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An overview of the German utility model: the so called 'small patent'

Date: 3 June 2020

 

When it comes to the protection of technical inventions, the patent is generally at the forefront of legal advice. In addition to patent protection however, technical inventions can also be protected by a utility model. The utility model is sometimes referred to as a "small patent". It was originally intended to provide inventors with fast and inexpensive protection for "small" inventions. Today, the utility model has developed beyond these cases to become an important property right in practice, which, despite some weaknesses, also offers advantages over the patent.

 

The weaknesses of the utility model

 

As a "small" property right, the utility model is weaker than the patent in some respects. On one hand, the utility model only offers a maximum of 10 years’ protection, whereas patent protection exists for 20 years. Utility models are therefore less suitable for products that are subject to long development cycles. Furthermore, not all technical inventions can be protected by a utility model. For example, procedures are excluded from protection.

 

The strengths of the utility model

 

(a) Registration procedure without substantive examination

A key difference between a patent and a utility model is that a utility model is registered by the DPMA without prior examination as to novelty, inventive step or industrial applicability. The registration procedure therefore usually takes a few weeks. For this reason, the registration of a utility model is also considerably cheaper than a patent.

 

b)         Relative concept of novelty

In contrast to the patent, for which the absolute novelty concept applies, in the case of a utility model, only written descriptions and public acts of use constitute the state of the art in Germany. Public use of the inventions abroad cannot therefore be held against a utility model.

 

c)         Period of grace for novelty

A further advantage for the inventor is that their own publication of the invention does not form part of the state of the art and so is not detrimental to novelty, as long as it was not made more than six months before the application for utility model protection.

 

d)         Special case: "branched-off" utility model

In addition to a "normal" utility model application, the property right can also play an important role as a so-called "branched-off" utility model, in which a utility model is branched off from a pre-existing patent right, both in the patent grant procedure and in the opposition procedure. The priority right applicable to the patent application remains with the utility model.

 

In the period between filing and grant of the patent, a patent application does not enjoy the same protection as a granted patent. A utility model derived from the patent application can allow for an enforceable right before grant of the patent and therefore close this gap in protection. In the event that patent protection can no longer be granted due to a prior publication attributable to the inventor or his legal successor, diverting to a utility model offers a possibility to protect the invention effectively due to the six-month grace period.

 

The utility model must be branched off at the latest two months after the end of the month in which the patent application is completed. For example, a patent application will be completed as soon as the decision to reject the patent application or the decision to grant the patent is final. However, the filing of an opposition against a granted patent revives the possibility to branch off a utility model. The possibility to branch off a utility model automatically ends 10 years after the filing date of the patent application from which the utility model is to be branched off - irrespective of whether the patent application has already been settled or not.

 

A further advantage is the possibility to branch off utility models tailored to a specific object of infringement. For this purpose, the claims of the branched-off utility model are limited by the scope of protection of the utility model. An infringement claim thus remains justified despite the limitation. At the same time, the scope the utility model provides for a possible attack on cancellation is reduced to such an extent that the opponent of the infringement can often no longer effect the cancellation of the utility model.

 

The utility model thus offers a large number of interesting strategic aspects - as an independent protective right and as an accompanying protective right.

 

 

Get in touch with Our People if you have questions or would like to explore the possibility of registering a utility model.

 

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