by Dr. Markus Herzog, Patent Attorney & Partner at Weickmann & Weickmann
In former times, the German utility model was considered to be “the patent’s little brother”. Over the years, however, both the Utility Model Law and the jurisprudence of the Federal Court of Justice have changed. Today patents and utility models are protective rights of equal value, both having advantages as well as drawbacks. What are the specifics of the German utility model? How can innovative companies profit from utility models as an alternative to patents? Part 3 of this series looks at filing and registration of utility models.
Like patent applications, utility model applications may be filed in the German Patent and Trademark Office with or without claiming the priority of an earlier application.
Utility model applications do not have to be filed in German, they may also be filed in any other language. In this case, however, a certified translation has to be filed within three months after the filing date.
If the applicant fails to file the translation, the utility model application is deemed to be withdrawn.
Furthermore, a utility model application may be branched off from a patent application having effect for Germany. In this context, it is important to note that not only German patent applications have effect for Germany, but also EP and PCT applications, as they are designating Germany. In other words, a German utility model may not only be branched off from a national German patent application, but also from an EP application or a PCT application.
Furthermore, a utility model application may be branched off only as long as the patent application is still pending. Please note that, according to the German Utility Model Law, a patent application is deemed to be still pending for a certain time span after a patent has been granted for the patent application. The precise definition of this time span is very complicated, it roughly amounts to “about two months after granting of the patent”.
The maximum lifetime of a utility model is 10 years.
Similar to the maximum lifetime of divisional applications, the maximum lifetime of a branched-off utility model is calculated from the filing date of the parent patent application.
In contrast to patents, utility models are not examined as to the validity requirements novelty and inventive step. There is only a check with respect to formal aspects, e.g. whether their claims are directed to allowable subject matter. As a consequence, utility models are not granted like patents, but simply registered.
As a rule of thumb, a utility model is registered within 2 to 3 months after filing. In extreme cases, a utility model may be registered even within a couple of days. German utility model DE 20 2013 102 436 U1, for example, was registered within only six days.
It is important to note that, although utility models are unexamined protective rights, they can be enforced in German courts as from the date of their registration. No additional measures have to be taken. In particular, no opinion on their validity has to be obtained from the German Patent and Trademark Office.
And, as from the date of their registration, utility models are deemed to be publicly available, for example by inspection of files, and thus constitute prior art.
Stay of Registration
A quick registration is not always advantageous, as the following situation shows:
A German utility model was registered shortly, e.g. some weeks, after its filing date. At the end of the priority year, the applicant decides to file a European patent application claiming the priority of the utility model. Then, during the examination proceedings of this European patent application, the claims are delimited by a feature which was not disclosed in the utility model but only in the EP application. As a consequence, the priority is lost.
For this situation, the Boards of Appeal of the European Patent Office decided that the utility model constitutes prior art for “its own” EP application, as it was published before the filing date of the EP application and the priority was lost.
This dramatic drawback can be avoided by filing a request to put on hold the registration of the utility model for 15 months, i.e. to a point of time after the end of the priority year, when filing the utility model.
Utility model protection is possible for a maximum lifetime of 10 years. Requirements for filing a utility model are comparable to patent applications. Companies may profit from the option to branch off a utility model both from a national German patent application or from an EP or PCT application. With respect to novelty and inventive step, utility models are not examined as far-reaching as patents, and hence are registered much faster, duration is ranging from a couple of days to 2 to 3 months after filing.
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