Are property rights such as patents and trade marks a curse or a blessing? In the new packaging journal series „Stable property rights - secure investments“ will examine both the passive handling of third-party property rights and the effective and offensive use of own property rights such as patents, utility models, trademarks or design protection.
Who hasn't heard of it or seen it for themselves? A group enters the hall, everyone looks intently at what they are aiming for, and then the bailiff, the patent attorney and a few more people from the competitor arrive at the stand. The new development, the pride of the company, disappears under large tarpaulins. An embarrassing spectacle in front of a large audience that everyone would like to avoid at their stand.
Or the inspection of a new plant is ordered by court order and the uninvited guests are suddenly standing in front of the company gate. Are they now allowed in and what do they have to be shown? The inspection procedure, which has been established for several years, is being used more and more frequently in practice. Those who are well versed in this area can avoid such scenarios or minimise the damage to the company.
Utilising property rights
„Competent handling of industrial property rights from the development to the market launch of an innovation brings competitive advantages,“ emphasises Hans-Peter Gottfried, Patent Attorney in Dresden. In the packaging journal series, he will provide detailed information on the legal aspects of the life cycle of an innovation, structured according to the phases of development, production and market launch.
The planned contributions are also intended to provide practical advice on behaviour in the event of an infringement, both for the infringer and the company that has to defend itself against an infringer. Interim measures will also be presented - such as the measures at the trade fair or the inspection procedure described above.
The development phase
The development phase of an innovation is primarily about, Property rights of third parties which can then give rise to considerable risks for the company in the later course of production and sales, and to derive appropriate behaviour.
Knowledge of such property rights is always advantageous, regardless of their actual protective effect. They can provide inspiration for in-house developments and, after thorough analysis, it may be possible to create workarounds - again an incentive for innovation. An analysis of the data in the respective official register provides information on whether the property right is still effective at all or will perhaps soon lose its effect. Those who recognise this at an early stage gain an advantage over the competition.
Keeping an eye on the cost-benefit ratio
As is always the case with commercial activities, efficiency is of course also important when working with industrial property rights, in order to achieve a favourable Cost-benefit ratio to achieve. The relatively high costs incurred for acquiring and maintaining property rights should be used strategically.
As early as the development phase, regular Licence issues whether it is a matter of taking a licence or a reserve protection right for prospective cross-licensing. Issues of secrecy protection are of great importance for innovations and development in general. This applies both to solutions that have not yet been registered as intellectual property rights and have not yet been published and to know-how, which is only of value as long as it can be kept secret. In order to ensure the protection of secrets, both personnel and technical issues take centre stage. An established culture of secrecy within the company and fixed rules make enforcement much easier in individual cases.
The area of the Employee invention law also offers both opportunities and risks. Inadequate compliance with these legal regulations can cause unexpected costs of a considerable amount much later on. On the other hand, there are already established procedures and possibilities to simplify the relatively complex handling of legal regulations for the benefit of the company and the inventor alike. In any case, it makes sense to define fixed internal rules for dealing with employee inventions. This helps to avoid costly or disappointing mistakes on both sides.
Last but not least, it is the development phase in which new solutions are created that can lead to proprietary property rights. The possibilities are manifold and strategic decisions are also required here in order to achieve optimum protection at favourable costs. In addition to the type of IP right, both the time and geographical factors play a role, in particular the question of which countries or regions are eligible for an IP right and when the decision must be made.
The production phase
Even in the production phase, especially when it comes to further developments of own products, a Patent protection be of significance. Of particular importance, however, is the continued confidentiality of expertise. There is a need for action, for example, when dealing with visitors to the company who gain access to production facilities and perhaps even to the development department or prototype construction.
Competition law, with its many facets, is a secondary area that has points of contact with industrial property rights. These must also be taken into account, whether during development or when defining the advertising concept for distribution.
The question of the further development of a product also poses special requirements with regard to the following questions Industrial property rights. It must therefore always be checked whether a further development could lead to a separate property right or whether the further developed and correspondingly modified product has developed out of the existing patent protection and is no longer covered by the previous patent. It would then be unprotected against imitation, even though it is the latest state of development.
Particular attention must be paid to the aesthetic design of technical products, including in the industrial sector, and the accompanying protection afforded by a registered design. The importance of trade mark protection should not be underestimated either. Particularly interesting are overlaps between the two types of property rights that lead to the three-dimensional trade mark.
The EU Enforcement Directive of 2004, which introduced extremely drastic sanctions against IP right infringers and whose provisions have also found their way into all German laws dealing with industrial property rights, is of outstanding importance and at the same time a motivation for an offensive and careful handling of IP rights. The economic consequences of an IP infringement are therefore often even life-threatening for the company concerned.
The market launch
The overview is rounded off with information on the market launch phase and the particularly important property rights. The main focus here is on the Trademark rights whose most important secondary function is the advertising function. Strategic decisions are also important here, for example with regard to forward-looking trade mark applications abroad. The brand strategy should also combine the competences of the patent or legal department and the marketing department in an equally forward-looking manner; consensual cooperation is essential for success.
An important area when dealing with brands in practice is also the Mandatory use of trade mark to preserve rights. This can be secured with relatively simple measures in order to be well prepared for a non-use defence if necessary. Use that preserves rights is also in conflict with the further development or modernisation of a trademark.
Author: Hans-Peter Gottfried (Patent Attorney, Dresden)
