1 January 2011CopyrightPeter Hess

Business brief 2011: Germany

Patents

How do you register or secure patent rights?

A German patent can be obtained by directly filing a national patent application with the German Patent and Trademark Office, or by filing a European patent application. Since Germany is part of the Patent Cooperation Treaty (PCT), it is also possible to obtain patent protection by filing an International application. All three possibilities include a substantial examination of the patentability of the application with the German or the European Patent Office before a German patent may be granted.

Is national or international coverage most appropriate?

Since the costs for a national filing are considerably lower than for a European or an International application, a national coverage is most appropriate if no protection is desired in other countries. If protection is also desired in other European countries, a European application is usually the most economic choice, and if protection is further desired outside the European patent system, in many cases, an International application is advisable.

What are the costs for registering a patent and what are the costs of defending it?

The official fee for filing a national patent application, including examination fees and annual fees for the first two years is €410. Additionally, a claim fee of €30 has to be paid for each claim exceeding 10 claims, and attorney fees have to be paid for the filing and examination proceedings.

Granted German patents can be attacked either by opposition proceedings (within three months after grant in the case of a German patent or within nine months after grant in the case of a European patent), or by a nullity suit in front of the German Patent Court after expiration of the opposition period.

The costs for first instance opposition proceedings range between €15,000 and €50,000, depending on the legal and technical complexity of the case. In nullity proceedings, the losing party pays the costs of the proceedings following a statutory fee regulation, depending on the so-called ‘litigation value’ set by the court. For typical litigation values, the cost risk of patent invalidity proceedings in the first instance ranges from €40,000 to €240,000.

Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?

In Germany, the validity of patents is not assessed in patent infringement proceedings, and patent opposition or nullity proceedings are procedurally independent of the infringement proceedings and are handled by different entities. It is therefore possible that a judgment will be issued in the infringement case before the opposition or nullity proceedings are completed, and vice versa. Thus, the timing of the two procedures is important and should form part of the litigation strategy.

What are the key threats to patent owners?

The German infringement courts are generally ‘patentee-friendly’ and offer, at least in first instance proceedings, fast and reliable decisions—usually issued within one year from filing the complaint. The key threat for the patent owner is the nullification of the patent, in which case the infringement suit is also lost. This is because although there is a ‘presumption of validity’ of granted patents, the patent office/ patent court performs a de novo review of the validity of the patent.

What is the best strategy if you suspect someone is infringing your patent?

German law provides rapid and effective means for enforcing rights under patents. However, the best strategy can only be decided on a case-by-case basis. Generally, in a first step, the patent owner sends a warning letter to the possible infringer, in which the infringer is called upon to cease and desist from further committing the patent infringement.

Alternatively, or if the infringer is not willing to submit to the warning letter, the patent owner may file suit immediately. Also, preliminary injunction proceedings are available, in which an injunction is granted anytime from within a few days up to two to three months.

However, the courts are hesitant in granting preliminary injunctions in patent matters, and such proceedings are only successful if there is ‘no reasonable doubt’ about the validity of the patent. This is generally assumed if a patent has already survived an opposition/nullification procedure.

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

For securing trademark rights in Germany, it is possible to file national trademark applications at the German Patent and Trademark Office, European Community trademark applications at the Office for the Harmonization of the Internal Market (OHIM), and international trademark applications at the World Intellectual Property Organization (WIPO). An unregistered mark can be protected if it has been used in the course of trade and has become known to the general public.

A trademark with protection in Germany confers to its owner the exclusive right to use the mark and to prevent third parties from using a sign similar or identical to the registered trademark for the same or similar goods and services.

Trademarks can be words, graphical elements, or even sounds, shapes, colours or the like. In general, the protection of a trademark is limited to the registered goods and services.

What are the costs for registering a trademark, and what are the costs of defending it?

The official fee for a basic German trademark application is €300. For European Community trademark applications, the official fee starts from €900. It is advisable to choose a professional representative for the filing of such applications who can perform additional services such as trademark searches. The costs for the representative usually depend on the time spent.

Registered trademarks can be attacked by third parties in opposition and cancellation proceedings filed at the German Patent and Trademark Office or the OHIM, or by a nullity complaint filed at a district court. Such proceedings have the character of a court proceeding in that the costs mainly depend on the time spent.

What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.)?

As a consumer country, the key threats in Germany are the counterfeiting of luxury goods, the unauthorised use of well-known trademarks and domain-grabbing. What is the best strategy for dealing with infringement? Usually, the first measure is to send a warning letter to the infringer combined with a declaration to cease and desist the infringement. If the declaration is not signed by the infringer, it is common to request a court order by way of a preliminary injunction.

A preliminary injunction can be obtained very quickly, usually within one day, is very cheap and can be obtained without any involvement of the infringer. This immediately stops infringement, and is particularly useful at trade fairs or the like. If the infringer objects to the preliminary injunction, main court proceedings are initiated.

What are the most common mistakes trademark owners make?

Within a grace period of five years, the trademark needs to be used in the market for the registered goods and services. If not, the trademark can be nullified in total or for particular goods and services.

Counterfeiting and online piracy

How big a problem is counterfeiting and/or online piracy in your jurisdiction?

Traditionally, counterfeiting is not a particular problem for Germany, since Germany has a very strict law in this respect, which penalises infringing companies and also their legal representatives.

What industries are particularly at threat?

Counterfeiting mainly occurs in the software and music industry, and for household or design goods. What are the best strategies for dealing with the problem? Sending a warning letter with a declaration to cease and desist, followed by preliminary injunctions. Additionally, the German custom authorities have the possibility of a border seizure of potentially counterfeited products, so that these products are stopped before entering the German market.

General

Are there any legislative changes to the IP regime that would make businesses’ life easier?

In the patent field, the London Agreement restricted the need for translations of European patents to a minimum. For Germany, translations of European patents are no longer required.

As regards national German trademark law, opposition procedure has been extended to cases in which earlier non-registered trademarks or business designations are enforced. Before that, the owners of such rights were forced to bring cancellation actions against conflicting trademarks before the civil courts.

Peter K. Hess is a German and European patent attorney and partner at Bardehle Pagenberg. He can be contacted at: hess@bardehle.de

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