• The Trademark and Industrial Design Department

    DeAnna-Patent offers a full service and support in Trade Mark and Design matters in the European Union.

    Diana Pawlowska, e-mail dpawlowska@deanna-patent.com, is your contact person for assisting in all your queries about TM and Industrial Design protection, TM and Design registration, TM opposition, cancellation and appeal procedures at the European Union IP Office (EUIPO).

    Diana passed the attorney at law bar exam and has seven years of experience in Trade Mark and Design law at a national EU-TM and -Design Court, at the EUIPO and as Trade Mark and Design Attorney.

    Why should your clients consider filing trade mark directly at EUIPO or at the German PTO (DPMA) rather than file a trade mark under the Madrid Protocol with the designation of EU or DE?

    Direct filing at EUIPO Advantages of filing a trade mark directly at EUIPO:
    – It is cheaper for you if you are not interested to file your trade mark application in many countries
    – You will get faster the Certificate of Registration
    – You don’t need the basic mark (home national application or registration) for filing the application
    No risk that the EU registration depends upon a valid home application or registration during the first five-year period, as in the case of the IR registration
    – Applicant’s choice of different list of goods and services, rather than the same choice for the trade mark in all countries.
    – Adaptation of the classification to the local standards and minimization of the risk of receiving objections.

     

    Direct filing at DPMA (German PTO)
    – Trade mark registration within five months or
    – Around two months if accelerate procedure requested.
    – Protection in Germany covering a population of more than 80.000.000 people, which is around 15 % of all the European Union population. Indeed a good start for doing business in EU.
    The cost of filing EU trade mark directly at EUIPO:
    For the first class: 850.00 € – official fee (discounted for online filing for one class)
    For the second class you should add 50.00 € of additional official fee.
    For each additional class from the third class there is an additional official fee of 150.00 €.

     

    The cost of filing of German trade mark up to three classes:
    290.00 € – official fee (discounted for online filing)
    200.00 € official fee – only in the case accelerated procedure requested (!)
    This fees not include fees for answering to any objection for registration, amendment of classification etc. (if any) or claiming priority (if any), as well as translation of goods and services to German (if necessary) and disbursement.

    If you are interested to file a direct trade mark at the EU and or in Germany, we would be glad to assist you on this procedure. If you need any clarifications, please let us know. We would be happy to answer your questions.

     

    We look forward to hearing from you,

    Pier Luigi De Anna

    DeAnna-Patent

  • Celebrating DeAnna-Patent’s fifth anniversary

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    Dear Colleagues, dear Friends,

    This year DeAnna-Patent celebrates its fifth anniversary. How quickly time flies! Having founded our Firm in autumn 2011, initially (for the first few months) as a one-man show we have grown to become a strong, sound Firm.

    A brief look back to the past

    Of my 30 years in the patent business: DeAnna-Patent is my third challenge in this field. The first challenge was the most protected one. For fifteen years, I was an examiner at the European Patent Office, first in The Hague and later in Munich. Although I loved the international environment and the benefits, I felt that something was missing. It eventually became clear that I yearned to expand my horizons in the patent world and decided to challenge myself as a patent attorney.

    Therefore, as a second professional challenge in the patent world, I accepted the offer of an Italian patent Firm to found and manage their new German branch in Munich. This adventure turned out to work very well; it gave me much satisfaction in many ways. The branch successfully acquiring clients and we had work in abundance. Nevertheless, I felt that there remained some shortcomings in the arrangement of managing an office for others.

    The DeAnna-Patent team 

    Therefore, five years ago, my third challenge in the patent field started by the foundation of my own Firm. Once again, nearly from scratch, but with some valuable contacts to patent Firms mainly overseas, DeAnna-Patent was founded. After two months, Dr. Reinhold Martin joined me: a patent attorney for 25 years. Dr. Martin and I both have strong backgrounds in Applied R&D. He assists me in my technical work. Shortly thereafter, the highly experienced Alice Eichner joined us bringing very valuable paralegal assistance. Alice’s longtime friend and former colleague, Ina Lechermann, came in to reinforce the paralegal support area.

    My son Daniele, a mechanical engineer, joined us in 2014 as a trainee European patent attorney. Same time later, Diana Pawlowska joined our team, initially as a trademark attorney trainee. In the meantime, she is as trademark attorney as well as an attorney at law.

    Daniele and Diana are the youngsters of our team assuring an outlook for the future.

    Mani Fisher is the most recent member of our team. He skillfully manages the Renewal Tax Service, promptly following up payments of renewal and maintenance fees.

    An international outlook

    Looking back at the first five years, I am proud to affirm that notwithstanding the relatively short existence of DeAnna-Patent, we enjoy considerable international collaboration, mainly with the USA, China and emerging South-East Asian countries. We continuously strengthen our international standing by regularly participating in professional meetings and conventions, such as those organized by AIPLA, INTA, FICPI, AIPPI and APAA.

    Our international contacts, as well as our European clients, provide us with a growing workload in consultancy and an ever-increasing number of patents, trademarks and other IP rights registered on behalf of our clients as well for the clients of our foreign attorney partners.

    We cooperate with well-established French and Italian patent Firms and a German law Firm. Our network of European associates covers all contracting States of the EPC.

    Continuous quality protocols, the Genese docketing system and regular training of both the professional and paralegal members of the team ensure the high quality of our work.
    We are proud of the very high satisfaction of our clients and attorney partners with our services.

    Therefore, we look forward to the next five years of DeAnna-Patent.

    We always aim do our very best for our clients and attorney partners, as we are well aware that satisfying their needs and expectations is indispensable for our office’s present and future success.

     

    Pier Luigi De Anna

     

     

  • China Intellectual Property & Innovation Summit

    China IP&Inn Summit

    Dr. Pier Luigi De Anna from DeAnna-Patent will visit the upcoming China Intellectual Property & Innovation Summit (April 14-15, 2016) in Shanghai, China.

    Please email at office@deanna-patent.com to schedule an appointment, thank you

  • Season’s Greetings

    The team of DeAnna-Patent wishes you and your beloved ones a joyous Holiday Season and a prosperous New Year 2016!

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  • New website!

    Welcome to DeAnna-Patent’s new website! We hope you will enjoy browsing through it. The website will be translated in Italian, German and Chinese very soon.

    Should you have any inquiries, please don’t hesitate to contact us.

  • PCT Direct filings at the EPO

    As from 1 November 2014 the European Patent Office has launched an optional procedure that would significantly shorten the overall pendency and to reduce costs for applicants: PCT Direct.

    Under this new procedure, applicants who have selected the EPO as their international searching au- thority (ISA) can link any first filing searched by the EPO with a subsequently filed PCT application.

    The key feature of such a process is the ability of the applicant to react to objections when filing an in- ternational application claiming priority in the form of a reply, the ‘PCT Direct letter’.

    The PCT Direct letter enables applicants to strengthen their case by including reactions in the form of explanations, new arguments or amendments in the application. It is another means by which appli- cants are empowered with an extra channel to put their case forward.

    As from 1 July 2015, PCT Direct has been extended to other receiving offices and has contributed to- wards the increasing uptake of PCT Direct. Because of the extension, all PCT users who now select the EPO as their international searching authority, irrespective of the receiving office used, may submit a PCT Direct letter. In conjunction with the (PPH) Patent Prosecution Highway, PCT Direct also offer an additional benefit to users: it allows the requesting of free fast-track prosecution in other PPH offices, particularly those outside of Europe.

    How can profit an US applicant of this new procedure

    First PCT Application
    An US applicant filing at USPTO a PCT application as first filing could advantageously profit of this pro- cedure by indicating the EPO as ISA.

    EPO processes all first filing application with higher priority.
    Within the 12th months from the filing date, normally around the 7th-9th month, the EPO issues the International Search Report (ISR) with Written Opinion (WO).

    Second PCT Application
    This First PCT application can be the basis for a subsequent Second PCT application filed at the IB or USPTO, claiming the priority of the First PCT application, where the EPO is again the ISA. The applicant, according to the PCT Direct procedure, has to react to objections set forth in the First PCT application when filing the second international application by filing the ‘PCT Direct letter’, amending the claims and the description following the objections of the first WO issued by the EPO.

    EPO processes PCT application with higher priority.
    Within the 18th months from the priority filing date the EPO issues a new International Search Report (ISR) for the Second PCT application with a new Written Opinion (WO).
    If the amendments to the claimed subject-matter were fully disclosed in the priority application, the EPO reimburses in full the Search Fee for the Second PCT application.
    At this stage the Ch. II demand can be filed together with claims amendments and new arguments to sustain the patentability of the new claimed Subject-matter. The final IPER is produced on the basis of the amendments and arguments filed with the demand or of the WO of the Second PCT application.

    The main advantages are the following:

    1. An IPER issued before the entry into the national/regional stage based at least on two ISR and WO.
    • The reimbursement of the Search fee of the Second PCT application
    • Fast prosecution at National/regional stage.
      1. At the EPO, exemption of payment of the Search fee and direct entry into the examination stage, communication under Rule 161(1) EPC triggers a time limit of six months to confirm examination and filing amendments following the result of the IPER.
      2. Patent Prosecution Highway (PPH) procedures available in many jurisdiction such as the USPTO, based on the IPER of the second WO.
      3. Grant of a patent is possible within 36-42 from the first filing in many jurisdiction with higher legal certainty, based on two or three (if Ch.II demand was filed) Exam. Reports.

    4. Cost savings:

    Schermata 2016-01-14 alle 15.58.12

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

    By following this route, the total costs for the grant of an EPC patent are equal to the cost of filing:
    1st step US provisional2nd PCT application based on the US provisionalEntering into the EPC, and the grant of the patent is feasible within 36 – 42 months in many jurisdictions.

    DeAnna-Patent suggests these procedure and propose to assist your firm and collaborate in preparing the PCT Direct Letter and the claims amendments; which according to our experience and practice would fulfill the EPO requirements as ISA authority for the Second PCT application.

    Further, DeAnna-Patent will be glad to be entrusted in the EPC regional phase.

    We hope that this proposal is clear to you and look forward to hear from you.

    DeAnna-Patent