As patent attorneys we advise our clients comprehensively in all areas of industrial property rights. Thereby it is particularly important for us to support our clients in such a way that they can always rely on us in all legal matters, and can concentrate fully on the economic exploitation of their intellectual property.
Regardless of whether a new technical invention is to be protected by a national or European patent, or as a utility model, a logo is to be protected as a trademark, or the appearance of a new product as a design, whether an own property right is to be asserted against copycats or a warning letter is required, or an infringement of existing third-party rights has been claimed – our clients can always rely upon us to give them an honest and realistic assessment of the situation, and to provide them with well-founded decision-making bases that both take the legal aspects into account and also allow for a cost-efficient procedure in pending proceedings.
We are also happy to advise our clients in matters of employee inventions, in the drafting of licence agreements, in connection with plant variety or semiconductor protection, protection certificates, or with regard to the development of international application strategies.
Property Right Applications
We are uncompromising when it comes to drafting property right applications. Especially in the case of technical property right applications (patent and utility model applications), every single word in an application can be weighed in both in the grant proceedings and in any infringement, opposition, or nullity proceedings, and can tip the scales when it comes to the legal validity or enforceability of the property right. In the drafting of their property right applications our clients must therefore be able to rely on us – and we are well aware of our responsibility in this context and process every single application with greatest care and maximum effort.
Irrespective of the type of intellectual property to be protected, obtainment of the earliest possible “filing date” is extremely important. This is so because the legal validity of every single property right depends, among other things, on the date on which the relevant patent, utility model, trademark or design application was first filed with a competent office; we also speak of the priority date of an application in this context. Against this background, our clients can depend on us to process first applications quickly and preferentially. Generally, we deliver our first draft within two weeks of ordering and provision of all the necessary documents – but in particularly urgent cases such an application can also be drafted within a few days.
Naturally the drafted property right applications can be filed nationally (also outside of Austria), for Europe or internationally at your choice.
Depending on the type of intellectual property to be protected, we can draft the following property right applications for you and file them with the competent office:
- national patent or utility model applications with the competent national patent office
- European patent applications with the European Patent Office
- international patent applications with the World Intellectual Property Office
Marks for labelling goods and services:
- national trademark applications
- European Union trademark applications with the European Union Intellectual Property Office
- international trademark applications with the World Intellectual Property Office
Appearance of products:
- national design applications
- European Community design applications with the European Union Intellectual Property Office
- international design applications with the World Intellectual Property Office
REPRESENTATION & CONDUCT OF PROCEEDINGS
With the filing of an application, the applicable proceedings are initiated by the competent authority. Depending on the type of property right, various aspects of the application are examined, and the property right is only entered in the appropriate register if the proceedings are concluded successfully.
We represent our clients before the competent authorities and conduct all proceedings on their behalf. Thereby we keep our clients up to date on the current status of the proceedings, make sure that all the formal requirements are fulfilled, analyse the official search reports and official communications, and point out the potential courses of action and all the advantages and disadvantages associated with the same. Thus we enable our clients to make well-founded decisions at every stage of the proceedings. Our clients can depend on us that no time limits will be missed and the application will not be dismissed for formal reasons.
In particular, we represent our clients
- in patent granting proceedings,
- in utility model registration proceedings,
- in trademark registration proceedings, and
- in design registration proceedings.
In addition, we perform the validation of granted European patents in Austria and all other member, extension and validation states of the European Patent Convention.
We also represent our clients in opposition and nullity proceedings as well as in appeal proceedings (complaint, appeal, appeal of the decision on appeal). In the case of patent infringement proceedings we also represent our clients before the competent Austrian courts together with a specialised lawyer colleague from our network, and support our clients in the obtainment of plant variety and semiconductor protection rights.
An industrial property right is an exclusion right: it grants its proprietor or the applicant the right to exclude third parties from using the protected technical invention (patent, utility model), the protected mark (trademark) or the protected appearance (design).
In the case of a patent, trademark, utility model or design infringement by third parties acting without the permission of the proprietor, we support our clients in the assertion of this exclusion right before the competent courts. Thereby we also ensure the assertion of appropriate claims for injunctive relief, damages and destruction and also obtain temporary injunctions, if necessary, in order to prevent the infringing actions as quickly as possible.
In the case of an infringement of property rights abroad, we work together with specialised colleagues in the respective countries, with whom we have close business relationships that have grown over the years, and of whom we are convinced that they will represent our clients in the best possible way before the respective national courts. If required, we also represent our clients together with a specialised lawyer colleague in such proceedings before the competent courts.
Should multiple property rights have been infringed upon, we develop an appropriate strategy and handle the coordination of the entire procedure.
As court-sworn and certified expert for patent law, patent attorney Henhapel is regularly appointed as an independent court expert. However, our patent attorneys also use their expertise to prepare private opinions in order to strengthen the position of our clients.
In the course of preparing such private expert opinions, we perform a detailed examination of concrete patent law issues relevant for the concrete case, such as the question of legal validity of a property right compared with the state of the art, or the question of whether a concrete subject matter or method lies within the extent of protection conferred by a property right or not.
Therefore private expert opinions regularly form an important foundation for decision-making by the court in patent infringement proceedings. However, the developed lines of argument can also be used in any opposition or nullity proceedings that may be pending in parallel. Moreover, private expert opinions can be a substantial foundation for internal decisions.
CONTESTATION OF PROPERTY RIGHTS
Because of their exclusion effect, granted property rights can be a significant obstacle in the business operations of a company – irrespective of whether they were rightly granted or not. Therefore there are various possibilities to contest granted property rights that either should never have been granted in the first place or are no longer legally valid (for instance due to lacking use of a trademark by the proprietor).
Patents, utility models, trademarks and designs can be cancelled in nullity proceedings after they have been granted or registered. In the case of patents, opposition proceedings can also be initiated within a short time after they are granted; this involves a lower cost risk by comparison with nullity proceedings. Shortly before or after a trademark is registered, an objection to its registration can be filed.
In the case of the unlawful application of an invention as a patent, annulment proceedings can also be conducted before the competent national court.
IP PORTFOLIO MANAGEMENT
After granting or registration, we make sure that your property rights are maintained. We deal in particular with all the formal requirements that have to be fulfilled in order for a property right to be effective in certain jurisdictions, and with the timely payment of all annual or renewal fees that have to be paid to the national and international authorities at regular intervals in order to prevent expiration of the property right. Demands for payment from uninvolved third parties, which are becoming more frequent recently, can therefore safely be ignored.
From the moment a property right is included in our IP portfolio management, our clients can depend on it that they will receive all communications concerning this property right exclusively through our firm. In cases in which a decision has to be made, these communications contain our patent law assessment of the possible course of action or even – where meaningful – a clear recommendation. Moreover, our clients no longer need to worry that a property right might be lost unintentionally, for instance due to a missed deadline or a fee that was not paid. As far as their intellectual property is concerned, our clients can thus concentrate fully on its economic exploitation and rely on us to do everything else.
Industrial property protection already plays an important role in the early stages, for instance in research and development. At this point it is usually still easily possible to modify the concrete technical embodiment of a product slightly. And often it is precisely these minor differences that decide whether a subject matter or method falls within the extent of protection conferred upon an existing patent or utility model or not. Therefore we accompany the product development by our clients in many cases, and support them with searches for relevant valid patents or utility models, and with analyses of the extent of protection conferred upon existing property rights.
As a result, the risk of infringement of existing property rights can be reduced. Moreover, an early search can also provide insight as to the chances of success of an own application for a patent or utility model for the invention.
For the own business operations of a company, or also with regard to the development of own technologies, it is essential to be well informed about developments in a certain engineering field on the one hand, and applications or granted property rights of competitors on the other hand. That is why we perform regular monitoring of certain patent registers over longer periods of time for our clients.
That allows us not only to determine whether and by whom new applications have been filed in a certain engineering area, but also to gain information about the legal validity of relevant property rights. An examination of the respective national, European and international registers allows us to determine which stage the grant proceedings of a patent application have reached, what the official opinion with regard to patentability of the application is, and how likely it is that the application will actually be granted. In addition, the legal status of an application or a property right can be determined, in particular whether time limits have been missed and whether there are possibilities to keep the application or the property right pending or valid despite a missed time limit (e.g. further processing or reinstatement).
Last but not least, an early knowledge of a solution already patented by third parties can help to prevent cost-intensive developments that cannot be used due to third-party property rights right from the start.
Essentially, the state of the art in a certain area in the case of technical property rights, the wealth of forms for a certain class of products in the case of designs, and the entirety of all trademarks already registered or filed in the case of trademarks can be determined on the basis of a search.
Thus, searches can also provide an insight into the chances of success of own applications. At the same time, a search (and subsequent detailed analysis) also allows the risk of an infringement of existing property rights to be assessed or reduced. Therefore we perform regular searches for our clients in the run-up to own applications or the planned market launch of a new product.
Searches are furthermore often imperative in the case of rescission proceedings in order to obtain the relevant state of the art based on which lacking legal validity of the attacked property right can be demonstrated.
ASSIGNMENT OF RIGHTS
In the case of assignment of a property right from one applicant/proprietor to another, a change of legal entity, or also in the case of a change of name of an applicant/proprietor, it is necessary that the documents used meet certain formal and substantial criteria on the one hand, and on the other hand the change must be entered in the respective patent register so that the applicant/proprietor can continue to assert his rights to the relevant property right vis-à-vis the respective authorities.
We therefore support our clients regularly in connection with assignments, provide suitable documents and templates for notarisation, and arrange for appropriate register entries and amendments worldwide.