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Legal Security by Property Rights


Advice in all fields of industrial legal protection

Appeal: In order to challenge validity of an official decision/action by an independent body an appeal may be lodged. E.g. appeals against DPMA decisions are dealt with by the Bundespatentgericht; decisions by the EPO departments are dealt with by Boards of Appeal at the EPO.


Arbeitnehmererfindergesetz: 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 employment law and to intellectual property law.

Bundespatentgericht: Appellate court to decisions by the German Patent and Trademark Office, Federal Office for Plant Varieties, court for declaration of nullity.

Cancellation: 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.


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, e.g. Nice agreement,


Collective marks: CMs may be used by the members of an independent association of enterprises. For a collective mark, regulations governing use of the trade mark by the members of the association must be submitted.

Distinctiveness: A sign is distinct if in principle it can help to distinguish goods and services from competing goods and services.

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.

EPC: European Patent Convention, established in 1973 by a community of European states (not identical with European Union!). Presently 35 member states (updated Feb. 2009), list on http://www.epo.org/about-us/organisation/member-states_de.html.

Exhaustion: 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.


Filing date: 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 dues.


Forfeiture of rights: If infringement is tolerated knowingly for a longer period of time no damage can be claimed thereafter.

Hague System: 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: 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, destroying of infringing material.

International Bureau: Seat of World Intellectual Property Organisation WIPO in Geneva, Switzerland. Central authority for international agreements on intellectual property (PCT, MMA, PMMA).

Licence: By a licence a licensor authorizes use of a patented invention or a registered trade mark to a licensee.

Locarno classification: international agreement on design models and their registration.

Madrid System: international agreement on protection of trade marks under the Paris Convention.


Need to keep term free (of rights): There is a public interest in that descriptive terms should not be registered as trade marks and remain freely available to all competitors (konkretes Freihaltebedürfnis)


Non-obviousness: 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 not as an invention – if it can be derived from the combination of two prior art disclosures.


Nullity procedure: Validity of a granted patent may be challenged in a nullity procedure before the Bundespatentgericht.


OHIM: The Office for Harmonization of the Internal Market is the European Union agency responsible for registering Community trade marks and Community design models that are valid in all 27 countries of the EU; seat: Alicante, Spain.

Opposition: Any third party is entitled to apply for re-examination of a trademark if their own trademark is at risk.


Opposition (against grant of patent): Validity of granted patent is verified or falsified in an opposition procedure before the issuing office. The opposition may be lodged by any third party. Time limit for lodging an opposition is 3 months in Germany, 9 months before the EPO after grant.


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.


Patent register: 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: period of time in which prior publications are disregarded for appraisal of novelty. 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: All IP rights but trade marks offer protection for a limited period of time, a trade mark can be renewed multiple times without limit. For each renewal a fee is due. Patents in Europe must be renewed every year, trade marks must be renewed after every ten years.


Prior art: Prior art covers everything that has been published before the filing date of an application.


Priority: "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: 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.

Unlawful filing: Filing without consent of the inventor, the inventor may claim for return of his invention in this case.

WIPO: World Intellectual Property Organization.