German Utility Models
Utility Models, originally introduced in 1891 as the “little sister” of an actual patent to protect “minor inventions”, today has become a clever and cost- effective way of enforcing a faster patent-like scope of protection. Like the patent the Utility Model protects technical inventions.
While the Utility Model registration process neither requires a full examination process nor an inspection of the substance to be protected it can be registered within 2-4 weeks whereas a patent granting procedure can take years. Similar to the patent application, the Utility Model needs to be filed and registered at the German Patent- and Trademark Office (DPMA). Therefore the German Utility Model is only valid in the Federal Republic of Germany.
Also the scope of protection for a Utility Model only lasts 10 years whereas a patent lasts max. 20 years.
What can be protected with German utility models?
Although the German Utility Model Act provides a list of non patentable subjects like inventions which would violate the public moral and order, methods, proceedings or plant– and animal varieties, the invention itself has to be novel, involve an inventive step and be industrially applicable. The German Utility Model law does not give a clear definition of which inventions are protectable. Protectable subjects could for example be substances (pharmaceutical products or food), systems, devises, apparatuses or circuits and methods in a secondary medical use.
What is novel?
One of the many advantages of a Utility Model is, that it can protect subjects that are not entirely novel. Considering this, the strict absolute novelty regulation which applies for a successful patent application is not a requirement for a Utility Model registration. In cases of a Utility Model application the prior art to be considered is only what has been made public worldwide in printed publications or has been in public use in Germany, prior to the filing date of the Utility Model. Therefore public and oral descriptions as subsequent published inventions are not relevant.
The inventive step
The German Utility Model law states, that an invention must at least involve an “inventive activity”. Although the German Utility Model Act only states, that the invention must at least involve an “inventive step” a legal definition is not given. Earlier court decisions and literature assumed that the difference between the “inventive activity” according to the Patent Act and the “inventive step” according to the Utility Model Act was the ( achievement/merit ???). Deriving from the latest jurisprudence though, the “inventive step” and the “inventive activity” are seen as an equal effort to the invention. The basis on which the prior art of a Utility Model is evaluated is however founded on a different regulation than the one considering a patent.
Priority regulations
According to article 4 of the Paris Convention the German Utility Model holds the right to claim priority. This enables priority to a foreign patent application up to 12 months after the filing date. Also, earlier patent or Utility Model applications may be used to claim “inner priority” in Germany. Derived from this, any prior patent or Utility Model application with effect in Germany can serve as a priority to a newer one. This also includes European and PCT applications designating Germany. A Utility Model can also be used as a cost-effective way of ensuring an earlier priority date for a later patent application.
The exhibition priority creates a specific case. In the event of an invention displayed at one of several special trade fairs, annually announced by the Federal Ministry of Justice in Germany, the priority of the initial display may be claimed. In order for this to be taken into consideration, the application must be handed in within 6 months after display. This special priority can be combined with a grace period.
Splitting-off
Another possibility which is granted by the German Utility Model Act is the option of “splitting-off” an independent Utility Model from an earlier patent application. This option is only possible within 10 years after the patent application was filed and latest two months after the patent is registered or an opposition procedure is completed. The “split-off” Utility Model receives the application date of the patent. This provides for a faster scope of protection for the patent and allows the inventor to publically display the patent or make use of the invention before the patent application is registered.
Application
The application for a Utility Model requires unity. This legal condition ensures that, different inventions require a separate Utility Model application. If however, unity requirements are not met during the application process, this does not count for cancellation of the Utility Model but is a registration obstacle.
A Utility Model application must contain a request for an entry into the Utility Model register, the name of the applicant, a claim to define the scope of protection and a description of the invention (including figures where applicable) . The application does not necessarily have to be handed in in German. An English or foreign application is also acceptable, as long as the translated version is submitted within 3 months.
Alterations to the application documents are possible until the registration process is terminated and as long as the alterations do not extent the subject or change it entirely.
Reductions or limitations to the scope of protection of the Utility Model may be made even after the registration by the Utility Model holder by handing in a new set of files containing a limited list of claims.
Furthermore the receipt of the Utility Model application, like the patent application, at the German Patent Office determines the priority status and the duration of protection for the subject. A search for prior art may be required by any third party or even the applicant himself. Pending searches and requests have no effect on the registration process.
Costs
The fees set by the German Patent and Trade Mark office are currently:
| 40 € | for registration |
| 30€ | if handed in electronicall |
| 250€ | für einen Recherchebericht |
| 210€ | for years 4 to 6 |
| 350€ | for years 7 to 8 |
| 530€ | for years 9 and 10 |
Cancellation
Decisions on a cancellation of a Utility Model lay with the Utility Model Division of the German Patent and Trademark Office. The Utility Model Senate of the Federal German Patent Court decides over first instance appeals. In-person hearings however are held in utility model cancellation proceedings
The cancellation request for a Utility Model can be filed by anyone at the German Patent and Trade Mark office. A reason for a cancellation can for example be a lack of one of the essential conditions for a Utility Model (novelty, inventive action etc) or an interference with an already existent patent.
Infringement
In the case of an infringement of the Utility Model the holder is entitled to claim compensation from the infringing party, desist from the infringement, destruction of the infringing subject and information on the extent of the infringement. Like a patent a Utility Model creates a limited usage right to the holder and prohibits the usage, copy and distribution of the protected subject by third parties.
The scope of protection for the Utility Model is defined by the content of its claims. In the case of an infringement the drawings and descriptions are used as consultant material. Specialized civil chambers, in each of the twelve district courts, which are responsible for patent infringement cases, handle Utility Model infringement cases. As the Utility Model, in comparison to a patent, is unexamined the infringement court also examines the validity of the Utility Model even if a cancellation request has been filed. During an infringement process the Utility Model holder, may decide that only partial claims of the Utility Model should be taken into consideration. Both Utility Models however remain untouched. Only the Federal Supreme Court and other high ranking courts are able to decide over a cancellation of a Utility Model.
All in all it is to be noted, that a Utility Model offers a fast and cheap scope of protection over a subject due to the simple filing procedure and creates a special opportunity to protect a subject even if it has been made public in another country beforehand.