Zoltán Gyenge
Topics: Patent Law Subscribe

Have you publicly mentioned your invention before filing for a patent?

First published 10 July 2024 by Zoltán Gyenge

By now, hopefully everyone is aware that one should publicly «disclose» their invention only AFTER having applied for a patent.
So far for the theory. In practice, there are several, some valid, some less valid reasons why someone would publicly present their invention without applying for a patent first:

  1. Unawareness of the absolute novelty requirement*
  2. Underestimating the invention’s value. It is quite common that one realizes the true value of an idea only upon the idea being positively received.
  3. Timing constraints

Having witnessed on several occasions inventors sadly mentioning its too late to apply for a patent following a very successful, yet public presentation, I would like to raise awareness that all may not be lost:

  • If the idea was presented in general terms, only as a problem statement that the idea addresses, or as a black-box sort of demonstration, where the internal workings (of a device, algorithm, etc.) are hidden, there are good chances the public disclosure was non-enabling and hence does not prevent patentability.
  • Even if the public disclosure was detailed and specific enough to be considered enabling, the invention is still patentable in several jurisdictions (including Japan and USA)**, if it was the inventor who made the invention public. However, it is important to note that there are strict time limits as to how patenting inventions previously disclosed by their inventor is possible, referred to as grace period, ranging between 6 and 12 months.

Relevant for major markets such as the USA, Germany, and Japan: If you've recently presented or published your invention, contact your patent attorney Zoltán Gyenge at your trusted IP law firm RENTSCH PARTNER AG to advise you on patenting post-disclosure.

Moritz Hönig
Topics: Patent Law Subscribe

Nationalization of an international patent application: Tips for Startups

First published 18 June 2024 by Moritz Hönig

When applying for patent protection worldwide, startups often use the Patent Cooperation Treaty (PCT) system. Under the PCT system, a single international patent application is filed, which is then nationalized in the desired countries or regions. The deadline for this is 30 or 31 months from the priority date for most countries/regions.

But in which countries or regions should a startup pursue its international patent application? Here are some considerations when selecting your countries and regions of interest:

Target Markets: File in countries/regions where you intend to exploit (e.g. manufacture, distribute, sell or use) your technology. Include the markets that are key to your industry and to your business strategy.

Block competitors: Nationalize in countries where key competitors operate or are located to build leverage.

Budget: Patent costs typically increase with national phase entry due to parallel prosecution in different countries. Therefore, plan your budget accordingly and remember that national/regional phase entry costs are due 30/31 months after the priority date.

Don't be driven by fear of missing out and consider the opportunity cost of extensive country lists: Since the national/regional phase entry deadline cannot be easily extended, some startups may be tempted to opt for rather extensive country lists out of fear of missing out. For example, some startups may be tempted to include not only their key markets, but also potential second- and third-tier markets - after all, you never know what will happen, and you certainly don't want to miss out, right?

Of course, there is no one-size-fits-all approach. For example, when pursuing an exit strategy, it may make sense to file a PCT application in a long list of countries/regions, thereby keeping all options open for a potential buyer, who may then trim the list of countries/regions at a later date. However, startups should also consider the opportunity cost of an extensive country list - in other words, what else could the money required for extensive nationalization be spent on instead? For example, it might be more effective to double down on strong IP protection in core markets and to strengthen the IP portfolio in these key markets by filing divisional patent applications or new patent applications, rather than including the n-th maybe-at-some-time-in-the-future country. With this approach, the costs allocated to the different countries/regions would be more in line with the commercial importance of the respective market.

Legal System and enforceability: Consider the enforcement mechanisms and capabilities of the countries of interest. Some countries have more experience enforcing patents than others.

These are general considerations. For specific advice, consult a patent professional to develop an effective global patent strategy.

Claudia Gessler
Topics: Trademark Law Subscribe

Why an entry in the commercial register does not provide sufficient protection

First published 14 May 2024 by Claudia Gessler

Why should you register a trademark if your company is already registered in the commercial register and the company name is therefore protected?

  • The company name is the name entered in the commercial register and grants the exclusive right to use this name to identify a company.
  • However, if you want to prevent someone else from using identical or similar names for products and services offered, a company name may not be sufficient.
  • In this case, it is advisable to register a trademark!
  • The trademark gives the owner the exclusive right to use it to identify the goods and services claimed and to prevent others from using identical or similar signs for identical or similar goods or services.
  • In addition, unlike a company name, a trademark can be used to protect not only a word but also different types of signs, including logos.
  • Have you not yet registered your trademark? Do you use a logo? Have new products or services been added since the trademark filing?
  • We are happy to support you! Contact me at This email address is being protected from spambots. You need JavaScript enabled to view it. or This email address is being protected from spambots. You need JavaScript enabled to view it. or visit our website www.rentschpartner.ch

Elisa Wall
Topics: Patent Law Subscribe

Strategic market focus supported by technology monitoring

First published 30 April 2024 by Elisa Wall

For strategic decisions on technology development, startups and SMEs need to keep an overview on their industry's tech landscape and are constantly seeking inspiration for further development.

 Patent databases constitute a vast information source for gaining overview on a field of technology. They can be browsed with a search string comprising both keywords and metadata on patents (examples of metadata being owner, inventor or technological class of a patent or patent application).

 The acquired information enables, inter alia:

  • gaining business intelligence on general trends as well as activities of competitors or collaboration partners; and
  • avoiding unnecessary R&D effort by harnessing technology from patents not or no longer enforceable in a certain geographical region.

More benefits of the acquired information can be found here.

Public search databases offer a solid foundation for conducting basic searches using Boolean logic. The most commonly used are:

However, most public search databases primarily provide information related to documents filed within their geographical scope, and their results therefore do not ensure completeness.

Moreover, as with any online platform, it is crucial to remain mindful of data privacy when inserting information into the platform.

Furthermore, to obtain optimized insights, it is of great advantage to craft a search string tailored to its use-case based on a deeper understanding of the intricacies of the underlying databases.

And most importantly, it requires expert knowledge to thoroughly evaluate the legal implications of the acquired information, for instance if a product under development does not infringe a valid patent.

For expertise assistance, consult your patent attorney on how to conduct such an optimized search across patent registers worldwide and how to assess these legal implications.

Maria Iskic
Topics: Trademark Law Subscribe

Navigating the Challenges of Green Trademarks

First published 19 April 2024 by Maria Iskic

As businesses increasingly integrate sustainability into their branding, «green trademarks» have become a strategic asset. However, the path to securing and maintaining these trademarks is fraught with some challenges. Here are some hurdles companies will need to navigate:

Avoiding Greenwashing - One of the primary challenges is the accusation of greenwashing. Companies must ensure their green claims are not only substantiated but also truly reflect environmental benefits. Misleading claims can damage brand reputation and lead to legal repercussions.

Complex Regulatory Landscape - The legal environment for green trademarks is complex and varies significantly between jurisdictions. Companies must navigate these varying regulations to ensure their trademarks are valid and enforceable both locally and internationally.

Consumer Skepticism - With a rise in environmental awareness, consumers are becoming more skeptical of green claims. Businesses need to build a strong, transparent case for their sustainability initiatives to foster trust and loyalty among consumers.

Innovation and Adaptation - The rapid pace of technological advancements and changing environmental standards can make it challenging for trademarks to remain relevant and reflective of current green practices. Continuous innovation and adaptation are crucial.

Cost Implications - Developing and maintaining green trademarks can involve significant costs, from R&D to marketing and legal fees. Smaller enterprises may find these costs particularly prohibitive.

Despite these challenges, the potential benefits of green trademarks are substantial, including brand differentiation, enhanced consumer trust, and alignment with global sustainability goals. Ideally, businesses should integrate these advantages into a comprehensive intellectual property strategy that protects both the technical innovations and the consumer-facing aspects of a sustainable product, positioning them at the forefront of sustainable development.