From Application to Grant, worldwide

The number of new patent applications filed each year has been rising steadily in recent years. In 2018, it exceeded the 3.3 million mark (World Intellectual Property Organization (WIPO): IP Facts and Figures 2019). The European Patent Office (5th) and the German Patent and Trademark Office (6th) are both among the top 10 offices with the most new applications per year. The requirements for a patent application vary from country to country, sometimes considerably, as does the examination and granting procedure.

At the beginning of every patent application, a detailed analysis of the invention is carried out in close collaboration with the inventors. In this process, the differences between the invention and the prior art as well as their technical advantages are worked out. Often, this results in several protectable aspects.

Even at this early stage, we advise you as our client on the best filing strategy for your needs. Important aspects are, on the one hand, the countries in which the invention is to be protected and, on the other hand, financial aspects. Patents and utility models have a national effect. They are only valid in the country in which they were filed. For patents, in addition to the national application, it is possible to file them jointly for several countries, such as European and international patent applications.

Claiming the priority of an existing application for subsequent applications also plays a role when considering the strategy.

We provide continuous support and advice throughout the examination proceedings of an application at the respective patent office. Of course, we analyze examination reports of all patent offices for you and provide you with our suggestions for possible responses. During this process, we monitor how the client’s application proceeds through different stages, in order to adapt the objective target if this becomes necessary. Our goal is a strong property right which provides a strong competitive advantage for our clients.

German Patent

An invention can obtain patent protection for the territory of the Federal Republic of Germany in several ways. Applicants have the choice between

(i) a national application
(ii) a regional European application under the European Patent Convention (EPC)
(iii) an international application under the Patent Cooperation Treaty (PCT)

For alternatives (ii) and (iii), at least part of the grant procedure runs in parallel for several countries.

For the national application, the applicant or an appointed patent attorney files the application documents with the German Patent and Trademark Office (GPTO). Fees are initially charged for filing and searching, and later for substantive examination.

After a formal examination and as soon as the search fee has been paid, the German Patent and Trademark Office initiates a search for prior art. The applicant receives a search report with an opinion on patentability. The substantive examination begins when the request for examination is filed and the examination fee is paid. The Patent Office examines whether the invention for which a patent is sought is novel compared to the prior art, involves an inventive step, is susceptible of industrial application and meets formal requirements.

If the invention satisfies the requirements of the German Patent Act, the German Patent and Trade Mark Office decides to grant a patent.

The maximum term of protection of German patents is 20 years, starting from the filing date. In case of human pharmaceutical products, this term can be extended by a maximum of 5.5 years, and in the case of plant protection products this term can be extended by 5 years (see also Supplementary Protection Certificates).

The patent has the effect that only the patent proprietor is authorized to use the patented invention within the scope of the applicable law. Without the approval of the proprietor, it is prohibited for third parties to produce, offer, circulate, use, or implement the subject-matter of the patent, and to import or own the subject-matter of the patent for the above-mentioned purposes. Unauthorized use of the patent in Germany by a third party gives the patent proprietor the right to claim injunctive relief and damages in infringement proceedings.

European Patent

Under the European Patent Convention (EPC), a patent application goes through a centralized examination and grant procedure at the European Patent Office (EPO). First, the EPO conducts a mandatory search. It informs the applicant of the results in the extended European search report. This is followed by the examination phase which starts after payment of the examination fee and ends with the grant of a European patent if the application meets all the requirements of the EPC. In addition to formal requirements, the subject matter of the application must be novel, inventive and susceptible of industrial application.

With a European patent, patent protection can be obtained in currently 38 contracting states and six further countries. After the centralized grant of the European patent, the applicant decides in which countries protection is sought. The European patent is „validated“ in these countries and thus breaks down into national parts. For this purpose, applications may have to be filed with the national patent offices of the countries. Some countries additionally require translations of at least part of the patent specification into a national language. The effect of the national parts of the European patent corresponds to that of national patents in the individual countries.

With regard to the validation, we offer a system that is both reliable and cost-efficient.

International Patent Applications

Applicants can create the basis for patent protection in currently 153 countries worldwide with an international application under the Patent Cooperation Treaty (PCT).

The filing requirements vary greatly in individual countries. In addition, most countries require the application to be filed in the national language. All those requirements add up to high costs for an application at a point in time when it might be difficult to estimate an invention’s value.

An international patent application avoids these problems. The applicant can file it centrally for all contracting states with a receiving office, e.g. the European Patent Office, in one language. The countries in which the application is actually to be pursued need not be determined until a later point (up to 31 months after the priority date). Only then, the applicant also has to fulfill the national or regional formal requirements.

Thus, an international application gives the applicant time to decide whether and in which countries protection for the invention is sought. Furthermore, the selected searching authority centrally conducts an international search for prior art. The result of the international search makes it possible to evaluate the chances for the (future) grant of national patents while the application is still pending in the international phase, even before costs for the nationalization become due.

Foreign Patents

The formal and substantive requirements for a patent application differ from country to country. We work with experienced patent attorneys and attorneys at law in almost every country in the world (link: world map). Our local colleagues are very familiar with their respective national laws, guidelines and practices. This global network has been built up over many decades and allows us to advise you quickly and reliably worldwide even on very specific questions concerning national patent law. Likewise, our network allows us to coordinate parallel granting procedures in different countries in the best possible way.