GERMAN UTILITY MODEL
A MIGHTY WEAPON IN THE IP COUNSEL'S ARMOURY
DATE: 13 OCTOBER 2016
LOCATION: THE LONDON IP SUMMIT
INTRODUCTION
In Germany the utility model is an unexamined, technical
IP right.
Registration of a utility model has the effect of creating an
exclusive right for the holder corresponding to a granted
patent. Third parties are prohibited from making, selling,
marketing or using the subject matter of the utility model
and from importing for those acts.
The utility model holder can require the infringing party to
pay compensatory damages, to desist from the
infringement, and to provide information on the extent of
the infringement.
LEGAL FRAMEWORK
• Registration without substantive examination
Definition of prior art
• Requirements
protection
Not noveltyof
destroying:
• Oral
disclosure
– Industrial
application
• Use
abroad (i.e. not within the territory
– Inventive
step
– Novelty of DE)
•
• Prefiled post-published prior rights
• Own publication up to 6 month prior to
Exclusions application
from protection
– Non technical matter
– Biotechnological inventions
– Methods (except second medical use claims)
• Maximum term of protection: 10 years
REGISTRATION PROCESS
• Fast and cheap
– Registration within days
– No claim fees
• Double protection possible
– Patent / utility model
– Utility model / utility model
• Branch-off application
BRANCH OFF (§5 GebrMG)
Utility model has effective filing date of a pending
patent application
Requirements:
– Pending patent application designating Germany
(i.e. pending international, European or German
patent application)
– Deadline: within 2 month from the end of the month
in which processing of the patent application or any
opposition procedure, if any, is terminated
– Same invention
– Same applicant
– Until 10 years after application date of patent
application
BRANCH OFF - ADVANTAGES
• Fast protection (against infringement activities
during grant proceedings in Germany) -> flanking
protection
• Adaptation of the wording of the claims to the
infringing product
• Fall-back position for patent (different prior art,
different definition of novelty)
• Alternative to a costly divisional application
• Possible after grant of a patent during opposition
ENFORCEMENT OF A UTILITY MODEL
• Enforcement at patent chamber of civil courts
• Legal consequences as known from patent law
• The validity of a German utility model can be
assessed upon request during infringement
proceedings by a Civil Court (unlike to a German
patent or German part of a European Patent)
• Interlocutory injunction possible, however validity of
the utility model has to be confirmed
• Every utility model constitutes individual matter in
dispute
STRATEGY
PCT
Application
Scope of
claims
30/31 month
nat. / reg. Phase
entry
18 month
Publication
Grant
Full of
Scope
protection
claims
Provisional
protection
Registration
Full
protection
Registration
Full
protection
DISADVANTAGES
• Maximum term of protection of a German utility model is
10 years after the end of the month of filing
• No method claims
• Possible problems during litigation, e.g. interlocutory
injunction only possible when validity of the utility model
has to been confirmed
• Validity of a German utility model can be assessed upon
request during infringement proceedings by a Civil Court
(unlike to a German patent or German part of a
European Patent)
• No protection is established by non valid utility models
ADVANTAGES
• Branch-off
• Grace period
• Definition of prior art
• No substantive examination
• Costs, e.g. no claim fees
• Fast protection
• Double protection possible
• Adaption of scope of claims after registration, e.g. to match
with infringing product
THANKS TO THE
AUDIENCE!