1. Requirements for Patentability
A patent is granted for an invention in any field of technology, provided that the invention is new, involves an inventive step and is susceptible of industrial application. Hence, four (material) criteria must be fulfilled for a patent to be granted. First, an invention in any field of technology must exist. This invention must be new, must involve an inventive step and must be susceptible of industrial application.
For an invention to be existent that is admissible for patentability the invention must relate to the solution of a specific technical problem that is achieved by technical means. While this in general does not pose a problem within the conventional areas of technology such as engineering, for a computer-implemented invention this often is the critical question.
Generally not regarded as an invention are: discoveries as well as academic theories and mathematical methods, aesthetic designs, plans, rules and methods for mental activities, for games or for business activities and the reproduction of information.
An invention is regarded as new if it does not belong to the prior art. Herein, everything is considered to be prior art that was known in public prior to the relevant priority or filing date of the application by written or oral description, by use or in any other way.
This regulation is very strict: it is irrelevant, where on earth and in what way the publication has occurred. Even the publication by the applicant himself prior to the filing date of the patent application may stand against the novelty of the invention.
Therefore, all applicants must keep in mind: an invention must not be published prior to filing the application, not on trade shows, through presentation or in journals.
1.3 Inventive Step
It however is not sufficient that an invention is new compared to the prior art. The invention must also involve an inventive step. An invention will be considered to involve an inventive step if it does not, for the person skilled in the art, follow in an obvious manner from the prior art. In this regard, it does not matter whether an inventor has been inventive to come up with his invention. The “inventive step” as a legal term rather is judged on the basis of the entire known prior art irrespective whether an inventor personally knew the prior art or not.
1.4 Industrial Application
If an invention can be utilized in any industrial field including agriculture it is considered to be susceptible of industrial application.
2. Patent Filing Procedure
A patent application contains
- a technical description of the invention,
- the so called patent claims in which the invention is summarized in general terms and
- generally also drawings to illustrate embodiments of the invention.
The patent application is filed together with a request at the Patent Office in paper or electronically.
For detailed information regarding the application and the required documents we refer to the pages of the German Patent and Trademark Office.
3. Examination Procedure
Within seven years after filing the application a request for examination can be filed to initiate the examination procedure. In the examination procedure it is examined whether the patent application fulfils the noted requirements for patentability and whether a patent can be granted or not.
Important for applicants: without examination no patent!
If a request for examination is filed, the Patent Office performs a search for the relevant prior art. Then it is examined whether the invention is new, involves an inventive step and is susceptible of industrial application and fulfils the further (formal) requirements for patentability. The examination in essence is performed according to the patent claims which are part of the patent application and define the invention in general terms.
Within the examination procedure the Patent Office issues office actions informing the applicant whether a patent can be granted or not. The applicant may respond to such office actions and may, possibly, amend the description and the patent claims to meet the objections of the Patent Office. If the objections can be overcome, the patent will be granted. Otherwise the patent application will be rejected.
After filing the request for examination it takes in general about 8 months until a first office action is issued. Until the patent is granted it may take about 1.5 to 2.5 years; in exceptional cases it may take much longer.
A patent can be enforced only after the publication of the patent grant. After publication of the application, however, already a reasonable compensation may be claimed if a third party uses the invention.
The maximum duration of a German patent is 20 years after the filing date.
4. Opposition and Invalidation Procedure
After the grant of a patent anybody can file, within three months, an opposition against the patent. The opposition can for example be based on the fact that the patent is not new or does not involve an inventive step, which must be substantiated by means of the prior art.
An opposition division of the German Patent and Trademark Office decides about the opposition. As result of the opposition the patent may be maintained in its original form or as amended, or the patent may be revoked. Against the decision of the opposition division an appeal may be filed to the German Federal Patent Court.
After expiration of the opposition period the patent may be attacked by an invalidation suit which must be filed at the German Federal Patent Court.
5. Further Applications, Patent Applications outside of Germany
5.1 Priority Right
For a first application for an invention, within one year after the filing date further applications for the same invention may be filed in Germany or in foreign countries claiming the priority of this first application, having the effect that, for the further applications, only the prior art prior to the filing date of the first application (the priority date) is considered. This priority right results from the Paris Convention for the Protection of Industrial Property and exists for applications almost everywhere in the world.
5.2 Applications in Foreign Countries
In general, patents can be filed in every country of the world, wherein in many cases translations into the national language must be prepared and a local patent attorney must be involved.
For a number of European countries (the member states of the European Patent Convention) a European patent can be applied for, the application being examined and issued centrally by the European Patent Office.
It is also possible to file a so called international patent application according to the Patent Cooperation Treaty (PCT). By way of the international patent application an application with a uniform filing date and effect for, by today, over 140 countries is effected. For the international application an international search is performed; it also is possible to file a request for international preliminary examination. In this regard it is important to note that the international application represents a central application procedure, but not a central grant procedure. After the so called international phase the international application transfers into the national and regional phases which are conducted before the national (for example US) or regional (for example Europe) patent offices and as a result of which a patent is granted (or the application is rejected).
An international (PCT) application is advantageous especially for such applicants who wish to obtain a sound statement about the patentability of an invention before deciding in which states and regions of the world a patent protection shall be obtained. With the international application investments for translations and national and regional examination procedures can be moved to a later time, namely to the national and regional phases (which in general must be entered within 30 months after the priority date of the application) and can be based on a sound fundament of facts.
6. Patent Infringement
A patent infringement is existent if a third party, without authorization, uses the subject-matter of the patent in an identical or equivalent manner. For determining the subject-matter of the patent and its scope of protection the patent claims are essential, wherein the description and the drawings are referred to for interpretation.
If a patent owner finds a patent infringement and wishes to enforce his patent against the infringer, this in general is possible by filing a legal action at a competent district court. By filing a legal action claims for injunctive relief or indemnification may be asserted. Conventionally, a notice of production of legitimacy claim and/or a cease-and-desist letter are sent first, but are not a must.
In urgent cases there also is the possibility for an urgent preliminary protection by requesting a preliminary injunction.