Patent granting process
The patent granting procedure (English "patent prosecution" or just "prosecution") is a formal procedure before a competent authority (possibly court) by means of which a technical invention is examined for patentability and a patent is granted if necessary . Sometimes it is also referred to as the "examination".
sense
Patents are sovereign granted, temporary prohibitive, which all prohibit it within a defined territory other than the owner to use the patented teaching business. If necessary, the owner can enforce this prohibition in court. In order to avoid the legally and economically undesirable proliferation of prohibitions from patents and to take account of the general rule of law of legal certainty and traceability of administrative decisions, the patent systems of practically all countries provide for well-ordered procedures for the granting of patents. These can be used to grant patents and, if necessary, revoke them before the relevant authorities.
Demarcation
The patent grant may not proceed with the patent , injury confuse process (English "patent litigation" or just "litigation"). If necessary, it is discussed here whether a patented teaching is being used without authorization.
Refinements
Registration systems
The patent systems of many countries provide only a rudimentary granting procedure in that they ensure the clear definition of content and times and publish the content. Otherwise, certain formalities may still be checked. Otherwise, the patents will be registered without a substantive examination. The substantive examination of patentability is then reserved for the moment when the patent may become relevant between the conflicting parties. The French patent system is structured in this way, as is German utility model law .
Examination systems
Many other patent systems provide for the full examination of applications for patentability. In them, patents are only granted if all applicable conditions are met. The German and European procedures are examples of this.
Territorial reference
Since patents are granted sovereignly, they have a limited territorial effect, and accordingly the respective procedures are also of limited territorial effect. Nevertheless, there are national and transnational procedures.
National procedures
Almost all countries in the world have a national patent system, which accordingly creates a nationally effective procedure for regulating the number of patents valid in the territory of the respective country. The FRG, France, the USA, Japan and China are some examples of such countries.
Supranational ("regional") procedures
In addition, groups of countries have come together in order to be able to design patents uniformly for the region of these countries. That is why they have transferred the authority to issue patents to appropriately created systems and authorities. Often this transfer took place without giving up the national competence for it, so that on the one hand the national and on the other hand the regional way of obtaining a patent is available for the respective countries.
EP procedure
The European Patent Organization , operator of the European Patent Office , is an amalgamation of many European countries independent of the European Union, which has created a uniform procedure for granting patents of the same wording and largely having the same effect for the member states, see also below on this page.
PCT procedure
The procedure under the patent cooperation agreement does not lead to the granting of patents, but at most, if the applicant so wishes, to an expert opinion from a patent office. This must be observed by downstream patent offices. In addition, the PCT procedure provides a common and therefore relatively inexpensive formal entry into the respective national system for a large number of countries worldwide. However, this must be continued nationally in due course.
Other
The ARIPO (African Regional Intellectual Property Organization) is an association of African countries for a joint patent grant system.
The EAPO ( Eurasian Patent Organization ) is the union of the successor states of the former USSR for a common patent grant system.
Procedural premises
Balance of interests between inventor and public
With a patent and the previous patent application, the intangible good of a technical invention is introduced into the legal system and made manageable. This must satisfy the rule of law, in particular aspects of legal certainty, the traceability and the predictability of results. In doing so, not only the interests of the patent applicant must be taken into account, but also the interests of those who may one day be exposed to the injunction claim from the patent, i.e. ultimately the public. Patent offices are therefore not the inventors' helper, but have to balance the interests of the inventor and those of the public concerned. The inventor should get the patents he deserves. The public should be protected from unjustified patents.
Written procedure
In order to make the granting procedure comprehensible and legally secure, it is a priori a written one ( § 34 PatG). A hearing ( Section 46 PatG) or oral negotiations can also take place. However, these are also documented in writing. Smaller agreements are sometimes made over the phone. However, they must also be confirmed in writing.
Public, publication
Patent applications and subsequently granted patents are officially published. Today this is done by placing the respective fonts and making them accessible in publicly accessible databases. In all major patent systems around the world, patent applications are published 18 months after their first application. Patents are published immediately after they are granted. Not only the results are public, but also the entire procedure, so that arguments and perspectives can be understood. In order to achieve this, there is either the means of inspecting the files, or the procedures can be traced using publicly accessible databases.
Application principle
The patent office cannot grant a patent applicant a supposedly appropriate patent formulated by the office. Rather, the applicant has to submit his own requests to the Office, on which the examiner has to comment.
German patent grant procedure
The German Patent and Trademark Office, headquartered in Munich, is solely responsible for the German patent grant procedure. In 2015, 66,889 patent applications were filed with him, i.e. approx. 270 per working day. These applications can go through the procedure described below in order, if necessary, to become a patent that develops its legal effect in the territory of the FRG.
procedure
Preparation of a patent application
Before the proceedings before the patent office begin, the applicant must prepare a description of his invention. The text is often referred to briefly as a "patent application".
This text work is to be drafted with regard to the technical content of the invention on the one hand, but also the legal framework conditions briefly mentioned above on the other. Often this means that patent application texts look markedly different from texts that are only written from a technical point of view.
Submission, application, fee payment
When the application text has been worked out, it is submitted to the German Patent Office together with further information. This can be done conventionally or electronically using a certified process. Email or fax alone are not enough. Applicants with a (domicile) seat in Germany can register themselves directly or can be represented by a patent attorney or a lawyer.
When filing, the applicant can choose between various procedural options:
- If he wants to start the substantive examination procedure immediately, he must submit the examination request and pay the fee for it.
- If he does not want to initiate the substantive examination procedure yet, but wants to officially determine what is relevant against his application (the so-called " state of the art "), he must submit the search request and pay the fee for it. The search request is included in the aforementioned request for examination.
- The applicant can also submit his application without the named requests. Then officially nothing happens except for the assignment of a file number. However, if the application for examination is not submitted within seven years of registration, the registration is deemed to be withdrawn.
If the applicant wishes to claim the filing date of an earlier application under the priority right, he should provide details of this when filing the application.
In addition, the fees due must be paid.
Internal allocation, research and initial decision
After receipt of the application, the patent application is classified according to the international patent classification and then assigned internally to the examiner responsible according to the business plan.
If the applicant has made the search request right from the start, the examiner will then research which relevant earlier publications (the so-called "state of the art ") exist regarding the invention and will inform the applicant of the search result in the form of an uncommented list ( § 43 PatG).
If the applicant has provided the request for examination, the examiner is to Patentwürdigkeit the invention described in the claims of the application his opinion the applicant in the form of a first written about the search result beyond communication to inform and give him a response time (often two to four months, often Application extendable) ( § 44 PatG). In the case of new registrations without priority claim , for which the request for examination was made, the examiners should send the first notification to the applicant within eight months of receipt of the registration. Instead of an initial notification, an immediate decision to grant a patent is also possible. In practice, however, this is very rarely the case.
Further examination procedure
In the above The examiner notifies the applicant of any deficiencies which, in the opinion of the examiner, exist in the application and which must be remedied if a patent is to be granted. The deficiencies can be of a formal nature (e.g. only sketchy drawings were submitted, final drawings are required) or more substantial (typical: in the opinion of the examiner, the claims describe something that, in his opinion, does not involve an inventive step).
The applicant must respond within the set deadline. In principle, he has two options:
- If he is of the opinion that the examiner is right with his objection, he must change the application documents as far as is permissible in order to resolve the objection.
- If he is of the opinion that the auditor is wrong with his objection, he must argue against the objection.
The applicant must respond to the examiner's decision in writing in the form of a so-called "reply to the decision". In or with it, he must submit the necessary changed documents or present the necessary arguments.
In this way, a written back and forth of notifications and replies to the notification can develop between the office and the applicant. A "round" of this takes at least a few months.
If the applicant so requests, there can also be a personal consultation (" hearing ") with the examiner, in which the matter can be discussed directly.
Decision making
If the examiner comes to the conclusion that everything necessary and possible has been said and done and the applicant has been given a fair hearing, he can terminate the examination procedure by resolution. The decision will be positive ("patent granting decision" - § 49 PatG) if all complaints have been resolved, or will be negative ("rejection decision " - § 48 PatG) if complaints could not be resolved. The auditor can also take a decision at the end of a hearing. The first instance ends with such a decision. The decision must be justified in writing.
Complaint, legal complaint
The applicant can contest a negative decision with the complaint (§ § 73 ff PatG). One of the senates of the Federal Patent Court in Munich is exclusively responsible for handling the complaint . Here, too, the procedure begins in writing. In any case, there is an oral hearing, at the end of which a resolution is usually passed.
An appeal to the Federal Court of Justice against negative decisions of the Federal Patent Court is only permitted in exceptional cases and under certain conditions .
Opposition proceedings
With the opposition, others than the patent proprietor can have the validity of the granted patent checked.
Involved
Applicant
The applicant registered in the official register is considered the owner (owner) of the application and may act for the application, i.e. argue for it or change it. He is a party in the grant procedure. Someone who is not registered in the official register as a patent applicant or patent holder is not entitled to act on the application, even if he were the actual owner of the application. The procedural authorization is - unlike the ownership - linked to the register entry. If the actual owner is not registered as such but wishes to take part in the proceedings, he must ensure that he is entered in the register.
Representative
The applicant does not have to communicate with the patent office himself. Instead, he can be represented professionally by a representative authorized to do so and authorized by the applicant. Often this is done by a patent attorney . It can also be done by a lawyer or an employee of the registering company. The correspondence then takes place between the office and the representative, who in turn acts in coordination with the applicant, his client.
Examiners, examination offices
So-called "examination offices" are set up in the patent office. These are each occupied by a patent examiner who is authorized to decide whether to grant the patent or to reject the application.
In opposition proceedings
So-called "patent departments" are set up in the patent office, which are responsible for a patent in opposition proceedings ( Section 27 PatG). These are made up of at least three members, including at least two technically trained patent examiners, who pass resolutions by majority decision. The former patent applicant is now the patent owner and also involved in the proceedings, if necessary with his representative. Then there is the opponent , again if necessary with his representative. Several parties can raise objections and they can have different representatives.
Duration
A patent is granted within a year, but it is rare. The examination process usually takes two to four years. Two or three notices and replies are exchanged before a decision is taken.
Official fees, costs
The official fees of the DPMA for a patent application are comparatively low. The costs of a patent attorney who may be involved will usually be significantly higher.
Legal basis
The patent grant procedure before the DPMA and the BPatG is regulated a priori in the German Patent Act, which also refers to the Code of Civil Procedure.
European patent grant procedure
The patent grant procedure before the European Patent Office is largely the same as before the German Patent Office. Some of the more important differences are described below.
Territorial reference : The applicant can (at the end of the procedure) choose in which European countries the patent developed in the procedure is to be created.
Examining Division : Resolutions on patents are made by a panel of three examiners.
Fees : The official fees of the European Patent Office are much higher than those of the German.
The legal basis of the proceedings before the European Patent Office is the European Patent Convention .
See also
Web links
- Website of the German Patent and Trademark Office
- Leaflet Application for a patent on the website of the German Patent and Trademark Office
- European Patent Office website
- Leaflet Registering a patent on the website of the European Patent Office