• The German Utility Model - An Introduction

    Utility model protection is available in Germany for technical inventions which are novel and inventive. Each year, around 20,000 utlity model applications are filed at the German Patent and Trade Mark Office (GPTO). Only about 15% of the applicants are foreign. Utility model protection is used comparatively little by foreign applicants, despite providing useful alternative or supplement to patent protection.

     

    Features of Utility Models

    • Speedy Registration - In contrast to a patent, the subject matter of a utility model application is not examined as to novelty and inventiveness before registration. Registration thus can take place shortly after filing, normally within three to six months. Consequently, utility model protection can be obtained more quickly and at lower costs than patent protection.

    • Restricted State of the Art - The state of the art in respect of utility models comprises written publications worldwide and public use within Germany before the priority date of the invention. This contrasts with the state of the art in respect of patents, which also includes public use abroad.

    • Grace Period - Written publications or public use by the applicant (or his predecessor in title) within six months before the priority date (not the application date!) of the invention do not constitute prior art.

    • Reduced Inventiveness Requirement - For an invention to be protectable through a utility model, it has to be novel and based on an inventive step (erfinderischer Schritt). These requirements differ from those for patentability: for an invention to be patentable, it has to be novel and based on an inventive activity (erfinderische Tätigkeit). This difference in terminology sets a lower threshold of required inventiveness (Erfindungshöhe) for utility models than for patents.

    • Splitting Off Procedure - A utility model application can be “split off” from an earlier patent application with effect in Germany (i.e. a German national or European/PCT applications designating Germany). The utility model retains the priority date of the earlier patent application. Splitting off is a useful tool, for example, if enforcable protection is required at short notice, or if prior art is citable against a patent application which would not be citable against an utility model application of the same priority date.

    • Method Inventions - Method claims are not allowed in utility model applications.

    • Maximum Term of Protection - The maximum term of protection of utility models is 10 years.

     

    Litigation and Remedies

    One of the main advantages of utility models is the swift registration procedure. This can prove particularly useful if an enforceable IP right is required at short notice.

    For instance, if a patent application is still pending while potential infringement is taking place, action against the infringer can be prepared by splitting off a utility model. Proceedings can then be initiated on the basis of the utility model. Once the patent is granted, this can be included in the infringement action.

    When splitting off, the claims of the utility model application can be amended. The claims can thus be re-drafted to distinguish better from the prior art or to better cover the infringement.

    Generally, utility model litigation is similar to patent litigation. The same remedies are available, i.e. injunctions (including interim injunctions), damages, destruction, disclosure of origin of the infringing product, seizure. However, there are differences:

    • Interim Injunctions - Interim injunctions are available if the utility model proprietor can demonstrate a valid claim (i.e. the subsistence of utility model protection), reasons (i.e. infringement) and urgency. Since utility models are registered without examination, it is debatable whether courts should assume utility models to be valid unless challenged by the alleged infringer, or whether the proprietor should substantiate the validity of the utility model when applying for an interim injunction. The courts generally appear to be reluctant to grant an interim injunction on the basis of utility model protection unless the proprietor provides reasons why the utility model should be assumed valid. One way of substantiating validity is to present the results of a prior art search in respect of a parallel patent application.

    • Infringement Proceedings - In contrast to proceedings for patent infringement, the defendant can challenge the validity of the utility model in proceedings for utility model infringement.

    • Revocation – A defendant can apply for revocation of the utility model. Revocation proceedings are conducted separately by the German Patent Office. The court may stay the infringement proceedings for the duration of the revocation proceedings; it even has to do so if it considers the utility model invalid (the court has no power to revoke the utility model). However, if the revocation action fails, the court is bound by the finding of validity.

     

    Summary

    utility models can be used to reduce costs. This makes them an interesting useful alternative to patents where protection is desirable but the costs of patent prosecution do not seem justified.

    In litigation, utility models can be used to supplement patent protection in order to allow swifter action and to strengthen the claimant’s position.