I. Overview of the Industrial Property Rights

In Germany, industrial property rights (hereinafter "IPRs") mainly refer to patents, utility models, designs and trademarks. The German Patent and Trademark Office (hereinafter "the DPMA") is the authority responsible for the granting or registration of the above IPRs. Generally, technical inventions can be protected by patents or utility models (in comparison to patents, utility models do not protect method inventions), and innovations regarding the appearance of products can be protected by designs, while signs (e.g. words, images) identifying the origin of goods and/or services are eligible for the protection of trade marks.

At the European level, relevant protection in Germany can also be achieved through European patents, Community designs and European Union trademarks.

However, there is no so-called European utility model or Community utility model protection. It is also worth mentioning that in Germany and Europe the term "patent" usually only refers to invention patents, not including the utility models and designs.

The granting of European patents is administered by the European Patent Office (hereinafter "the EPO"). Usually, in order to be validated in Contracting States of the European Patent Organization (38 Contracting States in total, including all 28 Member States of European Union), the claims and/or description of European patents should be translated within three months after publication of the mention of grant. However, due to the London Agreement, Germany, United Kingdom, France, Switzerland, Ireland, Liechtenstein, Monaco, Luxemburg and Belgium do not require any translation for European patents to be validated in these countries after the grant. A European patent validated in a Contracting State will give its proprietor the same patent rights as those of a national patent.

Furthermore, 26 Member States of the EU (not including Spain and Croatia) are currently preparing the introduction of European patents with unitary effect (hereinafter "Unitary Patent") in EU Member States based on the successful practice of current European patents. In the future, once a European patent has been granted, its proprietor can validate the European patent in one or more EPO Contracting States respectively like in the current situation, or validate it as a unitary patent for the EU Member States which participate in the unitary patent scheme. When everything goes well, the unitary patent system is expected to enter into operation in 2019.

Community designs and European Union trade marks (hereinafter "EUTM") both provide unitary protection in all 28 Member States of the EU. There are two different kinds of Community designs: registered Community designs (hereinafter "RCD") and unregistered Community designs. A RCD application shall be filed before the European Union Intellectual Property Office (hereinafter "the EUIPO") in order to obtain the certificate of registration, while obtaining protection of an unregistered Community design only needs making the design available within the EU instead of filing an application. However, the unregistered Community design only enjoys a short-term protection (three years as from the date on which the design was first made available to the public within the EU) which cannot be extended, and it constitutes a right which only prevents intentional copying by a third party. The EUIPO is the authority responsible for the registration of the RCD and EUTM.

II. Introduction to the Application for the Industrial Property Rights

Applicants having neither their domicile nor their place of business in Germany must be represented in the proceedings before the DPMA by either German patent attorneys or German attorneys-at-law. Similarly, applicants having neither their domicile nor their place of business in Contracting States of European Patent Organization or in the EU/EEA must be represented in the proceedings before the EPO or the EUIPO by qualified representatives.

Except trade marks, the aforementioned IPRs, i.e. patents, utility models and designs respectively have the longest term of protection of 20 years, 10 years and 25 years as from the date of filing. In order to maintain the validity of the concerned IPRs, renewal fees should be regularly paid to the corresponding authorities. It is worth mentioning that after payment of the renewal fee for the year in which the mention of the grant of a European patent is published, the renewal fees afterwards shall be paid respectively to the Offices of the Contracting States in which the European patent is validated. After implementation of the Unitary Patent, renewal fees for a Unitary Patent can be paid directly to the EPO.

If the applicant has already filed an application (hereinafter "previous application") on the same subject of protection in another country or region (e.g. China), the corresponding application on the same subject filed in Germany or Europe within a certain period (hereinafter "priority period") after filing of the previous application can claim a priority from the previous application ("the Paris Convention approach"). When judging the substantial conditions for granting IPRs in Germany or Europe, the determination of prior arts/prior designs/prior conflicting trade marks / trade mark applications depends on the date of filing of the previous application, i.e. the date of priority.

In the grant proceedings for a German or a European patent, the Office will carry out searches on the prior art and substantive examinations on conditions including clarity, novelty and inventive step. Only when the substantial conditions are satisfied a patent can be granted. Compared to the patent, a German utility model is less costly and its registration is much faster. In the registration proceedings of German utility models the Office does not examine the substantial conditions like clarity, novelty and inventive step, and does not provide a search report listing the prior art documents unless explicitly requested by the applicant or a third party (in this case, additional search fee is required).

In the registration proceedings of German designs and RCD, the Office will search on prior design nor examine the substantial granting conditions such as novelty and individual character. These conditions are usually assessed in future disputes regarding the design.

In the registration proceedings of German trade marks, the Office will not search on the prior conflicting trademarks / trade mark applications. At the EU level, under explicit request of the Applicant, the Office will conduct searches on the prior conflicting trademarks /trade mark applications and inform the holders of the concerned prior trademarks / trade mark applications, which enables them to file an opposition within three months from the publication of the application to prevent the registration of the later EUTM application.

III. Summary

Due to limited space, this article hereby only gives a rough overview of the application for different industrial property rights in Germany and Europe. In the end, the table presented below summarizes the relevant important points.

Provided by Yiming Sun, German Patent Attorney, European Patent Attorney, European Trademark & Design Attorney, Director of the firm HUASUN