Intellectual property, selected terms
In order to challenge validity of an official decision/action by an independent body an appeal may be lodged. Appeals against DPMA decisions are dealt with e.g. by the Bundespatentgericht; decisions by the EPO departments are dealt with by Boards of Appeal at the EPO.
The Act on Inventions made by Employees from 1957 regulates the right to exploit and the remuneration for inventions that are made by employed inventors. It is thus closely linked to both employment law and intellectual property law.
Appellate court to decisions by the German Patent and Trademark Office, Federal Office for Plant Varieties, court for declaration of nullity.
The generic term ‘cancellation’ generally refers to both trade mark revocation and trade mark invalidity proceedings. A trade mark may be revoked because it has not been put to genuine use during a period of five consecutive years. A trade mark may be declared invalid because of earlier rights that permit the use of the trade mark in question to be prohibited.
Claim for return
If an application has been filed unlawfully and without transfer of rights from the inventor to the applicant, the inventor may claim for return of the application and thus decide on its maintenance or lapse.
Classes of design models
Categorization of products as to their design in accordance with the international agreement of Locarno.
Classes of goods and services
Goods and services are categorized as to their intended use as a trademark in accordance with international agreements, Nice agreement.
Collective marks may be used by the members of an independent association of enterprises. In an application for registering a collective mark, regulations must be included that govern the use of the trade mark by the members of the association.
A sign that is applied for as a trademark is regarded as being distinct if in principle it can help to distinguish goods and services from other goods and services in the market.
Effect of protection
Any IP right is an exclusive right that entitles the proprietor to prohibit use and fabrication of the protected goods or offering services under the protected trade name.
European Patent Convention, established in 1973 by a community of European states. The member states to the EPC are listed on http://www.epo.org/about-us/organisation/member-states_de.html.
The European Intellectual Property Office (formerly OHIM, Office for the Harmonisation of the Internal Market) is the European Union agency responsible for registering Community trade marks and Community design models that are valid in all countries of the EU; the EUIPO is seated in Alicante, Spain.
A trade mark does not entitle the proprietor to prohibit its use in relation to goods which have been put on the market by the proprietor himself or with his consent.
Extent of protection
The extent of protection of an IP right is defined and determined by the claims of a patent or the whole impression of a trade mark.
Date of filing an application for registration of an intellectual property right with one of the national or international IP Offices. This date is fundamental for, e.g., the determination of the IP life time and renewal fees and also for determining the term for claiming the priority.
Forfeiture of rights
If infringement is tolerated knowingly for a longer period of time no damage can be claimed thereafter.
This system gives the owner of an industrial design the possibility to have a design protected in several countries by filing one application only.
infringement of IP rights may be prosecuted before national courts. IP rights grant the proprietor the exclusive right to exploit the patented invention or registered trade mark and to prohibit the use thereof by any third party. Any contravention against this exclusive right may be regarded as an act of infringement. The IP right proprietor may file for injunction, compensation, disclosure, and destroying of infringing material.
Seat of the World Intellectual Property Organisation WIPO in Geneva, Switzerland. Central authority for international agreements on intellectual property such as PCT (patents), MMA (trade marks), PMMA (trade marks).
In a licence contract a licensor authorizes use of a patented or otherwise protected invention or innovation to a licensee.
international agreement on design models and their registration.
Madrid Systems (MMA, PMMA)
international agreement on protection of trade marks under the Paris Convention.
Need to keep term free (of rights)
If there is a public interest in that a descriptive term remains freely available to all market actors a sign will not be registered as trade mark even though it may be regarded as being distinct.
an invention is an invention in legal terms if and only if an inventive step is involved. An inventive step is another term for not being obvious. Practically, an improvement is regarded as obvious – and thus is not an invention legally – if it can be inferred from the combination of two prior art disclosures.
Validity of a granted patent may be challenged in a nullity procedure before the Bundespatentgericht or other national courts.
Opposition (against registration of a trade mark)
Any third party is entitled to apply for re-examination of a trademark if their own trademark is at risk.
Opposition (against grant of a patent)
Any third party may lodge an opposition procedure against the grant of a patent. Time limit for lodging an opposition is 9 months after grant in Germany and 9 months after grant before the EPO. Validity of a granted patent is verified or falsified in an opposition procedure before the issuing office.
Paris Convention (PC)
international agreement on unification of requirements for granting intellectual property rights, applies to patents etc. and trade marks etc…
Patent Cooperation Treaty (PCT)
international agreement on technical IP rights within the limits of the Paris Convention.
public data base of patents and applications, including – inter alia – title of patent (application) and filing date, particulars of applicant and proprietor http://register.dpma.de/DPMAregister/pat/einsteiger and https://register.epo.org/espacenet/regviewer.
Period of grace as to novelty
a period that is preclusive of prejudice to novelty. Publications which have been published during this period of time are disregarded for the appraisal of novelty of the application. In Germany a period of grace is presently granted only to utility model applications, its duration is 6 months before filing the application.
Period of protection
For all IP rights but trade marks protection is granted for a limited period of time. A trade mark, however, can be renewed multiple times without any principal limit. For each renewal a fee is due. Patents in Europe must be renewed each year, trade marks must be renewed after every ten years.
Prior art covers everything that has been published, in writing or verbally, before the filing date of a patent application or a utility model application. The appraisal of novelty and inventive step of an invention is based on the prior art.
“Any person who has duly filed … an application … shall enjoy a right of priority during a period of twelve months from the date of filing of the first application” [PC, Art. 4A(1)].
Protocol relating to the Madrid Agreement (PMMA)
international agreement on the protection of trademarks; the applicant may refer to the basic registration in his home country or in the country of residence.
Right of prior use
A patent can not be put into force against any person who had been using the invention already before the filing date of the patent.
Scope of protection
An IP right enters into force in that state of which the respective authority, e.g. patent office, has issued the IP right.
Filing without consent of the inventor, the inventor may claim for return of his invention in this case.
World Intellectual Property Organization, seated in Geneva, Switzerland.
in cooperation without any liability under corporate law
• Berg & Partner lawyers notaries
• Dipl.-Chem. Dr. Herrguth Patent attorney