service: Integrated management
of intellectual property rights

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Consultation services, filling & prosecution of intellectual property

Intellectual property lies at the heart of business operations across numeruos industries. The prosecution of intellectual property rights plays a pivotal role in protecting and enforcing IP rights. It is also an important aspect of a business strategy. By protecting the innovations, the value of IP will increase and enhance the ability to compete in the market.

One of the essential considerations in IP prosecution is to prove the ownership IP assets and pursuing actions against any infringement or violation of these rights.

Patent drafting & Filling

Patent filing includes a rigorous process. Inventors must provide a detailed description of their idea to transform it into an invention. This meticulous process aims to protect new inventions and ensure that each invention is unique.

Drafting a specification that effectively protects the most valuable parts of an invention requires extensive expertise and drafting experience. It is as much of a technical skill as it is an art. Effective patent drafting must also comply with all of the requirements stipulated by the local patent office.

Registration and trademark renewal

Trademarking, establishing, and protecting a strong brand is very important to create a distinct brand identity and help differentiate products and services in the market. An effective trademark strategy is essential to secure a competitive advantage so that business success can be achieved. Consumer purchasing decisions are strongly influenced by the trademark and reputation that a brand represents. Therefore, a registered trademark is a valuable asset to its owner and provides a number of important rights.

Maintaining the trademark registration is equally important. Allowing a trademark to expire may lead to the loss of rights associated with it.

Annuity Patent Services

A Patent Annuity is a fee paid by the patent owner to maintain the validity of a granted patent for its authorized term. Failure to pay this fee results in the patent lapsing, causing the patent owner to lose their rights before the scheduled expiry date. The payment of Patent Annuity is a straightforward task but can have significant consequences if overlooked.

The amount and frequency of these renewal fees vary according to national or international laws governing patents. If an existing patent is still an asset and serves to deter infringers in current or future technological development, it is cruicial to keep it active.
It is necessary to regularly monitor the Patent Annuity deadlines and fee amounts to ensure continuous protection of the patent.

FAQ

While the specific requirements for patentability vary between jurisdictions (sometimes considerably), it is generally held that a patentable invention:

  • Is a device, machine, product, process or method that performs a technical function and — even more importantly — solves a technical problem. The problem can be something that has or has not yet been addressed specifically by an existing invention. If it utilizes prior art, your patent application must make clear it is not claiming any pre-existing inventions.
  • Is "non-obvious." Some jurisdictions do not use this term — the EU and several others prefer to say a patentable invention involves an "inventive step." But the general point is similar: The invention should represent an approach to a problem that would not be readily obvious to someone with working knowledge of the invention's relevant field prior to the patent application's filing date. In legal terms, this standard is referred to as "a person skilled in the art."

The materials submitted alongside the filing (abstract, drawing, description and so on) must also clearly explain how the invention could be practically manufactured under plausible circumstances.

Patentability exceptions and exclusions

Here are a few key points to remember regarding eligibility for patent protection:

  • In many jurisdictions, the IP of product designs (i.e., non-functional physical attributes) is protected through design rights. For a handful of others — most notably the United States — a design patent provides the same. (As defined above, a U.S. patent for operational aspects is called a utility patent.)
  • Plant patents cover many non-sexually-produced plant varieties (exact eligibility differs by jurisdiction).
  • Software (including apps) must be integral to a device's operation to be considered for a patent. (However, the original code written to create a computer program or app can typically be copyrighted.)
 

You should always consult the patent office to which you are applying — or a local patent lawyer — to learn jurisdictional specifics regarding the patent application filing process. Such particulars make assistance of a patent expert such as those at Dennemeyer of huge benefit during the drafting stage. At any rate, in many circumstances, you will need to include:

  • The application cover sheet and data sheet (specific document names vary by jurisdiction).
  • An abstract summarizing the invention.
  • A description explaining the proposed invention in much more detail and including at least one specific claim regarding function and purpose.
  • Disclosures of relevant prior art and other information related to the invention.
  • Drawings to illustrate the invention's operation. Traditionally, these are in black and white; many jurisdictions have additional requirements if submitting color images or reproductions of any computer-generated graphics.
  • A declaration or oath attesting to your status as the original inventor. Ideally, before submitting this, you will have conducted thorough prior art searches using national, regional and international databases and an advanced patent search and analysis tool like Octimine to ensure your proposed invention is valid and not infringing on registered IP.
  • Forms authorizing fee payments by card or electronic check.
What if I file a provisional application?

The few jurisdictions (the United States, Australia and others) that allow filing for a provisional patent do not require as much supplemental material: no claims, affidavits or prior art disclosures. Only the provisional patent application, drawings, description and payment authorizations are necessary. Remember: Provisional applications are not published and never last longer than 12 months. Despite this, they offer the advantages of claiming an earlier filing date for a subsequent nonprovisional application and use of the term "Patent Pending."

The primary filing fee for a single patent application is usually the equivalent of a few hundred U.S. dollars or euros, but Dennemeyer's experts can deliver tailored quotations for a clearer picture. However, this fee can quickly increase if the application exceeds a certain number of claims (more than three, for example), requires a large number of sheets (digitally or physically), is filed by mail, exceeds your local patent office's file-size limits or causes other handling issues.

Additional fees are required for the application to be examined and published and may also become necessary for searches and responses to office actions. Many jurisdictions offer discounts on the various fees associated with patent filing to small businesses or those who are self-employed. Nevertheless, patent application costs can quickly spiral into the tens or even hundreds of thousands.

On the other hand, this must be weighed against the cost of not filing for a patent. In industries where the state of the art shifts quickly or patent eligibility is not easily met — like software and apps — securing patent rights may not be worth the cost due to the risk of obsolescence or invalidation. Be that as it may, in most fields, the ultimate value of patents can overshadow their application costs, whether through lucrative licensing deals, outright sales or sheer exclusivity.

Given the amount of paperwork, research, effort and money described above, it would not be fair to say filing a patent is easy. But the degree to which it is "hard" can vary considerably.

The factors below also affect the length of the patent approval process.

Application issues

If your initial application is thorough, has little risk of running afoul of prior art and does not require the patent examiner to request additional information (or request it more than once), the process can be fairly routine. In this case, it may take as little as 12-18 months from filing to patent grant, a timeframe many in the IP industry would consider brisk.

On the other hand, if your filing is incomplete, uncommonly lengthy, has unnecessary claims, fails to disclose prior art or falls short in other areas, this will only lead to stress and costs that could have been avoided or minimized. It will also prolong the examination period. Working with a patent law firm like Dennemeyer & Associates can help mitigate the chance of application delays.

Office backlog

Large IP offices, including the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO), often deal with a degree of backlog. The EPO disclosed an average examination period of 23 months during 2021 (a slight decline from 2020), while the USPTO's figure was about the same as its European counterpart's for 2021 (showing a steady increase).

Oppositions

An inventor or organization is limited to a specific time frame to file an opposition to your patent application. Depending on the jurisdiction, this may be two to six months for pre-grant oppositions and six to 12 months for post-grant procedures. Opposition proceedings last 18-19 months on average. In other words, a patent that might have gone into effect a year and a half after filing may instead require three years before it is in force. Moreover, if the opposing party has legitimate grounds for their action, it can persuade examiners to invalidate or restrict the patent grant (or their intent to grant).

How long does it take to get a patent?

With everything we have discussed, it is reasonable to expect to spend about two years getting a patent.

Some patent offices offer expedited processing, which can limit the examination period to 12 months or less, but this often requires an additional fee.

For patents already filed with a domestic office, foreign filing via the Patent Cooperation Treaty (PCT) system imposes a maximum of around 30 months before a patent must enter the national phase. Also, the Patent Prosecution Highway (PPH) is useful if trying to file simultaneously in multiple jurisdictions as it fast-tracks office examinations as long as a participating office has validated at least one of the application's claims.

As long as renewals are paid according to the laws of the jurisdiction where the patent is in force, most countries and regions allow patents to last 20 years before they expire. After expiration, the invention enters the public domain, which is why some inventors and organizations opt for trade secret protection over patenting (though the former comes with its own limitations).

If a patent holder misses a maintenance payment due to circumstances behind their control, the "abandoned" patent can be reinstated. In all cases, the argument made to convince patent offices that abandonment was unintentional has to be airtight. An application for reinstating a lapsed patent incurs specific fees and must be filed within two months of the office informing the patent holder of the abandonment.

  • Unregistered trademarks: based on common law rights, they do not require formal registration and are signified by the ™ symbol in some jurisdictions.
  • Registered trademarks: identified by the ® symbol in some jurisdictions, these provide nationwide or international protection, depending on the registering office.

Of the two, registered trademarks offer by far the most substantive legal protection. Unlike their unregistered counterparts, registered marks receive the full benefit of codified rights conferred by the laws of their issuing jurisdictions (the U.S. Lanham Act, the EU's Directive 2015/2436, Japan's Trademark Act and so on). International registration is possible through the Madrid System administered by the World Intellectual Property Office (WIPO). As the 114 members of the Madrid Union pledge to respect trademarks originating in other signatory jurisdictions, this is an efficient way to extend IP protection across more than 80% of world trade.

Infringement of your exclusive trademark rights can lead to civil penalties — or, if the offense amounts to counterfeiting, the possibility of criminal charges.

  • For a trademark to be registered (and remain as such), it must:

    • Demonstrate originality: The specifics of eligibility vary by jurisdiction, but marks must always be distinctive. They should not be generic terms or, generally, contain elements that can reasonably be considered obscene or inflammatory. Nor should they be what are called "descriptive marks" that explicitly outline a product or service's primary purpose.
    • Be suggestive, arbitrary or fanciful: Suggestive marks can allude to a product or service's function (e.g., Microsoft). Arbitrary or fanciful marks, however, are much more likely to impress examiners. The former refers to known words used in a novel context, e.g., "Redemption" for a whiskey brand, while the latter is something unknown in the host language, like "Pepsi." Many soft drink brands have colorful names, but "Pepsi" is fanciful since it is an invented word, whereas "Sprite" is arbitrary because the term has an established meaning unrelated to soda.
    • Bear the ® symbol in all appropriate jurisdictions: Failure to show the registered trademark symbol in conjunction with the relevant IP can limit enforcement options and damage the trademark's legal protection in some jurisdictions. Conversely, displaying the registration symbol in jurisdictions where it has not been conferred may lead to stiff penalties.

    Actively using a trademark in commerce, or demonstrating an intent to do so, is a requirement to maintain registration. As a consequence, you will periodically have to affirm (and possibly prove) the mark's use or acceptable non-use in certain jurisdictions. Additionally, most countries permit members of the public to request the cancelation of a registered mark that has not been commercially used for several years (usually three to five).

First, conduct a trademark search to find any identical or similar mark that could imperil your registration attempt. Dennemeyer's professionals can provide invaluable assistance here. Having completed this step, your next move will be to file a trademark application with the IP office in your primary jurisdiction and pay the appropriate fees.

Along with the basic application form, you will need to specify the goods and services to which the trademark applies, and drawings or specimens may also be required. Some trademark offices have special description requirements for marks that use precise colors or are non-visual (scents, sounds, etc.).

An initial trademark filing will likely cost at least several hundred U.S. dollars (or the equivalent) as the fee is typically tied to the number of classes indicated. Countries that require statements of intent to use may call for additional payments. Extension requests, appeals, amendments and (if applicable) post-registration declarations can also add to the overall cost.

Trademark registrations can be renewed indefinitely if all relevant fees are submitted at the appropriate intervals. Periodic declarations of use are also necessary in some jurisdictions. This means key branding elements can be safeguarded for decades by combining Dennemeyer's protective services and strategies with a mindful attitude toward portfolio management.

Biro Oktroi Rosseno's Trademark Monitoring service includes ongoing searches for identical or overly similar marks that have received or are pending registration in jurisdictions relevant to you. If any surface, a BOR & Associates lawyer or member of a trusted partner firm will file an opposition or nullity action. Depending on the circumstances, this may require more than arguing the marks' similarity. Your trademark attorney may seek to prove that the contested mark would confuse consumers, create unfair competition or detract from the distinctiveness of your trademark.

Lastly, we can work with you to develop anti-counterfeiting strategies, remaining vigilant for signs of criminal infringements of your IP.

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