The utility model, the all-purpose weapon of industrial property protection

In the past, the German utility model was often regarded as a less important form of protection compared to the patent and was referred to as the patent's "little brother".

In the past, the German utility model was often regarded as a less important form of protection compared to the patent and was referred to as the patent's "little brother". This view assumed that utility model protection was only suitable for inventions that did not meet the criteria for an inventive step. However, as legal views have changed over time, both patents and utility models are now considered valuable forms of protection. They have a parallel right to exist and should therefore not be regarded as mutually exclusive. In Germany, patents and utility models complement each other uniquely and help to effectively protect inventions from counterfeiters.


What can be protected by a German utility model?

A German utility model can be used to protect technical innovations that are innovative and not immediately obvious to a person skilled in the relevant technical field. This can include a wide range of inventions, such as all types of tools and machines, electromechanical devices, semiconductor devices, and even certain types of software. Even though process claims are excluded from registration in a German utility model, many processes can still be protected in the form of corresponding system claims. Furthermore, claims for second medical use are also protectable as utility models.


What is the difference between a German utility model and a patent?

Both a German utility model and a patent are forms of industrial property protection for technical innovations. Both types of IP rights require that they be new and inventive over the current state of the art. The inventive step requirements are identical for patents and utility models. However, there are some key differences between the two. One of the main differences is the duration of protection. A German utility model is granted for a maximum of ten years from the filing date, while patent protection expires after a maximum of 20 years from the filing date. For many inventions, however, this is not a problem, since in practice very few patents last for the entire term. In addition, ten years of protection is sufficient for many rapidly developing technologies since the technologies become obsolete after that time anyway.

Another difference is found in the examination procedure. German utility model applications are not examined for novelty and their inventive step, unlike patent applications, which are subject to substantive examination.


What are the advantages of a German utility model over a patent?

The German utility model offers many advantages for those who want to protect their intellectual property. One of the main advantages is the low cost of obtaining a utility model. Unlike the requirement for German patents, no claim fees need to be paid for a utility model application, and there is no expensive examination. Thus, the procedure for obtaining a utility model is significantly less costly than obtaining a patent.

Another advantage of the German utility model is the speed with which an IP right can be obtained. Since the utility model is only registered and not examined, an IP right is available within a few weeks. This contrasts with the two to four years it can take to obtain a German patent with examination proceedings. Thus, the utility model is ideally suited to create a defense weapon tailored to the competitor's infringing products within a very short time.

If one considers the utility model as a preventively quite broadly defined protective right, this offers an excellent opportunity to keep the competition at bay. Due to the lack of examination, the scope of protection of a utility model is always unclear to competitors, which can lead to market confusion. The scope of protection can remain quite vague if many specific variants are described in the application. This can make it difficult for competitors to identify which parts of the IP right are actually enforceable.

Another advantage of a German utility model is that one has to deal with a lower level of prior art during cancellation proceedings. Oral disclosures, public announcements abroad and subsequently published older patent applications are not considered prior art. This means that the owner of a utility model has a higher chance of maintaining the validity of his IP right compared to a German or European patent. Furthermore, the German Utility Model Act offers a grace period of six months for own publication and prior use in Germany. This is an advantage that is not available with European or German patents.

Finally, the German patent court system is considered one of the best in Europe for litigating intellectual property rights. It is cost-effective and offers an attractive pace of litigation. The German patent court system not only grants cost-effective and efficient litigation, but also IP protection that covers a large part of the European Union, given the presence of major industries in Germany.
 

What is a good IP strategy using German utility models?

A German, European, or even international patent application (PCT) is a good basis for protecting innovations. In Germany, it is possible to derive both patents and utility models from the same description or priority document, i.e., the same invention. A German utility model can be "splitted-off" from a European or German or PCT application (effective in Germany) at any time as long as a corresponding patent examination procedure is pending. To achieve maximum flexibility, it may therefore be advisable to keep patent proceedings pending as long as possible. In Germany, this can be achieved, for example, by waiting the maximum period of seven years before filing a request for examination. During this time, there is no examination of the German patent application, but an individual utility model can be splitted-off at any time for possible enforcement.

Multiple utility models can be created from a single patent application, which can provide strong protection for a product. Obtaining patent and utility model protection in Germany for the same invention is valuable because it can increase the value of the company that owns the patents.

For example, if unity is challenged in a European patent application during the examination process, one or more divisional patent applications may be filed, but this can be costly. The German utility model offers an alternative here by splitting-off the parts of the invention that lack unity, which is a cost-effective means of maintaining the full scope of protection for an invention.

With the upcoming unitary patent, splitting-off utility models may also be a low-cost and effective way to remove inventions from the jurisdiction of the Unified Patent Court and have a second option available through German jurisdiction.
 

Conclusion

Overall, the German utility model offers a cost-effective, fast and efficient way to protect intellectual property. It offers several advantages that patents do not provide, making it a suitable option for anyone looking to protect their ideas and innovations.
 

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Author: Dr. Michael Schmid