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Valid IP rights for a successful IP strategy

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An overview of supporting measures taken by the DPMA

Valid IP rights are what shape successful IP strategies. A permanently high quality of the IP rights is immensely important and one of the main strategic goals of the German Patent and Trade Mark Office (DPMA).

Quality assurance in patent examination – what measures do we take?

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We have been maintaining the high quality of patent examination for a long time by reviewing decisions to refuse an application and decisions to grant a patent. The results of concluded procedures are submitted to the head of cluster for review in order to ensure an error-free examination procedure. Furthermore, we continuously develop and update our internal search databases in order to ensure that a comprehensive and full search for the state of the art is possible.

As a consequence, many patent applicants initially apply for patents for their inventions with the DPMA and base their decision whether to file subsequent applications with the European Patent Office and other national patent offices on the office action issued by the DPMA.

Newly recruited patent examiners get thorough training in accordance with a sophisticated concept. In addition to attending a number of courses on search techniques and strategies and law courses, they receive guidance from an experienced mentor during their first 18 months in the office. This mentor teaches them to use the knowledge gained in these courses when they process current patent applications in practice and assists them in completing their daily work assignments.

In a multi-level quality management project concerning the substantive patent examination procedure, we also produce recommendations for making individual steps and work results uniform. Furthermore, we aim to derive key data and indicators in order to reveal weaknesses and make continuous improvements to the patent examination procedure.

Development of opposition procedures and appeals

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Also important is the development of the opposition procedures, which serve to carry out a substantive examination of the validity of a granted patent and involve a thorough consideration of technical and patent aspects. These procedures are an integral part both of the training of new staff and of the further training of experienced staff. The appeals in the Federal Patent Court provide, within a relatively short period of time, specific substantial feedback on the decisions in the examination procedures.
A look back to 2012 to 2018, however, shows a clear trend: Despite the increase in the number of granted patents from 13,250 in 2012 to 16,370 in 2018, the number of oppositions fell considerably from 430 to 340 during the same period. Likewise, the number of appeals decreased from 536 to 370. The reason for this could be that, instead of filing an opposition, competitors aim to reach an agreement in the form of a settlement, a licence fee or mutually shared patents. In addition, it is often not possible to estimate the effects of the patents granted to the competitor during the opposition period, so that the patent might be challenged by a revocation action at a later point in time. Another reason for the declines could be that the better the state of the art in the procedure or the statement of grounds for the decision is, the poorer the prospects of success are assessed to be.

More personnel in patent examination and reorganisation of the patent divisions

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In the 2018 and 2019 budget negotiations, the Federal Ministry of Justice and Consumer Protection was also able to raise funds for an additional 177 patent examination positions for the DPMA. In the meantime, we have filled all of these positions by recruiting highly qualified experienced experts in engineering and natural sciences. Thanks to the recruitment of these new colleagues, the Directorate General 1 – Patents/Utility Models was easier to reorganise. Seven new patent divisions started operating on 1 April 2019. As the workload in the individual patent divisions had recently developed unevenly, we reallocated large parts of work, resulting in a better distribution of the workload and an aligned duration of the procedures. In addition, we attach importance to a healthy mix of experienced and less experienced colleagues. We assigned the newly recruited staff to all divisions in such a way to ensure they receive perfect training and become well integrated. In technical terms, we responded to technological trends in the industry: themes like "medical technology", "batteries" and "fuel elements", which gain in importance, have each been centred in a division to benefit more from synergy effects.
Overall, the competences for more than 50,000 patent procedures were changed. This posed a challenge not only to the examiners but also to the staff in the patent administration. Thanks to our more efficient structure, we were able to significantly increase the number of concluded examination procedures in 2019 compared to the previous year.

Quality assurance in trade mark examination

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The Directorate General Trade Marks/Designs also aims to deliver highest quality and to manage procedures efficiently and in a timely manner. An element of quality assurance and quality control is to coordinate the decision-making practice. In case conferences with the trade mark examiners, we discuss grey area cases and also consult specialists in particular trade mark forms.
A quality management system alone, however, does not necessarily result in good work results. Most important are the knowledge and experience of the initial trade mark examiners, who receive three-year work-related mentoring immediately after taking on their new activity. They also receive parallel comprehensive theoretical training. Furthermore, the fully electronic case file processing system DPMAmarken is a great help, e.g. as it checks plausibility to prevent errors in case file processing.

Services of the DPMA

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Because correct and up-to-date information is crucial for a successful IP strategy, the DPMA provides electronic services that can be accessed anytime and anywhere. We continuously improve our services to make them easier to use and thus more customer-friendly. A new layout, the search for phrases and tool tips facilitate the search.
As the number of IP rights from Asia has recently soared, we have extended the possible maximum amount of entries in the lists of results and monitored rights: In DEPATISnet and DPMAregister , it is now possible to display 10,000 results in a list of results and to monitor 500 file numbers, 100 IPC symbols and 50 names of applicants or proprietors. DPMAregister also supports the new WIPO standard 27, which shows the current legal status in appealing graphics. Because of these changes, our services offer an excellent opportunity to make or prepare strategic decisions quickly and precisely.

Patent information centres – the regional partners of the DPMA

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In 2019, too, the regional partners of the DPMA supported in particular small and medium-sized enterprises (SMEs) in identifying, managing and enforcing their industrial property rights.

In addition to their standard IP search services, the Patentinformationszentren implemented innovative concepts in cooperation with the DPMA and the European Commission.

During the PIZnet awareness week "IP strategies for SMEs", the patent information centres offered IP guidance free of charge throughout Germany to advise small and medium-sized enterprises and start-ups on how to deal with and economically exploit industrial property rights. In this context, experts analyse the company-specific IP situation, considering patents, utility models, trade marks and designs as well as what is known as soft IP – e.g. business secrets and copyright. Companies can then make better assessments of their economic chances and risks in the field of intellectual property and are given specific recommendations for actions.

Within the scope of IPA4SME, a project co-financed by the European Union, the Directorate-General for the Internal Market, Industry, Entrepreneurship and SMEs (GROW) provides small and medium-sized enterprises with financial and expert support to evaluate and protect intellectual property, including IP pre-diagnostics (IP audit), the proportional reimbursement of EPO fees (up to 2,500 euros per patent application) and allowances for legal fees up to 2,000 euros. In Germany, the patent information centres are responsible for IP pre-diagnostics. They received relevant training from the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO).

In surveys by the European Commission, 90% of the participating SMEs and 98% of the participating experts said that the SMEs that had obtained advice had a better understanding of their intellectual property and its value than they had before the advice. In addition, 90% of the SMEs and 98% of the experts considered the IP pre-diagnostics report a useful source for defining and implementing the IP strategy of their companies.

We are in close contact not only with the patent information centres, but also with universities and research institutions throughout Germany in order to reasonably develop our services, in particular those to raise awareness of intellectual property, and inform students as early as possible about the importance of IP rights and adequate IP strategies. For universities are important factors for the economic and social development – they foster innovations and give important impetus to tomorrow’s society.

This text originally was a contribution of the DPMA to PATINFO2020. The topic of the 42nd colloquium of Ilmenau Technical University on patent information and industrial property protection was "Market success through smart IP strategy" (17-19 June 2020).

Bilder: iStock.com

Last updated: 20 October 2020 

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