Practice Focus:
- International patent applications (PCT)
- European Patents
- German Patents, Utility Models and Trademarks
- Unites States Patents
- European Union Trademarks (EUTM)
- Registered Community Designs (RCD‘s)
Other Areas Of Expertise:
- Opinion work on Intellectual Property Law Infringement
- Litigation relating to patents, particularly in German invalidity cases
- Patent and Trademark search & watch service
- Expert witness testimony on German and European patent law
- Due diligence regarding IP portfolios
Filing Requirements For:
At the International Bureau (IB) or any other competent Receiving Office (RO) that is determined by the residency or nationality of the Applicant, International Patent Applications can be filed by complying with the following filing requirements:
- Specification, claims, abstract and drawings (if any)
- Name, residence, nationality and business address of the Applicant
- Name, residence, nationality and address of the inventor
- If claiming a priority, priority date and country of origin with filing the application. The serial number and a certified copy of the priority application (priority document) can be submitted within 16 months from the earliest priority date. For some countries participating in a respective program, submitting the priority document can be simplified by an electronic Priority Document Exchange (PDX).
At the European Patent Office (EPO) European Patent Applications can be filed covering all EU countries and some additional member countries of the European Patent Convention (EPC) by complying with the following filing requirements:
- Specification, claim, abstract and drawings (if any)
- Name and business address of the Applicant
- Name and address of inventor
- If claiming a priority, the priority date and country of origin need to be declared within two months from the filing date. The serial number and a certified copy of the priority application (priority document) can be submitted within 16 months from the earliest priority date. For some countries participating in a respective program, submitting the priority document can be simplified by an electronic Priority Document Exchange (PDX).
- If based on PCT (Euro–PCT Application) filed in any other language than the 3 official EPO languages English, French and German, a translation into any of these official languages is required.
At the European Union Intellectual Property Office (EUIPO) Registered Community Design (RCD) applications can be filed covering all EU countries by complying with the following filing requirements:
- Drawings: One figure (view) per page; If several views are submitted, all figures need to be filed on separate pages. The maximum number of figures per design is 7 (typically views from all sides, in total 6, plus 1 perspective view).
- Name and business address of the Applicant
- Name and address of the creator (inventor)
- Application Type; Single Design application or Multiple Design application
- Title defining the product, for example: pen, frame, etc.
- If claiming a priority, the priority date and country of origin need to be declared within two months from the filing date. The serial number and a certified copy of the priority application (priority document) can be submitted within 3 months from the filing date.
- Short description optional: May briefly describe the view shown by the respective figures, for instance top view, bottom view, side view, perspective view.
At the European Union Intellectual Property Office (EUIPO) European Union Trademark (EUTM) applications can be filed covering all EU countries by complying with the following filing requirements:
- Name and business address of the Applicant
- Type of trademark: Word mark; Figurative mark; Combined Word/Figurative mark
- List of goods and/or services, and if known, the international class of goods and/or services
- If claiming a priority, the priority date and country of origin need to be declared within two months from the filing date. The serial number and a copy of the priority application (simple, non-certified copy sufficient) can be submitted within 3 months from the filing date.
At the German Patent and Trademark Office (DPMA) utility patent applications can be filed by complying with the following filing requirements:
- Specification, claim and drawings (if any). An abstract can be filed within 15 months from the priority date, but should preferably be filed with filing the application.
- Name and business address of the Applicant
- Name and address of inventor can be submitted within 15 months from the priority date, but should preferably be filed with filing the application.
- If claiming a priority, the priority date and country of origin need to be declared within two months from the filing date. The serial number and a copy of the priority application (simple, non-certified copy sufficient) can be submitted within 16 months from the priority date.
At the German Patent and Trademark Office (DPMA) utility model applications covering the territory of Germany can be filed by complying with the following filing requirements:
- Specification, claim and drawings (if any)
- Name and business address of the Applicant
- If claiming a priority, the priority date and country of origin need to be declared within two months from the filing date. The serial number and a copy of the priority application (simple, non-certified copy sufficient) can be submitted within 16 months from the priority date.
At the German Patent and Trademark Office (DPMA) design patent applications covering the territory of Germany can be filed by complying with the following filing requirements:
- Drawings: One or more figures or photographs; the maximum number of figures or photographs per design is 10 (typically views from all sides, in total 6, plus one or more perspective views).
- Name and business address of the Applicant
- Name and address of the creator (inventor)
- Application Type; Single Design application or Multiple Design application (up to 100)
- If claiming a priority, the priority date and country of origin need to be declared within two months from the filing date. The serial number and a copy of the priority application (simple, non-certified copy sufficient) can be submitted within 16 months from the priority date.
- Short description optional: May briefly describe the view shown by the respective figures, for instance top view, bottom view, side view, perspective view, but should in total not exceed 200 words.
At the German Patent and Trademark Office (DPMA) trademark applications covering the territory of Germany can be filed by complying with the following filing requirements:
- Name and business address of the Applicant
- Type of trademark: Word mark; Figurative mark; Combined Word/Figurative mark
- List of goods and/or services, and if known, the international class of goods and/or services
- If claiming a priority, the priority date and country of origin need to be declared within two months from the filing date. The serial number and a copy of the priority application (simple, non-certified copy sufficient) can be submitted within two months from receiving an official notice.
At the United States Patent and Trademark Office (USPTO) utility patent applications covering the territory of the United States can be filed by complying with the following filing requirements:
- Specification, claims, abstract and drawings (if any)
- If the application is filed in a language other than English, an English translation must be filed within two months of the receipt of a Notice of Missing Parts.
- Name, residence, nationality and address of the inventor
- Name, residence, nationality and business address of the Applicant
- For determining the official fees, information regarding Small (real party in interest below 500 employees including licensees; nonprofit organizations, individuals) or Large entity status
- Information Disclosure Statement (IDS) listing the prior art known to the Applicant; needs to be filed within 3 months from the filing date or 3 months from knowledge about the prior art. Every time the Applicant becomes aware of new prior art, an additional IDS needs to be filed. Later filing is possible under certain circumstances, but depending on the facts may incur significant fees.
- Declaration signed and dated by the inventors, declaring that the inventor is the inventor of the subject matter of the application. Although filing of the Declaration can be deferred up to the payment of the issue fee, for several reasons, it is advisable to file the Declaration as soon as possible, preferably with filing the application.
- If claiming a priority, preferably with filing the application, priority date, country of origin and serial number. By making the priority claim on a separate Application Data Sheet ADS, the priority claim can be deferred up to four months from filing or 16 months from the priority date. A certified copy of the priority application (priority document) can be submitted within 16 months from the earliest priority date. For some countries participating in a respective program, submitting the priority document can be simplified by an electronic Priority Document Exchange (PDX).
- Assignments may be filed any time during the prosecution of the application. It is recommended that the Assignment be filed with the application or shortly thereafter.
At the United States Patent and Trademark Office (USPTO), a national phase U.S. based on PCT for utility patents covering the territory of the United States can be filed by complying with the following filing requirements:
- Copy of the International application unless it has been sent to the USPTO by the IB
- Translation (if the underlying PCT application was not filed in English) (verification of translation only required if requested)
- Declaration signed and dated by the inventors, declaring that the inventor is the inventor of the subject matter of the application. Although filing of the Declaration can be deferred up to the payment of the issue fee, for several reasons, it is advisable to file the Declaration as soon as possible, preferably with filing the application.
- Payment of national basic fee, search fee and examination fee
- For determining the official fees, information regarding Small (real party in interest below 500 employees including licensees; nonprofit organizations, individuals) or Large Entity
- Preliminary amendment (if useful) adapting the claims and specification to US patent law
- Sequence list for biotechnology related inventions
- Copy of amendments to the claims made under PCT Article 19 and translation into English – must be furnished no later than the expiration of 30 months from the priority date, Amendments not received by the 30 months date will be considered canceled.
- If a priority claim was made in the underlying PCT application but the priority document was not filed within the 16 month deadline in the international phase, a certified copy of the priority application (priority document) can still be submitted within four months from national phase entry. For some countries participating in a respective program, submitting the priority document can be simplified by an electronic Priority Document Exchange (PDX).
At the United States Patent and Trademark Office (USPTO), US Provisional Patent Applications covering the territory of the United States and may later be used for claiming the priority right or for conversion to a US non-provisional patent application can be filed by complying with the following filing requirements:
- Name, residence, nationality and address of the inventor
- Title of the invention
- Description, and if any, drawings. Patent claims are not required but are recommendable, among other reasons for defining the scope of the priority right.
- For determining the official fees, information regarding Small (real party in interest below 500 employees including licensees; nonprofit organizations; individuals) or Large Entity status
- Assignments may be filed any time during the prosecution of the application. It is recommended that the Assignment be filed with the application or shortly thereafter, for instance for clearly documenting ownership of the priority right.
At the United States Patent and Trademark Office (USPTO) US Design Patent Applications covering the territory of the United States can be filed by complying with the following filing requirements:
- Drawings (typically views from all sides plus a perspective view)
- A short description briefly describing the view shown by the respective figures, for instance top view, bottom view, side view, perspective view. A formal claim needs to be included referring to the drawings.
- Name and address of the creator (inventor)
- Declaration signed and dated by the creator (inventor), declaring that the inventor is the inventor of the subject matter of the application. Although filing of the Declaration can be deferred up to the payment of the grant and printing fees, for several reasons, it is advisable to file the Declaration as soon as possible, preferably with filing the application.
- Information Disclosure Statement (IDS) listing the prior art designs known to the Applicant; needs to be filed within 3 months from the filing date or 3 months from knowledge about the prior art. Every time the Applicant becomes aware of new prior art, an additional IDS needs to be filed. Later filing is possible under certain circumstances but depends on the facts and may incur significant fees.
- For determining the official fees, information regarding Small (real party in interest below 500 employees including licensees; nonprofit organizations, individuals) or Large Entity status
- Assignments may be filed any time during the prosecution of the application. It is recommended that the Assignment be filed with the application or shortly thereafter.
- If claiming a priority, preferably with filing the application, priority date, country of origin, serial number. By making the priority claim on a separate Application Data Sheet ADS, the priority claim can be made and a certified copy of the priority application filed at any time during pendency of the application.
At the United States Patent and Trademark Office (USPTO) US Trademark Applications covering the territory of the United States can be filed by complying with the following filing requirements:
- Name, nationality and residence or business address of the Applicant
- Type of trademark: Word mark; Figurative mark; Combined Word/Figurative mark
- Use status of the trademark (actual use or intent-to-use). For intent-to-use trademark applications, after the Notice of Allowance issues, by paying respective official fees in six-month increments, the actual use can be deferred up to 3 years. If identical foreign trademark applications or trademark registrations in countries other than the US exist, proof of use in the US will not be required to be filed until between the 5th and 6th year following registration.
- List of goods and/or services, and if known, the international class of goods and/or service
- If claiming priority to a foreign application, a formal priority claim needs to be made within 6 months from the priority date, preferably providing the priority date, country of origin and serial number to avoid an Office Action requesting any missing information. In any case the priority claim needs to be perfected before registration will be granted. Although it is not required to submit a copy of the earlier application to which priority is claimed, if it was filed in a language other than English, an English translation needs to be filed.
Depending on the type of Intellectual Property right, national laws in the respective countries and on the procedural status of a correlating parent application subgroups of applications are possible, as for instance Continuation applications, Continuation-in-part applications, Divisional applications, supplemental patent applications, branching off Utility Models etc.
Further, apart from the above-mentioned more common types of Intellectual Property rights, also a variety of less commonly used Intellectual Property rights are available, for mentioning only some, plant varieties, registered titles for magazines and newspapers, registration of domain names. Further, some Intellectual Property rights may be generated simply by the act of creating, such as Copyrights, or might be generated simply by use, such as Unregistered Community Design, Trade Dresses, or rights based on Unfair Competition.