RK IP-law - Kanzlei für IP und IT-Recht

Patent law

Patents protect inventions. Inventions are solutions to problems in the field of technology. What is protected is not a concrete object but an abstract solution, typically in the form of a device or a process.

The scope of protection of the patent is determined by the patent claims. These describe in an abstract way the protected problem solution. The patent has the effect that only the patent owner is authorized to use the patented invention. A patent infringement occurs when a third party uses the invention without the consent of the patent owner.

The patent proprietor is entitled to injunctive relief against the infringer irrespective of fault, which is regularly asserted by way of a warning prior to a legal dispute. Even below the threshold of a cease-and-desist letter is the so-called property right inquiry, with which a possible patent infringement is pointed out without this being connected with a request for cease-and-desist.

The patent owner is entitled to a claim for damages in addition to the injunctive relief in the event of culpable infringement. Furthermore, the patentee is entitled to information and accounting when asserting a claim for damages. Disputes on the question of patent infringement are settled before special district courts (German patents) and before the so-called Unified Patent Court (European patents).

Only inventions that are new are patentable. This means that the invention must not already belong to the prior art at the time of the patent application. The state of the art includes all information that is publicly accessible. The lack of patentability can be asserted by way of a nullity action before the Federal Patent Court in Munich or before the Unified Patent Court. Since a reliable examination of worldwide knowledge can rarely take place when a patent is granted, the chances of a successful nullity attack are regularly high.

We will be pleased to advise and represent you in all patent law matters.

Trademark law

In the context of globalization and the densification of world trade, trademarks and the associated trademark law are gaining in importance. Trademark protection is typically acquired by entering a trademark in the register. Like all IP rights, trademark protection is territorial. A German trademark is filed with the German Patent and Trademark Office (DPMA) and, once registered, enjoys protection in Germany. The European Union has created the possibility of registering EU trademarks at the European Union Intellectual Property Office (EUIPO) in Alicante. This procedure provides trademark protection for the entire EU.

The so-called Madrid System can be used for international trademark protection. International trademarks can be registered for a large number of countries via this system, which is based at the World Intellectual Property Organization (WIPO).

The most common trademarks are word or word-picture trademarks. In trademark development, it is important to create distinctive word and image creations. The more unique the trademark design succeeds, the easier the registration process is. The recognizability of the brand and the chances of a particularly high brand value also increase with the individuality of the sign design. It is helpful if a word creation does not contain any descriptive elements.

Trademark protection refers to certain goods and services defined in a list.

We are happy to advise you on the design and development of trademarks and trademark strategies.

Design

Designs of objects or materials can be legally protected against imitation. The prerequisite for protection is that the design is new and has an individual character. An individual character exists if the overall impression of the design clearly stands out from other designs. Novelty exists if the design has not been made available to the public before. It is important that designs do not enjoy design protection insofar as the designs are exclusively conditioned by their technical function.

German designs are protected by registration at the DPMA. At EU level, Community designs can be acquired for the territory of the Union. On the one hand, this can be done by registration, in which case the maximum term of protection is 25 years. In addition, there is statutory design protection at EU level, which lasts for a period of three years from the date of publication of the design.

The registered design may only be used by its owner. Third parties are prohibited from using it without the owner's consent. In particular, third parties may not offer or place on the market products which correspond to the design. In the case of unregistered EU designs, this only applies if the product concerned is the result of an imitation. This means that parallel creations are not covered.

We advise you on the legal protection of product designs and file design applications for you.

IT contracts

Contracts in the field of IT are initially subject to the general rules of contract law. The individual manifestations of IT contracts are assigned to classic contract types. The acquisition of software for permanent use for a one-off payment is regarded as a purchase contract. It does not matter whether the software is made available on a data carrier or by download. The use of cloud software or SaaS solutions for an ongoing fee is granted under a rental agreement. The modification or adaptation of software is understood as a contract for work.

In addition to the contract typology, copyright in computer programs plays an important role. Within the EU, the Directive on the Legal Protection of Computer Programs (2009/24) provides a good legal framework. The copyright of software authors arises unbureaucratically by operation of law at the time the program is created. Only the author may use the computer program. The so-called exploitation rights are assigned to the author. These include the exploitation rights of reproduction, adaptation and distribution of a computer program. Reproduction also occurs when the programme is executed, since a copy of the software is created in the working memory of the computer.

Copyright holders may grant rights of use to third parties. Often, the user of the software is granted a simple right of use. The content of this right of use (licence) must be defined. The so-called End User Licence Agreements (EULA) serve this purpose. The granting of rights of use also plays an important role in the design of distribution structures. For example, it is possible to grant a distribution partner a special right of use which authorises him to grant sub-licences to end users.

We draft software contracts of all kinds and provide legal support for your IT projects.

Distribution agreements (German law)

Sales structures form the backbone of successful market development. There are various ways of organizing the sale of goods and services, ranging from sales representative networks to authorized dealer networks. The choice of a distribution model is associated with specific advantages and disadvantages. Different legal frameworks apply, also with regard to EU competition law, which contains requirements to be observed in the EU block exemp-tion regulations. The establishment of distribution structures requires the drafting of contracts which should contain, among other things, the remuneration models, the appearance of the trading partners on the market, compensation regulations and liability issues.

The commercial agency contract is the classic among distribution contracts. This type of contract is characterized by the independent activity of the commercial agent combined with a high degree of integration into the business structures of the principal. The commercial agency relationship is based on the legal regulations of § 84 ff. HGB and the EU Commercial Agents Directive. The commercial agent's obligation to broker the conclusion of contracts is offset by the entrepreneur's obligation to pay commission to the commercial agent. The commercial agent acts in the name of the principal if he has a power of attorney to conclude contracts. In the event of ordinary termina-tion by the principal, the principal's advantage remaining in the customer base acquired must be compensated (commercial agent compensation).

Commission, on the other hand, is characterized by the fact that the commission agent acts in his own name but on behalf of the principal. Externally, the commission agent is fully responsible for the execution of the transaction with the third party. In the internal relationship between the commission agent and the principal, however, the transaction has the same effect as the principal's own transaction. The commission is regulated by law in § 383 ff. HGB. The principal receives the proceeds of the transaction (e.g. the purchase price). However, he must also bear the expenses associated with the transaction and pay the commission agent the agreed commission. The commission agent who works permanently for the principal is called a commission agent. Commission agent contracts are not regulated by law. However, the regulations on commercial agency are applied accordingly.

In contrast to commercial agents and commission agents, authorized dealers act in their own name and for their own account. As an independent dealer, he earns his profit from the difference between the purchase and sales price. In practice, there are various manifestations of the authorized dealer relationship. The spectrum ranges from relatively loose framework agreements, which regulate little more than the purchase prices and delivery conditions for the authorized dealer, to strong integration of authorized dealers into the distribution system of brand manufacturers.

We would be happy to advise you on setting up and designing your sales structures.