A patent right is created by registration. The patent relates to the protection of scientifical or technical inventions. To be granted protection these inventions have to be new, based on an inventive step and capable of industrial application. An invention is new only if it is not already state of the art and, thus, publicly known. Even prior to the registration of the patent, certain rights may be attached to an invention.

Employee Invention Law

Employees can also create inventions as part of their employment contract. The invention’s fate and transition into the employer’s assets, as well as the employees participation in turnover arising from the exploitation of the invention is regulated by the German Employee’s Invention Act (ArbnErfG). Employees have reporting obligations and employers have compensation obligations – provided the employer wants to claim the invention as their own. The complex procedures and compensation rules for employee inventions offer great potential for errors, omissions and conflicts. It is therefore part of the compliance of any company that generates turnover with employee inventions to standardise and formalize these processes.

Licence Agreements

Licence agreements regulate the use of patents between the licensor and licensee. Particular attention shall be paid to the licensing obligations of the licensee. A breach of the obligation to exercise the licence – especially in the case of exclusive licences – may include claims for damages by the licensee. The licensee should pay attention to the calculation and due-date of his licence fee and his obligations to cooperate. It is usual that fees are smaller the higher the investement and work the licensor has to put in. An unclear and flawed license agreement may result in years of disputes and a devaluation of the licenced patent due to lapse of time.

Patent infringement

Cases of patent infringement are causing huge cost risks because of the regularly very high dispute values. According to German Law the statutory litigation costs are calculated according to the value of dispute of the case and the losing party has to bear all costs. In addition there is a huge financial loss if infringing products have to be destroyed or handed over to opponent. Last but not least, the claims for damages resulting from a patent infringement are significant cost risks since they are based on the value of the patent and the license fees that would have had to be paid.

Patent Application

Patent applications should be made with the help of specialized patent attorneys, who have studied a natural or technical science and finished a patent attorney training. We work together with patent attorneys who are specialized in various scientific and technical fields to provide our clients with professional support not only in our own legal field but also in technical and scientific questions.

Patents and trade fairs

Competitors meet at trade fairs and often it is only there that the realize their patents are being infringed by other companies. It is then necessary to act promptly in order to prevent further damage. Usually one has to apply for an interim injunction which may check the patent infringement quickly but, unless opponent accepts the injunction, not permanently. However, there are often uncertainties as to whether a patent infringement actually really has taken place or not. The trade fair must then be regarded as an occasion to examine into the infringement of the patent. Claims for information can be made. It is important to bear in mind that interim injunctions usually have to be be applied for within one month of the first knowledge of the infringement case. This one month period also includes the prior warning letter which has to be sent to the infringer.

In case you have questions with regards to Patent Law / Patentrecht please get in touch with Rechtsanwältin Eva Dzepina (German attorney-at-law) at dzepina@borgelt.de or via telephone +49 211 5858990.

E-Mail: info@borgelt.de oder Telefon: +49.211.5858990

Eva N. Dzepina LL.M. (UK)