Unique! Inimitably- This is your know-how, your invention, your design or your brand. With our help, this should continue to be the case. We support you in protecting your intellectual property in a unique way. For this purpose, we offer legal services in all areas of intellectual property and copyright law. Our range of services can be found below, broken down according to the various intellectual property rights.
PATENTS AND UTILITY MODELS
Worldwide searches for State-of-the-Art
Complete handling of applications including preparation of all application documents, national and international (PCT Patent Cooperation Treaty)
Handling of registration and examination proceedings at the German Patent and Trademark Office (GPTO), Swiss Federal Institute of lntellectual Property (SFIIP), and the European Patent Office (EPO) as weil as the World lntellectual Property Organization (WIPO)
Handling of opposition, appeal, nullity and cancellation proceedings at the GPTO, SFIIP, Federal Patent Court, Federal Supreme Court and EPO
Expert Opinions on validity and infringement of technical intellectual property rights
Enforcement of intellectual property rights in court, before all Regional Courts and Higher Regional Courts as well as out of court.
Monitoring of the status of intellectual property rights / Searches for infringement
Drafting of license agreements
Rating of intellectual property rights
Employees Invention Law
Trademarks
Worldwide identity and similarity searches
National, regional (EU) and international registration of trademarks at the GPTO, Office for Harmonization in the Internal market (OHIM) and the World lntellectual Property Organization (WIPO).
Handling of opposition, appeal and cancellation proceedings at the GPTO, OHIM, European Court, European
Court of Justice, Federal Patent Court and Regional and Higher Regional Courts
Enforcement of intellectual property rights in court, before all Regional Courts and Higher Regional Courts as well as out of court Expert Opinions on validity and infringement of trademarks
Monitoring of trademarks
Designs
National , European, and international application of design patents at the GPTO, SFIIP, OHIM and WIPO
Handling of appeal, nullity and cancellation proceedings at the GPTO, SFIIP, OHIM, Federal Patent Court, Regional Courts and Higher Regional Courts
Enforcement of design patents before all Regional Courts and Higher Regional Courts as weil as out of court
Expert Opinions on validity and infringement of design patents Monitoring of designs
Further Services
Competition Law / Supplemental protection of industrial achievement Copyright Law
Drafting of contracts / Licenses
Purchase and sale of intellectual property rights Software Law / Internet Law / Domain
Law Arbitration proceedings
Innovation consulting
Training / Seminars
Innovation, know-how, trademarks, designs - We help you protect your intellectual property.
You need information, advice and support for patents, utility models, trademarks, designs or licenses - we inform you, we provide advice, we support and relieve you of administrative tasks, we represent your interests to the authorities, courts and third parties, short - we are here for you.
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EPO fee increase and micro-entity regime with reduced fees
02.04.2024
EPO fee increase and micro-entity regime with reduced fees
02.04.2024
As of April 1, 2024, the European Patent Office will unfortunately once again increase its official fees. However, there is now a fee reduction of 30% on the official fees of the European Patent Office (EPO) for small entities under certain conditions.
Micro-entities are microenterprises, natural persons, non-profit organisations, universities or public research organisations.
A microenterprise is defined as an enterprise which employs fewer than 10 persons and whose annual turnover and/or annual balance sheet total does not exceed EUR 2 million.
"Non-profit organisations" are organisations which, by virtue of their legal form or statutes, are not permitted under the relevant law to be a source of income, profit or other financial gain for their owners, or, where they are permitted to make a profit, there is a legal or statutory obligation to reinvest the profits made in the interest of the organisation.
"Universities" are "classic" universities, i.e. higher education and research institutions as defined by the relevant legislation. However, comparable institutions, such as secondary or higher education establishments, are considered to be universities.
"Public research organisations" are entities such as universities or research institutes that are organised under public law and which, irrespective of the way they are financed, have as their primary goal the conduct of fundamental research, industrial research or experimental development and the dissemination of the results by way of teaching, publication or technology transfer. All profits must be reinvested in carrying out these activities, in the dissemination of the results or in teaching.
Applicants wishing to benefit from the micro-entity-related fee reductions (Rule 7a (3) EPC) must expressly declare their status, i.e. that they are a microenterprise, a natural person, or a non-profit organisation, university or public research organisation within the meaning of Rule 7a (3) EPC. The declaration must be filed at the latest when the fee concerned is paid. Under Rule 7a(5) EPC, where there is more than one applicant, each must be an entity within the meaning of Rule 7a (3) EPC for the reduction of fees under the micro-entity-related support scheme to apply. Any change in the status of an entity under Rule 7a (3) EPC which has requested a reduction of fees must be notified to the EPO. Changes in the status of an entity which occur after the filing of the declaration will take effect only for the future and will not affect any reduced fees already paid. If a patent application is transferred, the fee reduction will continue to apply only if the new applicant is also eligible for micro-entity-related support under Rule 7a (3) EPC. The new applicant must file a new declaration.
No reductions will be applied if the applicant fails to submit the relevant declaration at the time of payment. An applicant may always submit the missing declaration at a later date. However, the reductions will only apply to fees paid after the date of filing of the declaration.
The fee reductions for micro-entities under Rule 7a(3) EPC will apply to payments for European patent applications or international applications that have entered the European phase (Euro-PCT applications) only if the micro-entity has filed fewer than five applications with relevant dates in the five years preceding the relevant date of the application, for which the fee reduction is requested.
For any application with five or more previous applications falling within the five-year period ("cap"), the micro-entity will not be eligible for a fee reduction. This applies irrespective of whether the previous applications were subject to a fee reduction and irrespective of their current status (pending, withdrawn, deemed withdrawn, refused or patent granted). This cap on eligible applications is designed to ensure that only those applicants with little or no experience of the European patent system benefit from the support measures. If multiple applications are filed by the same applicant with the same relevant date, the application numbers will determine the order for the purposes of the cap.
Where an application is transferred, it will be deemed to belong to the new applicant for the purposes of both future payments and the calculation of the cap. This may affect the eligibility of the applicants' other pending applications from the date of legal effect of registration of the transfer in the European Patent Register. The transfer does not affect payments made before the date of legal effect of registration of the transfer. If the new applicant is a micro-entity, a declaration is required for micro-entity support.
The EPO will systematically check the cap on eligible applications per applicant when eligibility is claimed.
In the event that a reduced fee was paid but the cap has been exceeded, the applicant will be invited to pay the missing amount within a period of two months from the date of the invitation. However, for renewal fees for European patent applications, the usual six-month grace period under Rule 51(2) EPC applies.
The EPO carries out random checks regarding the status of applicants during the course of the grant procedure. If these random checks give rise to reasonable doubts as to the veracity of a declaration, the EPO may request appropriate evidence.
Where a declaration concerning the applicant's status is incorrect, i.e. where the applicant has incorrectly declared itself to be an entity within the meaning of the micro-entity-related support scheme (Rule 7a (3) EPC), an unduly reduced fee will be deemed not to have been validly paid and the application will be deemed withdrawn under Articles 78(2), 86(1) and 94(2) EPC and Rules 39(2) and 71(7) EPC. However, for renewal fees for European patent applications, the usual six-month grace period under Rule 51(2) EPC applies so that the missing amount, including the additional fee, can still be paid within this period. The same applies where no declaration has been filed but the applicant has paid a reduced fee.
Below the new Rules 7a and 7b EPC are cited:
Rule 7a
Reduction of fees
(1) Where a person referred to in Article 14, paragraph 4, files a European patent application or a request for examination in a language admitted in that provision, the filing fee or examination fee shall be reduced in accordance with the Rules relating to Fees.
(2) The reduction of fees referred to in paragraph 1 shall be available for:
(a) microenterprises;
(b) small and medium-sized enterprises;
(c) natural persons;
(d) non-profit organisations, universities or public research organisations.
(3) Where a microenterprise, natural person, non-profit organisation, university or public research organisation files a European patent application or, in respect of an international application, performs the acts referred to in Rule 159, the following fees shall be reduced in accordance with the rules relating to fees:
(a) filing fee;
(b) fee for a European or supplementary European search;
(c) examination fee, and in addition the previously paid international search fee where the European Patent Office acted as International Searching Authority;
(d) designation fee;
(e) fee for grant;
(f) renewal fees for the European patent application.
(4) The reduction of fees referred to in paragraph 3 shall not be available where the same person has filed five or more European patent applications or Euro-PCT applications within a period of five years preceding
the date of filing of the European patent application concerned or
the date of entry into the European phase of the Euro-PCT application concerned.The relevant date for previous applications shall be the date of filing in the case of a European patent application or the date of entry into the European phase in the case of a Euro-PCT application.
(5) In the case of multiple persons filing a European patent application or a Euro-PCT application, the reduction under paragraph 1 or 3 shall be available only if each applicant fulfils the applicable eligibility criteria.
(6) The eligibility criteria laid down in paragraphs 1 to 3 shall be fulfilled on the date of the payment of the fee concerned.
Rule 7b
Declaration of eligibility for a reduction of fees
(1) Applicants wishing to benefit from a reduction of fees under Rule 7a, paragraph 1 or 3, shall declare themselves to be a person within the meaning of Rule 7a, paragraph 2 or 3, at the latest when the first reduced payment is made.
(2) Applicants shall inform the European Patent Office of any change of status affecting eligibility for a reduction of fees at the latest when the fee concerned is paid.
(3) In the event of reasonable doubt as to the veracity of the declaration within the meaning of paragraph 1 or, subsequently, as to the applicant's eligibility for a reduction of fees, the European Patent Office may request evidence.
(4) Should it become apparent that an incorrect declaration has been filed or the European Patent Office has not been informed of a change of status in accordance with paragraph 2 and a reduced payment is made, the fee shall be deemed not to have been paid and the application shall be deemed to be withdrawn
Since the regulations are very complex and may lead to a loss of rights in case of false declarations, use of these rules should be limited to clear cases for which there are no doubts on the status of the applicant. Care should be taken for such enterprises which are close to the limits for the number of employees and annual turnover and/or annual balance sheet total, since different ways of calculating such numbers may be used.
The same procedure as every year: New version of the 12th edition of the Nice Classification comes into force
23.01.2024
The same procedure as every year: New version of the 12th edition of the Nice Classification comes into force
23.01.2024
The so-called Nice Classification is one of the most important tools in trademark law. In order to achieve the greatest possible standardization of international trademark protection, individual member states of the Paris Convention agreed on a uniform classification of the goods and services for which a mark can claim protection. Almost all trademark offices now use the Nice Classification. The Nice Classification has practical consequences for the applicant, especially insofar as the amount of fees in most offices is determined by the number of Nice Classes required. For the preparation of a trademark application, the classification offers a broad “treasure” of terms for goods and services that the trademark offices cannot object to as being too vague. However, the Nice Classification does not constitute an exhaustive list of all products eligible for trademark protection. Goods and/or services that are not included in it may be registered but must be sufficiently specific and allow a clear classification into one of the now 45 classes.
The Nice Classification is constantly checked to ensure it is up to date and applicable. A new “edition” appears every five years, which can bring about fundamental structural changes, such as the reclassification of goods into other classes or even the creation of new classes. The annual revision in the form of “versions” is less drastic. Mainly new terms are added here. The 2024 version of the 12th edition came into force on January 1, 2024 and has been published by the World Intellectual Property Organization.
For trademark owners the publication of the new version is an opportunity to remember that it is advisable to check whether the trademark protection is up to date, in particular whether new goods and/or services have been added since the trademark registration that represents an extension of protection necessary. Nothing will change for existing trademark registrations, as trademarks will not be subsequently expanded. However, re-registration is possible and in some cases recommended. We will be happy to advise you in this respect.
Launch of the Unified Patent Court and the European Unitary Patent
17.05.2023
Launch of the Unified Patent Court and the European Unitary Patent
17.05.2023
After decades have passed since the idea for a unitary patent system in Europe with lengthy negotiations and preparations, the start of the European Unitary Patent and the Unified Patent Court on June 1, 2023 is now approaching. As you surely already know, from June 1, 2023, there will be the possibility to request unitary effect in the European Union for granted European patents and to conduct legal disputes regarding the validity of the patent and possible infringements of the patent protection before a European court in a unified procedure. This will eliminate the need for nationalization of European patents in many individual member countries of the European Patent Convention and for possibly parallel invalidity and infringement proceedings in different European countries. Although the European patent known up to now with a bundle of national patents will continue to exist, on the one hand for countries which are not members of the European Union and on the other hand for countries of the European Union which have not yet joined the unitary patent system, a large number of countries have already joined the unitary European patent system, so that national procedures will become superfluous in these countries.
With the start date of the Unified Patent Court and the European Unitary Patent, it is necessary for owners of European patent applications and patents to adapt to the new patent system. In particular, there is an opt-out possibility during a transitional period of seven years to opt out of the jurisdiction of the Unified Patent Court and to continue to choose the jurisdiction of the national courts. In order to choose this opting-out option, a corresponding notice must be filed with the Unified Patent Court before any litigation is pending. Thus, if it is desired that an existing European patent or European patent application is not subject to the jurisdiction of the Unified Patent Court, a declaration to opt out of the jurisdiction of the Unified Patent Court should be filed with the Unified Patent Court as close as possible to June 1, 2023.
We see advantages and disadvantages associated with the jurisdiction of the Unified Patent Court. It is certainly advantageous that nullity proceedings on the validity of the patent and infringement proceedings can be conducted together before the Unified Patent Court, so that the separation of nullity proceedings and infringement proceedings, which has prevailed in Germany, for example, up to now, is abolished. Another advantage is that now only one proceeding and not several proceedings in different countries have to be conducted. A disadvantage, however, is that so far there is no experience with the Unified Patent Court, so that to a certain extent new ground will have to be broken. If you wish to file a declaration of withdrawal from the jurisdiction of the Unified Patent Court, we will be pleased to assist you, since we are already admitted as representatives before the Unified Patent Court and can therefore conduct all proceedings before the Unified Patent Court.
Regarding the possible choice of the unitary effect of a European patent to be granted in the future, the advantages should clearly outweigh the disadvantages, since due to lower translation requirements and the moderate renewal fees of the European patent with unitary effect, the patent with unitary effect is very favorable in terms of costs.