Unfortunately, there is no international or worldwide patent. Only national or regional patent offices, e.g. the German Patent and Trade Mark Office (DPMA) or the European Patent Office (EPO), can grant patents.
The European Patent Convention (EPC) is an international treaty created by the European Patent Organisation (EPO). Here, European patents are granted.
Another treaty at the international level, the Patent Cooperation Treaty (PCT), does not lead to a centrally granted patent, but enables a uniform application procedure in the event that an applicant wishes to file his invention internationally in several countries. In this case, the applicant must transfer the international application within 30 months of the first filing date (priority date) of the invention as a patent application and/or as a utility model application (where possible) nationally or regionally to the countries eventually desired. International applications are administered by the World International Patent Organisation (WIPO). WIPO also advises on intellectual property legislation at the request of official stakeholders. The PCT enables members of the PCT, i.e. natural or legal persons who are either nationals of a contracting state or have their registered office in a contracting state, to file an international application for all contracting states of the PCT by filing a single application with WIPO or another approved office, e.g. the German Patent and Trademark Office (DPMA) or the European Patent Office (EPO).
At the national level, the German Patent and Trade Mark Office (DPMA) is responsible, inter alia, for the examination and grant of patents, as well as for the registration of utility models, trade marks and designs, but also for informing the public about existing industrial property rights in Germany.
The PCT enables the applicant to simultaneously seek patent protection or utility model protection (where possible) for his invention in many countries. This treaty is valid across European borders in important industrial nations worldwide. (more than 152 countries in total, e.g. China, USA, Japan, Canada, Australia, Russia and Brazil).
The applicant has the advantage that his international application is treated according to uniform legal provisions. He therefore does not have to deal with the different legal regulations of the respective countries.
The PCT stipulates that an international search is automatically carried out for each international application and that a corresponding preliminary international search report is drawn up. These documents can be of great help to the applicant in deciding to which countries he wishes to transfer the international application.
With an international application, the applicant generally has up to 30 months from the first filing date (priority date) of his invention to decide whether and in which countries he finally wants to file a patent application and/or utility model application (where possible). In this way, the applicant gains valuable time to commercialise his invention without incurring translation costs during this period, because the translations are only required when the invention is transferred to the desired “translation countries”.
For an international application, official fees have to be paid to both the filing office and the International Bureau (WIPO). The fees of the Filing Office are to be paid in the national currency and the international fees in Swiss francs. We will be happy to inform you about the costs of our legal assistance and expertise upon request.
An international application cannot dispense with the individual examination procedures in the respective countries; it merely facilitates the individual applications in the respective countries. After a period of 30 or 31 months, depending on the country, from the first filing date (priority date) of the invention at the latest, country-specific costs are incurred.
In the event of unauthorized use of a patented invention, the owner of the granted patent has the possibility of issuing a warning to the infringer of the patent and, among other things, of demanding an injunction and, if necessary, damages.
It is common practice to first issue a warning to the infringer, i.e. to draw his attention to the infringing act and to request him to cease using the patented invention. If the warning does not lead to the desired result, the patent proprietor can bring an action against the infringer for infringement of his patent before a competent civil court. In this way, a cessation of the infringing acts as well as damages can be enforced in court. Furthermore, products using the invention can be seized or destroyed.
Very often in the case of infringement it is a matter of more or less well known competitors, so that it is often advisable to solve a patent infringement as well as a trademark infringement or another infringement case by way of settlement. This is often the quicker and above all more cost-effective solution for all parties involved. In all other respects, it is well known that one does not see oneself only once in one’s life.
For these complicated and legally demanding actions and negotiations, it is advisable to consult a patent law expert, as the legal and financial consequences can be considerable. We as patent attorneys, i.e. as your attorneys, with a focus on and <a href=”/home/#kompetenzen”>competence</a> in patent law, will be happy to advise you in this respect.
Patents are granted for inventions in all fields of technology if they are new, involve an inventive step and are industrially applicable, i.e. products, processes and devices. However, program-related inventions are also patentable as long as they can make a technical contribution to the current state of the art. Products made of biological material and processes for their manufacture, processing or use are also patentable.
Discoveries as well as scientific theories and mathematical methods, aesthetic creations, plans, rules and procedures for mental activities, for games or for business activities as well as programs for data processing equipment and the reproduction of information, each as such, cannot be patented in most countries to the extent that protection is sought for such objects or activities. However, there are exceptions, such as the Austrian utility model, which explicitly protects software as such. We would be pleased to advise you in detail.
If the applicants for the international application are one or more natural persons, we need their first and last name(s), address(es) and nationality(ies). If the applicant is one or more legal entities, we need their exact company name and the address of their registered office. In any case, we need the name and private address of each inventor. We require a power of attorney from the respective applicant.
A technical description is also required. It must describe the known relevant state of the art, its disadvantages, the problem and its solution by the own invention together with its advantages, whereby the invention is to be described concretely on the basis of one or more examples of execution, also with reference to one or more drawings if possible. Submission of (supplementary) drawings is not permitted.
In close cooperation with the applicant, we prepare the application documents required for the international application. In addition to a detailed description, at least one (independent) claim is required. Information on potential and actual competitors is also very helpful for the preparation of a patent application.
Each independent claim is decisive for the scope of protection of the application. It is therefore particularly important to prepare each independent claim with particular care from a legal and factual point of view. Finally, a summary is also necessary.
The aforementioned text documents must be submitted in German, English or French. Otherwise, a translation into one of these languages will be required.
In addition, we need a list from the applicant of the states in which patent protection or utility model protection is sought. If the international application is a subsequent application to an already filed first application whose seniority (priority) is to be claimed, but which is only possible within 12 months of the filing of the first filing date, an additional priority certificate is required.
If you have any further questions or would like detailed advice from our attorneys specializing in patent law, please do not hesitate to contact us.
Geitz Truckenmüller Lucht Christ
Your patent attorneys since 1969