Dr. Robert Fichter
Aug 28, 2023
Understand the advantages German utility models will bring to your European IP portfolio
The German legal system offers a comprehensive toolkit of instruments for protecting innovation, including utility models.
The Basics
Generally, and comparable to patents, the invention subject to the claims of a German utility model must be novel, inventive, and industrially applicable.
Not protectable are discoveries as well as scientific theories and mathematical methods; aesthetic shape creations; schemes, rules and methods for performing mental acts, games or business activities as well as programs for data processing systems; the presentation of information; inventions violating public policy or public order; and biotechnological inventions.
The major difference to patent protection is that a German utility model may not be directed to methods. However, so-called product-by-process and certain use claims, such as the use of a known substance for a medical indication, are indeed allowable.
The registration process
German utility models are not examined as to substance. Only a formal examination taking place after filing ensures that the claimed subject matter doesn't fall under the above-mentioned exclusions.
Registration occurs swiftly, usually within 2 to 3 months after filing. Once registered the right is enforceable, which makes the German utility model an important instrument of a European IP toolkit.
As no substantive examination takes place, applicants may optionally request the GPTO to conduct a prior art search and deliver a search report. This report serves merely informative purposes; even if novelty-destroying prior art was revealed, the application would still proceed to registration.
The application may be filed in any language, provided a verified German translation is filed within three months.
German utility models may be filed directly, with or without priority claim(s), and they may serve as a basis for subsequent priority claims by patent applications, e.g., German national, European or PCT applications.
The duration is maximal 10 years, with renewals due after 3, 6, and 8 years.
In addition to the direct filing process, German utility models may be branched-off any pending patent application with effect for Germany. This very special legal instrument is admissible up to the expiration of two months from the end of the month in which processing of the base patent application (or an opposition procedure against the base patent application) is terminated and within 10 years of the filing of the base patent application.
In this context, the German law surprises with a specific feature, namely the assumption that an already granted patent is again considered “pending” during opposition procedures. In other words, if opposition has been filed against a granted German or European patent, a German utility model can still be branched off this patent (provided the time frame of 10 years is met). The importance of this possibility is explained further below.
Novelty
A six-month grace period from the disclosure of the invention is granted by the Act. Any publications or use by the applicant or his predecessor in title within six months preceding the priority date shall not be taken into consideration for assessing the validity of the UM. In consequence, a German utility model may be the last resort for obtaining patent-like protection in Germany in case of previous disclosure of the invention by the applicant.
Further, patents (German national, European national phase) and utility models for the same invention may co-exist in Germany.
Documents required
The application documents shall comprise the description, claims and figures, where applicable.
No Power of Attorney is required, but applicants not residing in Germany require the UM being filed by a patent attorney or attorney-at-law registered to practice in Germany and having a German address for service.
One must also pay the required application fees within 3 months after filing. Payment upon filing is recommended.
Any required translation into German has to be filed within 3 months after filing. Certification of the translation by a German patent attorney or attorney-at-law is required, or the translation be prepared by a publicly appointed translator.
Cancellation
Opposition procedures against German utility models do not exist.
However, the validity of a UM can be contested in front of the German Patent and Trademark Office by request and payment of the official fee. The appeal instance against decision of the GPTO is the Federal Patent Court in Munich. Under special circumstances further appeal to the German Federal Supreme Court is available.
This invalidity procedure involves written discussions among both parties and an oral hearing and will result in an appealable decision. The losing party bears as well the costs of the winning party. During the procedure the proprietor of the UM may limit the claims of the UM to overcome relevant prior art cited by the adverse party. Also, the body may decide on partial cancellation of the attacked UM.
Official fees
Application:
Filing: 30€ (40€ if filed on paper) - mandatory
Search: 250€ - optional
Renewal:
Years 4 to 6: 210€
Years 7 and 8: 350€
Years 9 and 10: 530€
Cancellation:
Request for cancellation: 300€
The German UM as a hidden champion
Many good reasons exist to consider the filing of a German utility model. The most pertinent ones are as follows:
Low filing fees: for only 30€ one can file a German utility model, directly or via the branching-off procedure.
No prosecution fees: the UM is registered without substantive examination. Unless unallowable subject matter is claimed or formal mistakes are made, the application is registered without further official actions.
Fast procedure: The registration of a German utility model takes only few months. The UM is published right after registration. Consequently, a German UM may be used as an “official” defensive publication so to avoid other parties seeking patent protection for an invention the inventors are not interest in patenting.
Novelty grace period: the 6 months novelty grace period may be the only remedy for applicants being denied patent protection in Germany for prior disclosure by the applicant himself.
In case of litigation, German utility models offer several advantages as well:
The UM is enforceable as of the date of registration. UMs can be a powerful weapon against infringers entering the German market while awaiting the grant of a pending German or European patent application.
Damages can be claimed as of the date of registration. Accrued damages based on the registered UM might be higher than the compensation based on still pending patent applications.
The claim set of a branched-off UM can be tailored to the infringing product. During the filing procedure, the original claims may be amended, or new claims be drafted, obviously not extending beyond the matter originally filed. For example, a UM with claims clearly adapted to the infringing product may be more easily enforceable through preliminary injunctions as the judge deciding on the matter has less efforts in comparing the infringing product to the claim features.
More than one UM may be branched-off a pending patent application. This would generate an entire arsenal of tools against an infringer, and thus contribute to a powerful enforcement strategy.
Why wait? File your German Utility Models swiftly with JET IP.