.e., older than the maximum patent term) discloses solutions for which no legally valid patent protection can exist anymore. A search for such public-domain prior art enables the identification of technical solutions that may be reproduced without—at least in principle—being exposed to the risk of patent infringement.

Searches for Competitors’ PatentsSearching for competitors’ patents—usually with a focus on a specific product area—provides an overview of competitors’ development activities and insight into which limitations must be observed in one’s own development process for patent-related reasons. Because patent infringement actions are typically pursued only when economic harm arises from the sale of the allegedly infringing product, or when strategic competitive goals are involved, competitors’ patents are highly relevant.

How is a patent search conducted?Patent attorneys use specialized software to carry out professional patent searches. To obtain a sample-based overview of existing publications and technical IP rights, patent offices offer searchable databases—such as “Espacenet” of the European Patent Office for worldwide technical IP rights, or the DPMA register for German IP rights, which includes searches for German patents and utility models as well as German trademarks and designs. Worldwide trademarks and designs can additionally be searched via the portals of the EUIPO (European Union Intellectual Property Office).

 If you have questions, contact one of our patent attorneys or use the contact form.

Patent offices worldwide assign incoming patent applications to so-called patent classes. Each individual patent class relates to a specific and clearly defined technical field. Patent classification serves to allocate a patent application to the appropriate patent examiner and can also be used to filter results in patent searches. Patent classes are largely harmonised internationally. International patent offices and many national offices use the International Patent Classification (IPC), which is revised every five years. The U.S. Patent and Trademark Office uses its own system. The assigned class or classes in one or more classification systems are printed on the patent application.

Below you will find links to several patent classification systems:

• International Patent Classification (WIPO) – in English
• International Patent Classification (DPMA) – in German

Example:

The International Patent Class “H 01 M 4/02” relates to “electrodes consisting of, or containing, active material and used for the direct conversion of chemical into electrical energy.” The class “H 01 M 4/02” appears, for example, in the patent database of the German Patent and Trade Mark Office (DPMA) in the line “Bibliographic IPC” (IPC – International Patent Classification) for patent applications and patents assigned to this class.

If you have questions, contact one of our patent attorneys or use the contact form.

Protection of Innovation by Patent Attorneys: Global Measures Against Idea Theft

Not only global players but also many owners of medium-sized companies know the frustration all too well: a technological innovation is developed with considerable effort — and shortly afterward, at an international trade fair, managers discover their invention on a competitor’s stand. Copied down to the last detail, sometimes at half the price. The outrage over such counterfeiters is understandable. Yet in recent years, companies from the Far East have pursued a new strategy: former imitators are increasingly filing their own patents, utility models, and trademarks — sending clear signals in the direction of legal certainty and economic growth.

A good example is China: the rapidly growing People’s Republic, once a nightmare for many patent holders, is increasingly investing in research and technology. Expenditures in this sector continue to rise. At the same time, the number of domestic patents is increasing, and even outside China, the protection of intellectual property has gained substantial importance. At the European Patent Office (EPO), patent applications originating from China have been growing at high rates for years.

The more actively Chinese companies work on their own innovations, the more quickly they face the very challenges they once imposed on other nations: their innovative products are being copied — not infrequently by fellow countrymen.

The highest profits in a knowledge-based society are not generated through low-cost manufacturing, but through innovation and strategic patent management. According to a study by Deutsche Bank, three-quarters of the market value of the 500 largest U.S. companies stems from intangible assets. As early as 2010, global payments for patent licenses alone were expected to reach around 500 billion dollars.

Meanwhile, product pirates beyond the Great Wall are coming under increasing pressure. Exchange programs between German and Chinese customs authorities are being continuously expanded, and a dedicated system for detecting counterfeit goods is established in the seaports. Furthermore, Chinese courts recently sentenced a shopping mall to pay damages because it had sold counterfeit goods and infringed the rights of manufacturers such as Burberry, Chanel, Gucci, and Prada.

Innovation protection is also being strengthened in Germany: to combat product piracy, the German Federal Cabinet has implemented the EU Enforcement Directive on the protection of intellectual property into national law. Cease-and-desist claims can now be asserted effectively to immediately prevent further cases of infringement. Companies harmed by counterfeiting are entitled to damages equal to the illegal profits or the equivalent licence fees.

Many product counterfeiters also visit trade fairs to “collect interesting ideas.” More and more trade-fair organizers are taking action — up to and including the closure of stands if a product identified as an imitation is not removed. At the same time, they aim to provide exhibitors with more comprehensive information on the value of patents, utility models, designs, and trademarks.

Through border seizures conducted by customs — which can be initiated on the basis of existing IP rights — counterfeit and infringing products can be intercepted directly at the border.

If you have questions, contact one of our patent attorneys or use the contact form.

Is the intellectual property generated within your company sufficiently protected? Are your employees adequately trained to ensure the protection of the intellectual property created in your organisation?

In a highly competitive international environment, combined with high production costs in Germany, protecting the intellectual property generated in your company is of outstanding importance. In our daily work with clients, however, we repeatedly find that employees are often not sufficiently trained to recognise the emergence of potentially protectable intellectual property. As a result, they unintentionally violate fundamental rules for handling intellectual property.

For this reason, we have been offering our clients free so-called IP (Intellectual Property) trainings for several years. In these trainings, we teach employees how to identify the emergence of potentially protectable IP at an early stage and how to take the necessary steps to ensure its protection.

In an initial discussion, we determine which employees should participate in the training and then tailor the training specifically to the situation and needs of your company.

Depending on the number of employees, we conduct one or several IP trainings on your premises.

If you are interested, please contact one of our patent attorneys or send us an inquiry via the contact form.

Everyone knows them, many love them, and some protect them – the world’s attractive brands such as Coca-Cola, Google, Mercedes, or Nivea. Their recognition translates directly into financial value, including for less famous logos or names. In general, brands with the highest attractiveness have also shown the highest revenue growth in recent years. In short: strong brands have never been more valuable than they are today. This is why an increasing number of small and medium-sized companies are investing in desirable, experience-driven brand symbols — and involving IP experts early on to secure the power of their brand.

Today, business leaders know: it is no longer enough to offer excellent products or tailor-made services. Whether a local manufacturer or a global player — technological change is accelerating, and nearly all companies face intensified competition.

In this environment, the brand takes on central strategic importance: it serves as a “beacon” that guides consumers toward innovation and quality in an overwhelming world of goods. It provides orientation that promises reliability and trust — ultimately making life easier and more predictable.

People have always sought familiarity — no wonder that brands with a strong “radiance” and “good name” are chosen. Moreover, buyers often use brands to express belonging to certain social groups — a Gucci handbag is, after all, more than just a bag…

Brands not only hold power — on average, they account for around two-thirds of a company’s value. The brand names Coca-Cola or Mercedes-Benz, for example, are estimated to be worth tens of billions.

For globally renowned as well as regionally strong brands, the same principle applies: the credible message conveyed by a brand symbol ensures a company’s long-term success and forms the foundation for innovation and growth. According to many market researchers, products and services that will succeed in the future are those that convince consumers not only on a rational level but also evoke emotional enthusiasm.

Of course: the more well-known a brand is, the greater the incentive for competitors to copy the sign or design something visually similar. This can only be prevented if trademarks are filed — and filed in time.

The possibilities for registration are extensive: word marks, figurative marks, combined word-and-figurative marks, sound marks, three-dimensional shapes, and distinctive product packaging — including specific colours. Not only product names (formerly referred to as “trade marks”) can be protected, but also services such as those offered by hotels, travel agencies, banks, driving schools, logistics companies, or trade fair organisers.

However, anyone who intends to use a trademark or a new company name should first check whether this would infringe the rights of third parties. Unintentional trademark infringement can lead to significant consequences and costs.

If you have questions, contact one of our patent attorneys or use the contact form.