Peculiarities of German Utility Models
The particular advantages of German utility models over German and European patents are often unknown to international applicants and colleagues. Hence, an overview of the most significant differences is provided in the following.
Prior Art
The extent of the state of the art is greatly reduced in utility model law compared to patent law. In particular, the following restriction are to be taken into account:
- Prior public uses outside Germany do not constitute prior art with respect to German utility models.
- Oral disclosures do not constitute prior art with respect to German utility models.
- Older, but post-published patent applications and utility model applications do not constitute prior art. However, a utility model must not protect subject-matter which is already protected by an older patent or utility model.
- There is a six-month period of grace before the priority date for written disclosures or prior public use by the applicant or his predecessor in title.
Due to the limited state of the art, from a certain point in time protection may only be obtained through a utility model and no longer through a patent. An oral presentation of the invention in a lecture before the priority date of a patent application forms part of the state of the art with respect to the patent application, while this is not the case for a corresponding utility model application.
Protectable Subject-Matter
Under the Utility Model Act applicable since July 1, 1990, everything which is protectable by a patent is also protectable by a utility model with the exception of processes and methods. In particular, chemical compositions and electronic circuits can since then be protected by a utility model. Hereby processes and methods are narrowly defined and are restricted to working and manufacturing processes and methods. According to recent case law, use of substances and devices may be claimed, if the corresponding use claim manifests material and object properties which are inherent to the substance or device (Decision of the Federal Patent Court of November 6, 2018, 35 W (pat) 412/16).
Lifetime
The maximum lifetime of a utility model is ten years.
Examination
German utility models are in contrast to German or European patents registered without examination as to the merits; merely a formal examination is conducted. However, it is possible to request a prior art search for an additional fee. Registration usually takes place within two to four months. In contrast, for patents the procedure up to grant takes several years on average until completion. In addition, the costs incurring in the registration procedure for a utility model are significantly lower than in a corresponding procedure up to grant for a patent.
Priority
The priority of a German patent application or a European or international (PCT) patent application designating Germany - including a possible convention priority - can be used by a German utility model to the extent that it is identical to that patent application. Such a utility model can be filed at any time during the pendency of the patent application up to the end of the second complete calendar month after grant of the patent, rejection of the patent application or conclusion of opposition proceedings - but in any event only within ten years after filing the patent application. If the utility model is not composed in German, a translation into German is to be submitted within three months of filing the application. A German utility model branched off from a pending patent application can be very helpful in case of an infringement of a European patent application and especially when a positive office action from the European Patent Office is available. European grant proceedings may be quite lengthy. Therefore, if time is important, it is advisable to file a branched-off utility model and to base an infringement action on this branched-off utility model rather than await grant of the European patent.
Coexistence with an identical European patent
A German utility model can coexist with an identical European patent. It can also coexist with an identical national German patent. In contrast, a national German patent cannot coexist with an identical European patent designating Germany. It becomes ineffective in as much as its scope of protection and that of the European patent overlap as soon as the grant of the European patent is final.
Designation of inventors and abstract
A designation of inventors and an abstract do not have to be filed in utility model applications.
Summary
With a utility model an invention can be protected quickly and economically. A utility model application or a branch-off from a corresponding patent is particularly useful if it is intended to take prompt action against an infringer. In addition, the restricted state of the art may allow protection at a point in time at which a patent is no longer obtainable. In contrast, the maximum lifetime of the utility model of ten years is significantly shorter than for a patent.
