Case study:
Examination of DE-patent applications

Initial situation

We filed a German patent application establishing priority for one of our long-standing clients, a mid-sized German automotive supplier. A subsequent EP application claiming this priority was filed. The European patent was granted, but was opposed by several competitors and in the end revoked by the Boards of Appeal. The invention claimed and described in the patent was, however, highly relevant for both the automotive supplier and the competitors. Our client wanted to find some way to retain or recover their rights.

Action taken

As the original German patent application was still pending., it was decided to try to procure grant of the initial German patent application that was still being examined, despite revocation of the European patent. A team composed of several patent attorneys and headed by a partner was formed to prosecute this case. By tapping into the multidimensional technical expertise of the team and being able to swap ideas, various scenarios could be studied and different lines of argument evaluated which enabled a successful approach to this problem to be found.

Outcome

On the basis of the strategy which was developed, it was possible to convince the examiner at the German Patent and Trademark Office during the hearing of the patentability of the claimed invention. The examiner could be persuaded to grant our client a patent, despite the pre-existing decision of the EPO Board of Appeal. Our client’s German patent application was granted and this secured him a competitive edge on the market.