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A Driving Force for Innovation and Law

 

"A driving force for innovation and law" -- this is how the German Chamber of Patent Attorneys views itself. The Chamber promotes both the advocacy of German patent attorneys as well as innovative businesses searching for protection for their innovations. In an interview, Dr. Brigitte Böhm, president of the German Chamber of Patent Attorneys, explains the Chamber's taks, new developments in international cooperation for the German Patent and Trademark Office as well as how to ensure the quality of counsel provided on matters of patents and protection of innovations. She also offers tips for those searching for a qualified patent attorney.

 

GSC: According to your website, the German Chamber of Patent Attorneys considers itself to be a corporation under public law that organizes patent attorneys in Germany, as well as promotes further development of the profession and of intellectual property rights. What type of support do you offer for innovative, internationally active businesses?

Dr. Brigitte Böhm: The work and operations of the German Chamber of Patent Attorneys are multifaceted. As you have brought up, the Chamber is a corporation under public law. Just like other professions that have formed chambers, our main task is, first and foremost, the self-administration and organization of patent attorneys. Other essential functions of the group are the training and further development of our professionals. But the Chamber also sees itself as being generally dedicated to the further advancement of legal provisions concerning patent, trademark and design rights, as well as the promotion of innovation. Concerning this, the Chamber has fostered standing dialogues in Germany with the relevant ministries, authorities and courts. For suggestions and opinions, the Chamber can draw upon the experiences and knowledge of its members and thus try, wherever possible, to improve the current system.

The German Chamber of Patent Attorneys also keeps exceptional contact with partner organizations in other countries, as well as with the patent offices and courts in these countries. The Chamber also maintains excellent relations with the European Patent Office and the Office of Harmonization of the Internal Market, which is the competient authority for community trademarks and designs. The Chamber is valued as a competent resource and as a representative of the German patent attorneys in international dialogue, as it concerns the sphere of intellectual property rights

Through its activities, the Chamber also sees itself as a partner to the industry in the collective effort to foster and secure the technological progress and competitiveness of our country. The Chamber offers inventors and prospective patent applicants in many places in Germany free advice related to their invention, with this assistance provided on a voluntary basis by current members. This service focuses first and foremost on independent inventors or managers of handicraft businesses as well as small businesses, and it highlights the steps that are essential to protecting innovation.

The Chamber also disseminates informational materials about intellectual property rights and heads the directory of patent attorneys, which makes the search for a patent attorney possessing a desired expertise within a given area a much easier undertaking..

Finally, for more than 70 years, the German Chamber of Patent Attorneys has been the publisher of an important professional magazine, the "Mitteilungen der deutschen Patentanwälte." This magazine is a crucial information source for employees of industrial businesses concerned with innovation on the newest developments and the current case law in the area of intellectual property protection. Further information on the functions of the German Chamber of Patent Attorneys can be found on our homepage at www.patentanwalt.de.

 

GSC: The PPH Pilot Project (Patent Prosecution Highway) between the German and the Chinese patent offices was recently extended. This speeds up the overall process, allowing patent applicants to receive an accelerated examination of their application via China's State Office for Intellectual Property (SIPO). What advantages and disadvantages do you see in this project?

Dr. Brigitte Böhm: The German Patent and Trademark Office (DPMA) cooperates within the scope of the PPH Pilot Project with many patent offices, among them the Chinese Patent Office, SIPO. Since this project was originally established for only for a limited time, it must be extended upon expiration, if the possibility of accelerated reviews on the basis of the examination results of another patent office is to be maintained. This extension was necessary for the continued cooperation between the DPMA and SIPO after the expiration of the original agreement.

The benefits that arise from the pilot project are that, to the extent that claims for a parallel application for the same invention in another participating country are judged to be patentable, an accelerated examination is performed by the DPMA. So long as the German patent examiner reaches the same conclusion as to the patentability of the invention as the examiner in the partner country, a speedy patent issuance can follow. Synergy in the use of examination results from other countries can thus help to significantly shorten the duration of the examination process.

The disadvantage of the current approach, however, is that the acceleration of the examination process is only possible when the German examiner raises no objections of his or her own. Should the patent application not be immediately accepted by the German examiner, the application for a patent will proceed in the usual way, i.e. without any further acceleration of the process. Based on my personal experience, only a portion of the applications granted the opportunity to participate in the PPH program have benefited from this process. A direct patent issuance on the basis of the exmination results from another country cannot always be expected.

 

GSC: Many particularly innovative businesses dread applying for patents. One reason for this could be the numerous workarounds that, either through inadequate legislation or bad advice, have not been sufficiently identified. The area of legislation is a specific area of focus for the German Chamber of Patent Attorneys. What contribution does the Chamber make toward guaranteeing the quality of the counsel provided by patent attorneys?

Dr. Brigitte Böhm: Optimal invention protection can only actually be achieved through intensive cooperation between inventors and businesses and their patent attorneys. A trusting relationship with their clients, preferably developed over a longer period of time, makes it possible for patent attorneys to best learn the interests of their clients and to thus develop patenting strategies which avoid the circumvention of protection rights. Unfortunately, this reality is not always adequately considered, and it is also often not appreciated that the pursuit of low-cost patent applications does not increase quality. This is then unfortunately a common source of frustration, namely when in a dispute a patent no longer covers the competing product.

To the extent that you want to address poor counsel given by a patent attorney, it is within the scope of the duties of the Chamber to monitor its members' compliance with professional obligations and, when necessary, to take appropriate measures. Additionally, the Chamber can also act as a mediator in the event of a disagreement regarding the performance of a patent attorney.

 

GSC: Solid counsel during the patent application process is essential. Patent attorneys must be well-versed not just in the subject matter of the invention, but also with the judicial possibilities in order to be able to secure the desired protection. How can someone find the right patent attorney among the some 3,000 licensed patent attorneys in Germany?

Dr. Brigitte Böhm: You are right that solid counsel is especially important in the area of intellectual property protection. The qualifying examination for patent attorneys ensures that patent attorneys have the necessary legal knowledge before they are licensed. But it is also essential to have a technical understanding. Thus it is critical to retain a patent attorney who is familiar with the area of inventions as a result of his or her technical or scientific background and who can discuss these subjects knowledgeably with inventors. Besides a completed course of study in the area of technology or science, it is also necessary for a would-be patent attorney to have had at least one year of practical experience prior to applying for admission to the body of patent attorney. This should ensure that patent attorneys do not just have a theoretical understanding of inventions, but also a practical understanding of them.

The internet directory of patent attorneys offered on the Chamber's website provides, among other details, information on a given patent attorney's degree. When searching for a attorney in a given location, you can also choose to filter your search according to a attorney's specific area of expertise, such as if they have an advanced degree in Chemistry or Physics. This availability of information facilitates the search for a patent attorney. In many cases even more detailed information is available on the attorney's personal website. For specific requests or questions, the German Chamber of Patent Attorneys is also available to provide advice and assistance as needed.

 

GSC: Dr. Böhm, thank you for this interesting interview.

 

More Information: www.patentanwalt.de

Contact: bboehm(at)weickmann.de