The first and foremost distinction between patents and utility models is how they are obtained and their maximum term. In Germany, patents are formally and substantively examined with regard to their patentability and have a maximum term of 20 years. In contrast, utility models have a maximum term of 10 years and are registered without any substantive examination, i.e. their protectability is only assessed in infringement proceedings or in cancellation proceedings before the German Patent and Trade Mark Office. Inventions which are directed to methods or processes, e.g. a production method, can be protect by a patent, but are excluded from utility model protection.
The effect of patents and utility models is restricted to national protection, i.e. they are only valid in the country in which they were filed. Apart from national patent protection for patent and utility models in individual countries, patents can additionally be filed for more than 1 country in the form of a regional patent, e.g. in the form of a European patent application or an international patent application.
The priority of a valid application can be claimed for a further application within one year after the filing date of that first application.
Analysing technological developments and the prior art on which the developments are based often reveals that a number of aspects of a technological development are patentable. The collaboration and personal dialogue – taking into account the technical expertise of the inventor and the technical and legal knowledge of the patent attorney – ensure the best results.
Our services for clients also include detailed advice regarding the cost involved and the most efficient approach, which type of protection is most suitable in the individual case, e.g. patent or utility model protection, or in which countries and regions a property right should be filed.
We provide continuous support and advice throughout the examination proceedings of a patent application. Thus, it goes without saying that we analyse examination reports and provide proposals for filing a response to the patent office. During this process, we keep an eye on how the client’s application continues at the different stages, in order to adapt the objective target if this should become necessary. Our goal is a strong property right which provides a strong competitive advantage for our clients.
After the filing of a patent application with the German Patent and Trade Mark Office (GPTO), the Patent Office initiates a search for prior art and – to see if the application is suitable for the grant of a patent – considers the following aspects: is the application new over the prior art, is it based on an inventive step, is it susceptible of industrial application and does the application comply with the formal requirements.
If the examination comes to the conclusion that the invention satisfies the requirements of the German Patent Act, the German Patent and Trade Mark Office decides to grant the patent.
The maximum term of a German patent is 20 years, starting from the filing date; in the case of human medical products this term can be extended by a maximum of 5.5 years, and in the case of animal medical products this term can be extended by 5 years (cf. Supplementary Protection Certificate).
The patent allows the patent proprietor to use the patented invention within the scope of the applicable law. Without the approval of the patent proprietor, it is prohibited for third parties to produce, offer, circulate, use, or implement the subject-matter of the patent, and to import, own, use or implement the patent for the above-mentioned purposes. Unauthorised use of the patent in Germany gives the patent proprietor the right to claim injunctive relief and damages (cf. Patent- and Utility Model Infringement Proceedings).
Originally intended as a “small patent” to provide cost-effective protection for less complicated and comprehensive inventions, utility models have proved to be quite valuable in IP practice and, compared to patents, offer certain advantages when protecting innovations and defending clients' competitive interests, and – depending on the situation – they can be filed as an addition or as alternative to a patent. However, the term of a utility model is limited to a maximum of 10 years.
Utility model protection extends to subject-matters, machines, devices and systems, technical arrangements (such as electronic circuits), chemical substances and substance applications with a new medical indication, though no methods can be protected.
The registration of a utility model is quick and cost-efficient, since it is registered without a substantive examination, i.e. for novelty, inventiveness and industrial applicability, and it is generally registered within two to three months in the utility model register of the German Patent and Trade Mark Office. The registration of the utility model ensures that the proprietor alone is allowed to use the subject-matter of the utility model. Without the approval of the proprietor it is prohibited for third parties to produce, offer, circulate, use, or implement the subject-matter of the utility model, and to import or own the subject-matter of the utility model for the above-mentioned purposes. Unauthorised use of the utility model by third parties gives the utility model proprietor the right to claim injunctive relief and damages in utility model infringement proceedings (cf. patent- and utility model infringement proceedings.
Fulfilment of the requirement of protectability is only examined on request and only done in cancellation proceedings before the German Patent and Trade Mark Office or in utility model infringement proceedings before a court.
As long as the protectability of a utility model has not been examined by the GPTO, it is difficult for third parties, without substantial search and analytical effort, to estimate to what extent the utility model is valid. This can be a considerable competitive advantage for a utility model proprietor.
The examination of a German patent application by the GPTO can take some time, during which the applicant has no right to claim injunctive relief. However, it is possible for the applicant to branch off a utility model from a German patent application, a European or international patent application, claiming the filing date of the respective patent application. In this way, the claims of a patent application – even amended claims – can be registered and protect by a utility model within a short period of time.
Both a granted patent and a registered utility model give the proprietor the right to claim injunctive relief and damages from the infringer.
Yet there are substantial differences between German patents and German utility models.
While the GPTO carries out a substantive examination regarding the patentability of a patent (novelty, inventiveness, industrial application), utility models are merely registered by the GPTO without any substantive examination at all. The protectability of a utility model is only assessed in infringement or cancellation proceedings.
The utility model has a maximum term of 10 years from the filing date, compared to a patent, which has a maximum term of 20 years from the filing date (cf. Supplementary Protection Certificate).
If the invention was available to the public before the filing date, this publication is prejudicial to a patent. However, this does not apply to utility models if the utility model was filed within six months after it was made available to the public (six-month grace period).
Applicants should note that – contrary to a patent – a utility model cannot protect a method or process. However, claims directed to a medical indication can be protect by a utility model.
The European Patent Office (EPO) decides in a centralised examination and grant procedure whether an invention is patentable. A European patent is granted if the application filed meets the requirements of the European Patent Convention (EPC), i.e. in particular with respect to novelty, inventiveness and industrial application.
After the centralised grant of a European patent, the patent has to be “validated” in those contracting states for which protection is sought. In the process, a corresponding request and – if necessary – a translation or partial translation has to be filed with the respective patent offices of the designated states.
For the benefit of our clients, we provide a validation system which is both cost-efficient and reliable. National parts of a European patent provide the same protection as national patents.
An applicant must bear in mind that the filing requirements of different countries vary greatly and that most countries require the application to be filed in the national language. All those requirements add up to high costs for an application at a point in time when it might be difficult to estimate an invention's value. Those drawbacks are reduced by an international patent application.
An international application is filed centrally with a receiving office, e.g. the European Patent Office, without deciding at that stage for which countries protection is sought and without the filing of translations. The designation of countries and the fulfilment of requirements set by the national patent offices can be deferred by 30 months starting from the priority date of the application, in some countries this term is even 31 months.
Thus, more time is available to decide if and for which countries the applicant seeks protection for the invention. Additionally, an international prior art search is carried out, which serves as the basis for the subsequent examination regarding novelty and inventive step. The result of the international search makes it possible to evaluate the chances for the (future) grant of national patents while the application is still pending in the international phase, even before costs for the nationalisation become due.
We take great care that our foreign colleagues are thoroughly familiar with their national laws, guidelines and practices. This global network has been built up over many decades and allows us to handle even very large IP portfolios and in particular to coordinate parallel granting procedures in a cost-efficient and reliable manner.
The term of a patent is a maximum of 20 years from the filing date. However, due to time-consuming approval procedures required by law for human and animal medical products and plant protection products, part of the patent's term is lost. This means that a patent proprietor cannot fully exploit the patent. In such cases the legislator provides compensation in the form of supplementary protection certificates. SPCs extend the term by a maximum of 5 years in addition to the patent's term of 20 years. The extension of the term of an SPC is calculated by the time period between the filing of an application and the distribution of the medical product or plant protection product. This time period is usually 5 years in the European Union. The SPC can be additionally extended by a maximum of six months if recognised studies for paediatric medical products have been conducted (paediatric extension).
It is possible to request supplementary protection certificates in almost every European country, the USA, Japan and a number of other countries. However the requirements for an extension of the term vary significantly in every country.
We are proud to be one of the few law firms in Germany which has extensive experience in filing and maintaining supplementary protection certificates.