Utility models are commonly understood as “small” patents, which is in principle at least partially correct, if for example the maximum protection periods of the two types of protection and the type of things that can be protected by them are compared. Therefore, utility models are often only used to protect inventions for which a patent application does not seem “worthwhile”.
However, this somewhat pejorative view of utility models does not seem to be justified if one takes a detailed look at all the differences between the two types of protective rights. One will quickly realize that a utility model is in itself a type of IP right which has some strengths compared to a “big” patent, which can make a utility model a “sharp sword” when dealing with competitors.
One example of such a strength is the limitations on what prior art is relevant for a utility model compared to a patent: oral disclosures, public uses outside Germany and subsequently published older applications do not constitute relevant prior art for a utility model, whereas they do for a patent.
Another example of a strength of the utility model system is the grace period of 6 months. This means that an invention can still be protected in Germany even if, for example, it was “accidentally” published by the inventor prior to an IP application or used abroad. In contrast, such a grace period does not exist for patents in Europe.
All this can mean that a utility model can be still legally valid even if a patent is no longer, for example in the case of obvious prior use of an invention outside Germany.
Even if one has already decided to patent an invention, a utility model can still be very useful as flanking protection. A frequently used means of obtaining such flanking protection is the branching-off of a utility model from a pending patent application, in particular in order to have an immediately usable protective right in hand against a competitor. Moreover, since a branching-off can also take place with amended claims, it is possible to obtain utility model protection tailored to an infringing subject matter offered by a competitor, which may increase the chances of a successful infringement suit. Moreover, since it usually takes only a few months from the filing of an application to the registration of a utility model, such effective protection can be obtained relatively quickly.
The exclusion of processes from protection by a utility model, which is often cited as a disadvantage, is in itself only a problem when it comes to protecting manufacturing processes. Operating methods for machines such as computers, on the other hand, are certainly amenable to utility model protection in the form of system claims.
In the following table, the essential differences between a German utility model and patent are listed (major differences are highlighted in italics).
|Maximum protection period in years||10||20|
|Protectable subject matter||Devices (incl. systems, e.g. computer systems, configured by a certain method of operation), not methods of manufacturing||Devices (incl. systems), methods|
|Routes||Direct national filing, national phase entry for a German utility model application from a PCT application, branching off from a pending patent application (see below)||Direct national filing, national phase entry for a German patent application from a PCT application|
|Official search||Optional (250€)||Optional (300€)|
|Substantial examination (novelty, inventive step)||No (only examination of formal requirements, e.g. no claims directed to excluded subject matter or methods)||Yes, obligatory for patent protection, can be requested within 7 years from the filing date (350€ if no search report was established, 150€ if a search report was established)|
|Prior art||Written disclosures, prior public use in Germany||Any disclosures (written, oral, etc.), worldwide prior public use|
|Grace period||Publications by the Applicant or the Applicant‘s legal successor made 6 months before the priority date do not form no prior art||no|
|Inventors designation||No||Yes, required|
|Filing in a foreign language (not in German)||Yes, a German translation must be submitted within 3 months after the filing date||Yes, a German translation must be submitted within 3 months after the filing date (English, French: 12 months after filing date of 15 months after priority date)|
|Opposition||No||Yes, within 9 months after publication of the granting|
|Typical time span until registration/granting||~ 2 to 3 months (if no objections are raised)||Several years (3-6 years or even longer, depending on the workload of the Examining department in charge of the application and the number of office actions)|
|Renewal||After the 3rd, 6th, and 8th year||For the 3rd and each further year until the maximum protection period|
|Branching off||Yes, from a pending patent application (if not older than 10 years, also a PCT application designating Germany and an European patent application; no restriction on the number of branching offs)||No|
|Division||Yes, of a pending application (until registration)||Yes, of a pending application (until granting decision is legally binding)|
|Restriction after registration/granting||No legal provision, but restricted claims can be submitted to the official file (as declaration to the public that the utility model is only enforced with the restricted claims; may avoid cancellation proceedings)||Legal provision for revocation or restriction proceedings|
|Attacking after registration/granting||Cancellation proceedings (at the German Patent and Trademark Office, official fee 300€; losing party must bear the costs of the wining party, depend on the value in dispute)||Invalidity proceedings (at the German Federal Patent Court; court fees depend on value in dispute, usually >> 10k€; losing party must bear the costs of the wining party, depend on the value in dispute)|
Typical costs for obtaining protection from filing until registration/granting
(excl. costs for drafting the specification, translation, etc.)
|~ 1000€||~ 2000-6000€ (depending on the number of office action responses)|
As a result, companies should be aware of the potential strengths of the German utility model system, which can be very useful in certain circumstances.
If you would like to learn more about the German utility model system, and how it might be able to benefit you, please do not hesitate one of us.