Patents and Utility Models

Inventions are a valuable basis of your economic success. In Germany, inventions traditionally underlie a very strong protection by patent law. However, if you neglect the defense of your patent portfolio, this will not remain without negative consequences. The scope of patent protection will diminish according to the invasion of third parties into your patent’s scope of protection, if you do not keep your defense up against such invasions.

A time-saving alternative to the protection of your invention by a patent may be the protection of your invention as a utility model. The advantage of applying for a utility model is that the German Patent Office (DPMA) does not examine the substantive requirements for protection, i.e. novelty, inventive achievement and industrial applicability, which would be the substantive requirements of registering a patent. This is why a utility model is usually registered within only a few weeks. However, there are some disadvantages of utility models in comparison with patents: First, the period of legal protection is shorter. Second, in a court proceeding, the substantive requirements would still need to be examined by the court. Thus, a quickly registered, but substantively unexamined utility model may prove substantively invalid in court. Our patent attorneys will carefully examine what form of protection (patent or utility model) is the most suitable form of protection for your inventions.

If a third party infringes on your patent or utility model, the German Patent Act and the German Utility Model Act provide you with a wide range of claims against the infringer, e.g. an injunction against any infringing activity, damages for your loss of profits or in the amount of a license fee, and demanding the destruction of any infringing goods and equipment. Our attorneys are ready and able to help you enforce these claims efficiently and – if possible – also immediately in form of an urgency injunction against the infringer. In case of a utility model, we will also assess whether we could indeed prove the so far unexamined substantive requirements for protection in court (i.e. novelty, inventive achievement and industrial applicability).

We will also comprehensively represent your interests in other constellations before the German Patent Office, the German Patent Court (BPatG) as well as all Civil Courts. We will, for example, file a revocation action on your behalf with the German Patent Court in order to eliminate your competitor’s patent or utility model, if this patent or utility model was granted to your competitor without good reason. We will also be pleased to advise and assist you as to other forms of proceedings, e.g. to get a compulsory licence or to file an opposition out of court.

In case you apply certain technical procedures or manufacture certain products and a patent or utility model holder brings – perhaps false – legal claims against you, we will represent and defend you with all possible means against the claimant. Under certain circumstances, we can resolve the dispute out-of-court, e.g. by negotiating an impenetration agreement. A simple, but effective way of defense against the claimant in court may be the filing of a revocation action with the German Patent Court in Munich against the claimant’s patent or utility model. In some cases, antitrust law defences may be applicable. We will be pleased to advise you on finding the best strategy of defense in your individual situation.

The German Employee Invention Law is deemed to be the most complex in the world. Our attorneys will advise and assist you on how you can best use and protect your employees’ inventions in Germany to the benefit of your company.

If you intend to use your patents and utility models not only to bar competitors from exploiting your inventions, but also would like to grant third parties licences in exchange for money (e.g. manufacturing or distribution licences), we will be glad to assist you with commercializing your inventions and with drafting all necessary licence agreements for you.

Unlike in the USA, business methods and software cannot be protected by patent law within Europe. This is true at least as a general principle with some exceptions in individual cases. Our attorneys will, in addition to the exceptions, also show you alternative forms of protection for your software and business methods in Europe.

A patent gives you a monopoly with ultimate power over your invention. But even outside the scope of patent protection, the law may help you protect and foster your business interests against competitors. In order to advance your business interests best, our attorneys will thoroughly assess your economic situation to help you further strengthen your legal position on the market against competitors.

Your contact person for all issues related to unfair competition is Atty. Dr. Christian Seyfert. Please contact us by e-mail (info@winheller.com) or by phone (+49 69 76 75 77 80)