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  • Writer's pictureBERLIN STARTUP SCHOOL

The Mighty Three Intellectual Property: IP

Updated: Jun 15, 2023

In the third part of his thought leadership series on intellectual property, Ludwig Lindermayer, a patent and trademark attorney at PAUSTIAN & PARTNER, discusses the basics of IP and how startups can protect their brand.

In this session on intellectual property, we will continue our exploration of the intricate world of IP by shedding light on one of the most iconic IP rights: the patent.

Given the significant variations in laws and case law across countries, as well as the presence of regional systems like the European Patent Office and the upcoming Unitary European Patent from June 1st, 2023, we will focus here on the basics of patents and their "little brother," the utility model. As we understand them today, the concept of patents originated in Venice in 1474, followed by England's "Statute of Monopolies" in 1624, which became the model for subsequent patent laws. The term "monopoly" encapsulates the essence of a patent, wherein the applicant is granted a monopoly on their invention, thereby gaining the right to prevent others from implementing the patented technology. At its core, a patent serves as a means for inventors to disclose their inventions to the world, contributing to societal progress, and, in return, receiving exclusive rights over their invention.\

Notably, an invention lacking technical features, such as the example of a cheese sandwich, would fail to meet the patent requirements.

It is important to note that almost anything can be applied for as a patent, even seemingly mundane items like a cheese sandwich (as exemplified by US patent application 20130295234 A1). However, the key question is not what can be applied for, but rather what can be patented.

Patents protect technical inventions, excluding shapes, colors, and other non-technical aspects, unless they contribute to achieving a technical effect. For instance, a rough surface on an adhesive tape to reduce slipperiness on steps or a bright red color on a life vest to enhance visibility are considered technical features.

It is worth mentioning that software and artificial intelligence can be eligible for patent protection, although this topic involves numerous intricacies.

To obtain a patent, the technical features of an invention must meet the requirements of novelty, inventiveness, and enabling disclosure. Although other aspects, such as industrial applicability and legal exclusions, also need consideration, we will primarily focus on novelty and inventiveness for the sake of simplicity. Notably, an invention lacking technical features, such as the example of a cheese sandwich, would fail to meet the patent requirements.

Novelty pertains to whether an invention has been previously disclosed. It involves determining if the combination of technical features has been made public before. If the invention lacks novelty, it cannot be granted a patent.

Inventiveness relates to the technical creativity involved. It examines whether the differences between an invention and the prior art (existing knowledge in the field) would be considered obvious to a skilled person. In other words, would a skilled person in that field of technology arrive at the same differences without engaging in inventive thinking? Determining inventiveness involves subjective factors, such as the level of knowledge and expertise possessed by the skilled person. For example, if the prior art discloses a method for hanging a picture using a nail, and the invention proposes using a screw instead, it may lack inventiveness since screws and nails are similar and it would be obvious to try both options. However, if the invention involves a method of hanging a picture using a zero-gravity picture frame, where the prior art only suggests the use of a nail, the inventive step may be present, and both the method and the zero-G picture frame could be considered patentable.

Enabling disclosure is another crucial requirement. An invention must be described in a way that enables others to understand and replicate it, thereby advancing society. If a patent application fails to provide adequate disclosure, it will be deemed lacking in enabling disclosure and may not be granted.

If a patent application meets the criteria of novelty, inventiveness, and enabling disclosure, a patent will be granted. Generally, patents remain valid for 20 years, subject to the payment of annual fees to maintain their validity. The patent holder can take legal action against others who infringe upon the patented technology.

It is worth mentioning that software and artificial intelligence can be eligible for patent protection, although this topic involves numerous intricacies.

Patents not only protect inventions but also serve as valuable bargaining tools in disputes between companies (e.g., Apple vs. Samsung). They can enhance a company's value, making them attractive to startups. Patents can also be bought, sold, and enforced, even if the patent holder does not produce the protected goods. The realm of patents is vast and labyrinthine, offering various possibilities and considerations.

Now, let's turn our attention to the "little brother" of patents: utility models.

Utility models are similar to patents but possess distinctive characteristics. They are not available in every country, with China, Japan, Austria, and Germany being among those that offer utility models. Each country has its own registration process for utility models, some involving substantive examinations and others not. As a German Patent Attorney, I will use the German utility model as an example.

In essence, an application for a utility model closely resembles a patent application. It is crucial to draft a utility model application with the same level of care and detail as a patent application. In Germany, utility models cannot be applied to methods, unlike patents. After a preliminary check for enabling disclosure (excluding obvious perpetual motion machines, for instance), the utility model is registered. Unlike patents, utility models do not undergo substantive examination until they are "used" or challenged by someone else. Only when an external party contests the validity of the utility model or when its validity is directly attacked, do the requirements of novelty, inventiveness, and enabling disclosure come under scrutiny.

Why consider utility models, given their uncertain nature? Despite the inherent uncertainties, utility models offer a quick and cost-effective means of obtaining a registered IP right that others must consider. In some cases, due to the different systems surrounding utility models, they may even provide greater stability than patents. For example, in Germany, certain prior art is excluded from attacking the validity of a utility model, similar to the situation in China.

A significant distinction between utility models and patents is the shorter maximum "lifetime" of utility models, typically capped at 10 years in Germany.

In conclusion, the "little brother" of patents, the utility model, should not be underestimated as it can be just as valuable and advantageous in certain scenarios.

The information provided above is an attempt to explain the complex subject of patents and utility models in simplified terms, focusing on the fundamentals. It does not constitute legal advice. For further details, it is advisable to consult an attorney specialized in intellectual property law.

Thank you for joining us on this challenging journey through the IP rabbit hole. In our next session, we will explore the vibrant realm of design.


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