FAQ
Clear answers to your questions
Our FAQs provide you with concise answers to the most frequently asked questions.
What is a strong and what is a weak Trademarks?
In order for a sign (e.g. a word or a logo) to be protected as a trademark for certain goods or services, it must be distinctive. It must not be limited to banal or descriptive elements for the claimed products. Terms that are purely descriptive (e.g. “fresh fruit” for fruit, “swiss precision timekeeper” for watches, etc.) are therefore generally not protectable as a trademark. In contrast, purely fanciful signs, e.g. “Novartis®” for pharmaceuticals or “Apple®” for computers, can be protected without further ado; from a trademark law perspective, these are “strong Trademarks”. Between these extremes are “weak Trademarks”, which are likely to just clear the hurdle to Protectability, e.g. “Mintbons” for sweets. We dealt in detail with strong and weak Trademarks, their registration, Enforcement and the procedure for Application in grips No. 1/ 2016.
Do I have to consult a lawyer for the Application of a Patents?
If you want to apply for an IP Right, you can generally do this yourself. It is up to you to decide whether you want to consult a specialist lawyer for advice, preparation of the necessary documents and application. However, it is advisable to consult experienced specialists when drawing up a patent strategy, as they can often significantly increase company values. You can find detailed information on this topic on the website of the German Patent and Trade Mark Office, for example.
National/supranational IP Rights and procedures
- What are the characteristics of national Patents in Switzerland? See grips 2-2008 “The Swiss patent”
- What is a European patent and how is it granted? See grips 2-2007 “The European Patents”
- How do you apply for an EU Trademark and how does it relate to national Trademarks? See grips 4-2009 “The EU Trademark”
- How has the US patent grant procedure worked since the end of 2007? See grips 3-2007 “Patent law USA”
- What changes will there be in US patent law from 2012? See grips 2-2012 “America Invents Act”
- What trademark protection is there in the USA and how do you maintain it? See grips 4-2012 “The US Trademark”
- How does the Japanese patent grant procedure work? See grips 1-2015 “Japanese patent law”
- How does the Chinese patent grant procedure work? See grips 2-2015 “Patent law China”
- How to translate and protect a Trademark for China? See grips 4-2016 “The Chinese Trademark”
- How does the PCT international patent application procedure work? See grips 1-2018 “The PCT Application”
- How has the patent environment changed since 1957? See grips 1-2007 “1957-2007”
- How can the ever-increasing number of patent grant proceedings be controlled? See grips 1-2009 “The Patent Highway”
Who owns an invention and who may use it?
If several people are involved in the creation of an invention, there are different options depending on the specific circumstances. If the persons work together in a simple partnership, for example, a patent license agreement should regulate the rights. If external persons are involved, the exact regulations are described in a license agreement. You can read more detailed explanations on this topic in the March 2020 issue of grips.
Important concepts in the IP area
- When is an invention patentable and how is this assessed? See grips 3-2010 “The inventive step”
- When is one Patents dependent on another and what are the consequences of a dependency? See grips 3-2009 “Dependent Patents”
- What criteria must Software meet in order to be patentable? See grips 3-2016 “Software Patents”
- What criteria must Trademarks meet in order to be registrable? See grips 4-2008 “Trademarks with Protectability”
- How does the international registration of Trademarks work? See grips 4-200 “The international Trademarks”
- To what extent do unused registered Trademarks protect? See grips 2-2009 “Defensive trademarks”
- To what extent can inventions be protected as Utility Models? See grips 1-2008 “The Utility Model”
- How far does the scope of protection of Patents, Trademarks and Designs extend? See grips 3-2006 “Scope of IP protection”
- Who is the owner of inventions, Trademarks and Designs? See grips 2-2006 “Right to the right”
- How can inventions, Applications and Patents be transferred? See grips 1-2011 “Transfer of inventions”
- How do you determine your freedom to operate in the field of existing third-party IP Rights? See grips 4-2015 “Freedom to Operate
- What protection does own prior use provide against third-party patents? See grips 2-2016 “Prior User Rights”
Tips for IP practice in the company
- Which registers and databases enable patent searches? See grips 3-2012 “Patent information”
- How do you write a good Patent Application? See grips 4-2010 “The patent description”
- What is quality in the patent area and who decides how? See grips 1-2013 “Patent Quality”
- How can the financial value of Patents be determined? See grips 1-2011 “Patent Valuation”
- What key issues need to be considered when taking out or granting licenses? See grips 2-2013 “Patent licenses”
- What is the basis for quality and assertiveness in the brand sector? See grips 1-2016 “Strong Trademarks – Weak Trademarks”
- When/how does it make sense to affix protection notices for Patents, Trademarks and Designs? See grips 4-2014 “The protection notice”
- To what extent can indications of source – especially Swiss ones – be incorporated into Trademarks and protected? See grips 4-2011 “Indications of source”
- What is the best way to protect the shape of a product? See grips 1-2006 “Mold protection”
What should we patent as a startup?
A patent is good if it includes as many points of view as possible and, for example, not only patents a process, but possibly also individual components (which competitors could otherwise copy to create their own product) or specific product functions that are made possible by a start-up’s process. We looked at patent strategies for start-ups in detail in grips from March 2020.
Intellectual property in the business environment
- What is an IP strategy and how do you create one? See grips 2-2007 “The European Patents”
- How can you create a TARGET-ACTUAL analysis in the IP area? See grips 1-2017 “The IP Audit”
- What role do Patents play in the development and market strategy? See grips 4-2013 “Patents as a success factor”
- When and how can Patents be dispensed with? See grips 1-2014 “No-patent strategy”
- Why is confidentiality important and how can it be implemented? See grips 3-2017 “Confidentiality”
- When, where and how should you apply for Patents? See grips 3-2008 “Applying for Patents” or See grips 2-2017 “Patenting Strategies”
- How to invest wisely in Patents, Trademarks and Design Protection? See grips 2-2005 “IP costs under control”
- How can cross-company innovation be shaped? See grips 3-2013 “Open Innovation”
Enforcement of IP Rights and Conflicts
- Why and how do you need to monitor the IP Rights of third parties? See grips 4-2005 “IP monitoring”
- When are your own Patents infringed and how do you take action? See grips 3-2005 “IP enforcement”
- To what extent is it permissible to imitate IP-unprotected products? See grips 2-2010 “Imitation”
- What are the first steps to take in the event of patent infringement? See grips 3-2015 “The Cease and Desist Letter”
- How can you attack third-party Patents, Trademarks and Designs? See grips 4-2006 “Destroying IP Rights”
- How can you take action against similar or overlapping Trademarks? See grips 2-2011 “The trademark conflict”
- How does the Swiss Federal Patent Court work? See grips 1-2012 “The Federal Patent Court”
- How do infringement proceedings before the Federal Patent Court work? See grips 2-2014 “The infringement action” or grips 3-2014 “The infringement judgment”
- How are claims for damages calculated and what do the courts award? See grips 1-2010 “Damages
What is a strong and what is a weak Trademarks?
In order for a sign (e.g. a word or a logo) to be protected as a trademark for certain goods or services, it must be distinctive. It must not be limited to banal or descriptive elements for the claimed products. Terms that are purely descriptive (e.g. “fresh fruit” for fruit, “swiss precision timekeeper” for watches, etc.) are therefore generally not protectable as a trademark. In contrast, purely fanciful signs, e.g. “Novartis®” for pharmaceuticals or “Apple®” for computers, can be protected without further ado; from a trademark law perspective, these are “strong Trademarks”. Between these extremes are “weak Trademarks”, which are likely to just clear the hurdle to Protectability, e.g. “Mintbons” for sweets. We dealt in detail with strong and weak Trademarks, their registration, Enforcement and the procedure for Application in grips No. 1/ 2016.
Do I have to consult a lawyer for the Application of a Patents?
If you want to apply for an IP Right, you can generally do this yourself. It is up to you to decide whether you want to consult a specialist lawyer for advice, preparation of the necessary documents and application. However, it is advisable to consult experienced specialists when drawing up a patent strategy, as they can often significantly increase company values. You can find detailed information on this topic on the website of the German Patent and Trade Mark Office, for example.
National/supranational IP Rights and procedures
- What are the characteristics of national Patents in Switzerland? See grips 2-2008 “The Swiss patent”
- What is a European patent and how is it granted? See grips 2-2007 “The European Patents”
- How do you apply for an EU Trademark and how does it relate to national Trademarks? See grips 4-2009 “The EU Trademark”
- How has the US patent grant procedure worked since the end of 2007? See grips 3-2007 “Patent law USA”
- What changes will there be in US patent law from 2012? See grips 2-2012 “America Invents Act”
- What trademark protection is there in the USA and how do you maintain it? See grips 4-2012 “The US Trademark”
- How does the Japanese patent grant procedure work? See grips 1-2015 “Japanese patent law”
- How does the Chinese patent grant procedure work? See grips 2-2015 “Patent law China”
- How to translate and protect a Trademark for China? See grips 4-2016 “The Chinese Trademark”
- How does the PCT international patent application procedure work? See grips 1-2018 “The PCT Application”
- How has the patent environment changed since 1957? See grips 1-2007 “1957-2007”
- How can the ever-increasing number of patent grant proceedings be controlled? See grips 1-2009 “The Patent Highway”
Who owns an invention and who may use it?
If several people are involved in the creation of an invention, there are different options depending on the specific circumstances. If the persons work together in a simple partnership, for example, a patent license agreement should regulate the rights. If external persons are involved, the exact regulations are described in a license agreement. You can read more detailed explanations on this topic in the March 2020 issue of grips.
Important concepts in the IP area
- When is an invention patentable and how is this assessed? See grips 3-2010 “The inventive step”
- When is one Patents dependent on another and what are the consequences of a dependency? See grips 3-2009 “Dependent Patents”
- What criteria must Software meet in order to be patentable? See grips 3-2016 “Software Patents”
- What criteria must Trademarks meet in order to be registrable? See grips 4-2008 “Trademarks with Protectability”
- How does the international registration of Trademarks work? See grips 4-200 “The international Trademarks”
- To what extent do unused registered Trademarks protect? See grips 2-2009 “Defensive trademarks”
- To what extent can inventions be protected as Utility Models? See grips 1-2008 “The Utility Model”
- How far does the scope of protection of Patents, Trademarks and Designs extend? See grips 3-2006 “Scope of IP protection”
- Who is the owner of inventions, Trademarks and Designs? See grips 2-2006 “Right to the right”
- How can inventions, Applications and Patents be transferred? See grips 1-2011 “Transfer of inventions”
- How do you determine your freedom to operate in the field of existing third-party IP Rights? See grips 4-2015 “Freedom to Operate
- What protection does own prior use provide against third-party patents? See grips 2-2016 “Prior User Rights”
Tips for IP practice in the company
- Which registers and databases enable patent searches? See grips 3-2012 “Patent information”
- How do you write a good Patent Application? See grips 4-2010 “The patent description”
- What is quality in the patent area and who decides how? See grips 1-2013 “Patent Quality”
- How can the financial value of Patents be determined? See grips 1-2011 “Patent Valuation”
- What key issues need to be considered when taking out or granting licenses? See grips 2-2013 “Patent licenses”
- What is the basis for quality and assertiveness in the brand sector? See grips 1-2016 “Strong Trademarks – Weak Trademarks”
- When/how does it make sense to affix protection notices for Patents, Trademarks and Designs? See grips 4-2014 “The protection notice”
- To what extent can indications of source – especially Swiss ones – be incorporated into Trademarks and protected? See grips 4-2011 “Indications of source”
- What is the best way to protect the shape of a product? See grips 1-2006 “Mold protection”
What should we patent as a startup?
A patent is good if it includes as many points of view as possible and, for example, not only patents a process, but possibly also individual components (which competitors could otherwise copy to create their own product) or specific product functions that are made possible by a start-up’s process. We looked at patent strategies for start-ups in detail in grips from March 2020.
Intellectual property in the business environment
- What is an IP strategy and how do you create one? See grips 2-2007 “The European Patents”
- How can you create a TARGET-ACTUAL analysis in the IP area? See grips 1-2017 “The IP Audit”
- What role do Patents play in the development and market strategy? See grips 4-2013 “Patents as a success factor”
- When and how can Patents be dispensed with? See grips 1-2014 “No-patent strategy”
- Why is confidentiality important and how can it be implemented? See grips 3-2017 “Confidentiality”
- When, where and how should you apply for Patents? See grips 3-2008 “Applying for Patents” or See grips 2-2017 “Patenting Strategies”
- How to invest wisely in Patents, Trademarks and Design Protection? See grips 2-2005 “IP costs under control”
- How can cross-company innovation be shaped? See grips 3-2013 “Open Innovation”
Enforcement of IP Rights and Conflicts
- Why and how do you need to monitor the IP Rights of third parties? See grips 4-2005 “IP monitoring”
- When are your own Patents infringed and how do you take action? See grips 3-2005 “IP enforcement”
- To what extent is it permissible to imitate IP-unprotected products? See grips 2-2010 “Imitation”
- What are the first steps to take in the event of patent infringement? See grips 3-2015 “The Cease and Desist Letter”
- How can you attack third-party Patents, Trademarks and Designs? See grips 4-2006 “Destroying IP Rights”
- How can you take action against similar or overlapping Trademarks? See grips 2-2011 “The trademark conflict”
- How does the Swiss Federal Patent Court work? See grips 1-2012 “The Federal Patent Court”
- How do infringement proceedings before the Federal Patent Court work? See grips 2-2014 “The infringement action” or grips 3-2014 “The infringement judgment”
- How are claims for damages calculated and what do the courts award? See grips 1-2010 “Damages