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Culture Documents
Sven Jacobs
Associate
Norton Rose Fulbright (Germany) LLP
8. 9.12.2016
Patents
OVERVIEW
Optional
What is a patent?
A patent is a legal title granting its holder
the right to prevent third parties from
commercially using an invention without
authorisation.
PROTECTED SUBJECT
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Protected Subject
Patents are granted in all fields of technology for any inventions,
provided that they are new, involve an inventive step and are
susceptible of industrial application.
Contrary to copyright, which comes into existence without any
formalities by the mere fact of creation, an invention is granted a
patent only upon application and registration in the official register
kept with the patent office.
Protected Subject
Sec. 1 subs. 1 Patent Act:
Patents shall be granted for inventions in any technical field if they are
novel, involve an inventive step and are susceptible of industrial
application.
Protected Subject
Inventions in any technical field
Pursuant sec. 1 subs. 3 Patent Act, in particular, the following shall not be
regarded as inventions within the terms of subsection (1):
1. discoveries, scientific theories and;
2. aesthetic creations; mathematical methods
Protected Subject
Sec. 1a subs. 1 Patent Act:
The human body at its various stages of formation and development,
including germ cells, and the simple discovery of one of its elements,
including the sequence or partial sequence of a gene, cannot constitute a
patentable invention.
Sec. 1a subs. 2 Patent Act:
Protected Subject
Sec. 2 subs. 1 Patent Act:
Patents shall not be granted for inventions if their commercial exploitation
is contrary to public order or morality; however, such a contravention
may not be deduced simply from the fact that the exploitation is prohibited
by law or administrative regulation.
Protected Subject
Sec. 2 subs. 2 Patent Act:
Patents shall especially not be granted for
1. processes for cloning human beings;
2. processes for modifying the genetic identity of the germ line of human
beings;
3. uses of human embryos for industrial or commercial purposes;
SUBSTANTIVE
REQUIREMENTS
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Substantive Requirements
Sec. 1 subs. 1 Patent Act:
Patents shall be granted for inventions in any technical field if they are
novel, involve an inventive step and are susceptible of industrial
application.
Substantive Requirements
Sec. 5 Patent Act:
An invention shall be deemed to be susceptible of industrial application
if its subject matter can be produced or used in any industrial field,
including agriculture.
Substantive Requirements
Sec. 3 subs. 1 Patent Act:
An invention shall be considered to be novel if it does not form part of the
state of the art.
The state of the art includes all knowledge made available to the public
by written or oral description, by use or by any other manner before the
date relevant for the priority of the application.
Substantive Requirements
Sec. 4 Patent Act:
An invention shall be deemed to involve an inventive step if it is not
obvious to a person skilled in the art from the state of the art.
Substantive Requirements
An invention shall be sufficiently inventive i.e., non-obvious in
order to be patented. Therefore the "problem-solution approach" is
applied.
The approach consists in:
identifying the closest prior art, the most relevant prior art;
determining the objective technical problem, that is, determining,
in the view of the closest prior art, the technical problem which the
claimed invention addresses and successfully solves; and
examining whether or not the claimed solution to the objective
technical problem is obvious for the skilled person in view of the
state of the art in general.
FORMAL REQUIREMENTS
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Formal Requirements
Sec. 6 Patent Act:
The right to a patent shall belong to the inventor or his successor in title.
If two or more persons have jointly made an invention, the right to the
patent shall belong to them jointly.
If a number of persons have made an invention independently of each
other, the right shall belong to that person who first files an application for
the invention with the Patent Office.
Formal Requirements
Sec. 34 subs. 3 Patent Act (proceedings before the Patent Office):
An application shall contain:
1. the name of the applicant;
2. a request for the grant of a patent, in which the invention shall be clearly
and concisely designated;
3. one or more claims defining the subject for which protection is sought;
SCOPE
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Scope
Sec. 14 Patent Act:
The scope of protection conferred by a patent or a patent application shall
be determined by the patent claims.
Scope
Sec. 9 Patent Act:
A patent shall have the effect that the patentee alone shall be authorized
to use the patented invention within the applicable laws.
A third party not having the consent of the patentee shall be
prohibited
Scope
2. from using a process which is the subject matter of the patent, or,
when said third party knows or it is obvious from the circumstances that
use of the process without the consent of the patentee is prohibited, from
offering the process for use within the territory to which this Act applies;
3. from offering, putting on the market or using or importing or possessing
for such purposes the product produced directly by a process which is
the subject matter of the patent.
Scope
Sec. 10 Patent Act:
(1) A patent shall have the further effect that any third party not having the
consent of the patentee shall be prohibited from offering or supplying
within the territory to which this Act applies to any other persons, other
than such persons authorized to use the patented invention, means
relating to an essential element of said invention for use of the
invention within the territory to which this Act applies, if said third party
knows or it is obvious from the circumstances that such means are
suitable and intended for use of the invention.
Scope
Sec. 11 Patent Act:
The effects of a patent shall not extend to:
1. acts done privately for non-commercial purposes;
2. acts done for experimental purposes relating to the subject matter of the
patented invention;
INFRINGEMENT
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marked as follows
Administrative Council
made up of delegates
from the member states
supervises the activities
of the Office
has a specific legislative
function
38 member states
Locations
The EPO has offices at five
different locations (Brussels,
The Hague, Berlin, Munich,
Vienna).
Its headquarters are in Munich.
Right of priority
First, once an inventor has duly filed an application for a patent in
one state, he enjoys what is called a priority right" during the
following 12 months.
This means that if subsequently to his application for a patent in
country A, the inventor files another patent application for the
same invention in country B, then this second application is
deemed to have been occurred not at the actual date of filing in
country B, but at the date when the patent was initially filed in
country A.
This saving" of the initial date leaves the inventor time for a
translation of his application. It also means that as regards the
question whether an invention is new" and the relevant state of
the art" at the date of filing is judged according to the earlier and
not the later filing date.
Right of priority
Second, in order to avoid that inventors have to file with each
single national patent office separately, an international filing
procedure has been provided for under the Patent Cooperation
Treaty (PCT).
Here, one centralized filing with the World Intellectual Property
Organization (WIPO) - either directly in Geneva, or via a national
Patent Office - is sufficient. WIPO will then forward the central
application to the national Patent Offices which the applicant has
designated in his application.
The application is the processed independently in each of the
designated Patent Offices according to each Patent Office's own
rules. It should be noted, however, that in this respect international
legislation provides at least some form of harmonization regarding
the procedural aspect of the applying for and granting of patents.
Note that the European Patent Office can also serve as both a
receiving and a designated office (so-called Euro-PCT
application).
Application
Search
report
Publication
of application
Publication
of grant
18 months
Withdraw?
Approx. 4-5 years
9 months
Opposition
period
expires
Applicant
EPO
European
patent
application
Filing and
formalities
examination
Refusal or
withdrawal
of application
Validation in
designated
states
Substantive
examination
Grant of
European
patent
Publication
of patent
specification
Applicant
EPO
Refusal of
application
Substantive
examination
Grant of
European
patent
Limitation or
revocation
proceedings
Opposition
proceedings
Public
domain
Opposition by
third parties
possible
Appeal
proceedings
Patent granted!
Patent
Invention attorney
EUR 1 000
to EUR 4 000
Apply for
Annual fees
patent
4
Examination Year 3
EUR 60
EUR 350
German
patent
European
patent
* Estimated cost. Actual cost depends very much on the specifics of the individual case.
Share of patents, %
Patent value
Patent management
Patent strategy
Offensive/defensive
Internationalisation
Kind of exploitation: licensing or own use
Patent information
Patent management
Communication
Compile convincing evidence that your patents are valuable
Inform investors and banks, clients and prospective employees
Maintenance
Pay renewal fees, observe deadlines
Strengthen important patents and get rid of ones with no value
What not to do
No publication prior to filing
e.g. no article, press release, conference
presentation/poster/proceedings or blog entry
No sale of products incorporating the invention prior to
filing
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Contact Information
Sven Jacobs | Associate
Rechtsanwalt
Norton Rose Fulbright LLP
Taunustor 1 (TaunusTurm), 60310 Frankfurt, Germany
Tel +49 69 505096 416 | Mob +49 173 3404587 | Fax +49 69
505096 100
sven.jacobs@nortonrosefulbright.com
Disclaimer
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The purpose of this communication is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of any Norton Rose
Fulbright entity on the points of law discussed. You must take specific legal advice on any particular matter which concerns you. If you require any advice or further information, please speak to your
usual contact at Norton Rose Fulbright.
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