In principle, it is possible and admissible to copy products of a competitor and to put them on the market if these products are not protected by appropriate industrial and intellectual protective rights – except in unfair business practices, e.g., in the sense of an exploitation of reputation. The type of “appropriate” protective right, respectively, depends on the type of subject-matter for which protection is sought and refers to:
- patents and utility models for those subject-matters containing a technical teaching
- trademarks when it comes to the indication of origin by using a name, a logo or a characteristic shape and color;
- designs when it comes to the outer and aesthetic appearance as well as the effect of an object.
In addition to this, there are specific types of protective rights for plant varieties, semi-conductor topographies, typefaces and pharmaceutical products.
We advise you in all aspects concerning the protective right most suitable for you and your product and accompany you from the application through the registration of your protective right – at a global level. For this purpose and as the case may be, we rely on our well-established network of colleagues all over the world, enabling us to cover all fields, types of protective rights and countries. After registration or granting, we manage your protective right throughout its total protection period, we ensure the timely payment of the renewal fees and inform you about all measures necessary to maintain your IP portfolio. In this connection, we elaborate appropriate filing strategies by keeping an eye on the costs at the same time.
In this way, should the situation arise, you can counteract an unauthorized duplication of your intellectual property.
As applicant and owner of protective rights you are aware of the fact that the Patent and Trademark Office or similar official bodies do not monitor protective rights with regard to any potential infringement of the same. The customs may constitute an exception, as, under certain circumstances, infringing products are detained. In general, however, it is the responsibility of the respective owner to monitor and enforce his protective rights.
Our office has the specific expertise and all resources required to provide you with comprehensive support. We monitor your competitors with regard to their protective right applications in order to avoid or promptly counteract potential conflicts. We evaluate your competitors’ products or your competitors’ appearance on the market, compare these products with your own protective rights and advise or coordinate appropriate measures. These range from a “friendly” entitlement for right of use to an infringement action before the court. In this connection, if necessary, we cooperate with appropriately specialized law firms all over the world in order to help you obtain justice.
In the run-up to legal proceedings, many potential disputes can be resolved out of court by mutual agreement and for the benefit of both parties. This is one of our attorneys’ primary missions.
It is the responsibility of each market participant to keep himself informed in his field of business about the competitors’ protective rights and to observe the same: Ignorance is no excuse! Therefore, we offer a continuous monitoring of your competitors with regard to new protective right applications. However, in case of any infringement of your protective right, a number of remedial measures can be taken. These measures range from a simple analysis of the conflicting prior protective right and a justified statement that said protective right has in fact not been infringed, through the filing of protective letters in order to prevent the issuance of an imminent preliminary injunction, right up to a counter attack against the protective right in question in order to cancel said protective right or up to an action for declaration of non-infringement.
Together with you, we analyze the overall situation concerning protective rights as well as the overall economic situation and advise you on how to defend against third party attacks. We provide you with information on opportunities and risks. Together, we define the best way out of the alleged infringement situation. In this connection, if necessary, we cooperate with experienced and specialized law firms all over the world in order to help obtain justice and to defend against conflicting prior protective rights.
Just as in the opposite case, many potential disputes can be resolved out of court in the run-up to legal proceedings by mutual agreement and for the benefit of both parties.
From a legal point of view, a protective right is first of all a right to prohibit: third parties are excluded from its utilization or exploitation. For example, if a patent holder produces and distributes the protected product on his own, he can make sure that he enjoys a monopoly in the place and field where his patent is in force. However, it is often the case that the patent owner is not willing or able to use the protected subject-matter on his own, at least in specific geographical areas. Sometimes, the patent holder’s use is at a lower level than initially planned. In such cases, it may be useful and advisable to grant a license or even an exclusive license to third parties. Similar constellations are also known from research and development collaborations. And last but not least, it may occur that, after a potentially successful attack against either your own or against a foreign protective right, both parties agree on a joint exploitation of the protective right.
We assist you in all legal issues with regard to the exploitation of protective rights. Together, we develop appropriate contractual regulations in order to substantiate and to ensure your exploitation rights. As the case may be, we cooperate with funding institutions or license distributors in order to help leverage your intellectual property.
Protective rights are so-called immaterial goods; these rights can be sold, conferred, inherited, pledged or otherwise made available. Complicated constellations in respect of ownership and right of use are not unusual, particularly with regard to business successions and takeovers as well as research and development projects. Often, it must be clarified who is the owner of the subject-matter for which protection is sought, e.g., an invention, a design or a logo which has been developed jointly or at request, and who is entitled to apply for a protective right. In addition, it needs to be taken into consideration that, in general, it is only the owner registered in the concerning registry of protective rights who has rights and obligations with regard to the protective right. This often causes numerous problems in practice.
We advise you in respect of all types of contractual regulations which might result from protective right issues. These range from a simple declaration of assignment provided for your newly obtained protective right up to complex cooperation agreements involving several parties who, as far as possible, wish to avoid future intellectual property problems.
In doing so, we adhere to the principle according to which a contract will always become effective only after the initial joint objective between the two parties has been replaced by individualized interests. We think ahead and try to approach the frequently arising questions in relation to protective rights proactively and in a well-balanced manner.
Germany is one of the few countries worldwide with complex rules relating to inventions made by an employee – so-called employees’ inventions. These rules prevail over the regulations of the employment contract. Often, the question is whether the invention is an employee’s invention which has to be treated according to the German law on employees’ inventions and which always belongs to the employer or whether an invention has to be regarded as a so-called “free invention” which then may exclusively belong to the employee. In contrast to most of the countries, a separate compensation for the use of the employee’s invention has to be paid to any inventor falling under the scope of German law on employees’ inventions. Moreover, contractual regulations especially comprised in the employment contract are often inadmissible if they modify the regulations of the German law on employees’ inventions to the disadvantage of the employee. The German law on employees’ invention was eased in 2009 in so far as employee’s inventions are automatically passed over to the employer, unless explicitly released by the employer. However, due to the 20-year term of patents, there are certainly many old cases in which an employer might not at all be the owner of an employee’s invention, although he is making use of it.
We advise you as an employer or employee on any questions which may arise in the context of the German law on employees’ inventions, ranging from the question on whether an invention has to be regarded as an employee’s invention right up to the calculation of an appropriate compensation as required by law. We assist you in drafting appropriate agreements and develop together with you frequently used “incentive systems” for your company in order to reduce the bureaucracy in the future, ranging from the notification of an invention, through the filing of protective right applications and the “transfer of rights” in case of subsequently filed applications or abandoned applications, right up to the compensation payment.
By the way, the German Patent and Trademark Office in Munich has its own Arbitration Board for any disputes arising from the German law on employees’ inventions. If needed, we contact said Arbitration Board by telephone and represent you in the proceedings before the Arbitration Board. As a result, costly law suits can often be avoided.