White papers

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  • European Patent with Unitary Effect: Patent Translations in the Transition Period

    The introduction of the European patent with unitary effect enables patent holders to protect their inventions in 25 member states by filing a single patent application at the EPO. The procedure up to granting of the unitary patent remains the same as for regular European patents without unitary effect. Read more
  • Licence of Right: A possibility to reduce maintenance fees

    Maintenance fees, sometimes referred to as renewal fees or annuity fees, for patent rights have to be paid annually in most countries. The differences from one country to the other are the starting point of the first payment and the amount of the maintenance fees. A few countries provide reductions on fees if you are an individual or your company has a small entity status. Read more
  • Luxembourg: a basis for optimizing search fees in Europe

    When looking for safe and effective means to reduce costs, applicants should consider the following: a Search Report with a Written Opinion prepared by the EPO can be obtained through a Luxembourgish patent application, and the EPO partly or fully refunds its search fees if in a subsequent European Patent or PCT application the priority of an earlier Luxembourgish patent application with this Search Report available is claimed. Read more
  • Additional lessons learned from Tomato II and Broccoli II

    On 25 March 2015, the Enlarged Board of the European Patent Office handed down its decision in the consolidated cases G 2/12 (“Tomato II”) and G 2/13 (“Broccoli II”). The decision has been eagerly awaited, see Dennemeyer’s newsletter about decision T 1729/06 (“Water melons”). Read more
  • Hamlet and the patenting of parameters in Europe

    As a general rule, an applicant is free to draft a patent claim in any desired claim language; the same is true for the accompanying description. However, when an invention manifests in particular parameters and the invention shall be protected by a European patent granted under the European Patent Convention, some particular issues may arise. Five of these issues are discussed in this paper. Contrary to Hamlet, we must ask not only one question in this context, but several. Read more
  • Foreign filing and effective use of the Patent Cooperation Treaty

    While an increasing number of Patent Prosecution Highway (PPH) cooperation programmes are being established between different patent offices, enabling patent applicants to request fast-track examination procedures, many companies continue to face challenges in finding the right balance between cost and quality in the foreign filing process. This paper analyses companies’ options and considers some of the issues raised by foreign prosecution. Read more
  • Back to national filings? A little help for sceptics of the unitary patent

    Whether justified or not – that remains to be seen – there are concerns that the enforcement of unitary patents will be far slower, more expensive and more unpredictable than has been the case with patents in Germany up to now. Some sceptics are already advising their clients to avoid European patents and revert to national filings. Whether or not this makes sense will be briefly clarified here. Read more
  • Trademark maintenance actions around the world

    The purpose of this white paper is to introduce the different types of trademark maintenance actions and their terms of protection in order to provide an overview of when, where and how they need to be filed. In some countries protection of a trademark is not only obtained by means of renewal, but the owner is also compelled to file “in-between actions” in order to keep their trademark right alive. Read more
  • Strategies against threatened preliminary injunctions

    This paper deals with preliminary injunctions (PIs) based on patents with a view towards European procedures. Also discussed are precautionary measures that a potential defendant in PI proceedings may take in order to avoid an injunction. The threat that a patent proprietor is successful in obtaining a PI cannot be completely eliminated, but there are many measures to minimize it. Read more
  • Collective and Certification Trademarks in the EU

    This white paper tackles the concepts of collective and certification trademarks including definition, examples, filing options and associated costs, examination particularities, and advantages of obtaining a collective/certification trademark instead of a regular trademark. Also discussed are eligibility criteria and requirements for successfully filing collective and certification trademarks. Read more
  • Tips for filling patents applications in Japan

    The purpose of this white paper is to introduce some points to keep in mind before and after filing an application in Japan. We will address the following matters: (1) before filing: patentable invention, types of claims, contents of specification and grace period (2) after filing: the scope of amendment and how to accelerate the examining procedure. Read more
  • Protecting designs, copyrights and trademarks in Italy

    The present white paper aims to provide an overview of the existent possibilities of protecting distinctive intellectual property rights such as copyrights, industrial designs and trademarks under the Italian law, in comparison to the European Union system. Options for obtaining full cumulative protection under all the aforesaid IP rights are also analyzed. Read more
  • Obtaining a patent in Australia

    The present white paper provides a brief overview of the procedure for obtaining a patent in Australia and is aimed at non-Australian entities that may be considering filing a patent application in Australia via PCT National Phase Entry. The following aspects are addressed: application, request for examination, examination, notice of entitlement, acceptance and sealing, and renewal fees. Read more
  • Trademark symbols: why, when and how to use them

    The present white paper aims to provide an overview of the regulations governing the usage of the signs “®” and “™” indicating the status of trademarks. The paper gives details and advice about the proper use of these symbols, their particularities in different countries, and how to avoid potential legal problems or sanctions for misuse. Read more