German Utility Models for Chinese Applicants
Quick protection at relatively low cost
A key advantage of German utility models (“Gebrauchsmuster”) is that they can be obtained
quickly and at relatively low cost, without the need for substantive examination. They are
thus an attractive form of protection for inventions in Germany (in addition to or as an
alternative to patent protection), particularly if urgent enforcement may be required.
Routes
Starting from a priority-founding CN invention
patent or utility model patent application, there
are several ways of obtaining utility model (UM)
protection in Germany.
It is possible to file a German UM application
directly, claiming the priority of the earlier Chinese
application within the normal 12-month priority
term. As another option, a UM application may
be filed as the German national phase of a PCT
application, up to 30 months after the priority date.
Unlike in China, it is possible to enter the German
national phase from a PCT application as both a
patent and UM application.
Another possibility is “splitting off” (or “branching
off”) a UM application from either a PCT
application designating Germany, a European
patent application or a German patent application.
“Splitting off” is possible at any time while the
originating application is pending, and up to the
end of the month that follows two months after
the originating application has terminated through
either grant, rejection or effective withdrawal.
It is even possible to “split off” a UM application from
a European or German patent application which is
the regional/national phase of a PCT application.
after the filing date.
This gives a large number of options for obtaining
German UM protection, as indicated in the diagram.
In the case of a split-off application, the filing date
is the filing date of the originating application. In the
case of a national phase of a PCT application, the
filing date is the PCT filing date.
Overview of Procedure
Costs
A prior art search is only carried out if an optional
search request is filed. Substantive examination
(novelty and inventive step) is not routinely carried
out.
in parallel with a patent having similar scope. The
acts of infringement are identical to those for patent
infringement in Germany.
A German UM application may be filed in any language Copies of our tariff for German UM protection are
(including Chinese), followed by a translation into available on request. As a guide, the cost for filing a
UM comprising up to 5 pages is around EUR 1,350
German within 3 months of filing.
up to registration, including translation into German
Registration typically occurs within 6 to 12 weeks, from English, official fees and our attorney fees.
after only a formal examination, and with publication
occurring shortly afterwards. The contents of a UM Enforcement
application become publicly available through file A German UM may be enforced as soon as it is
inspection at the date of registration.
registered, and may be enforced independently or
Basic Requirements
The main components of a German UM application
are similar to those of a patent application, namely a
description, claims, and any drawings.
The requirements for novelty, inventive step and
industrial applicability (although not examined in the
registration process) are generally the same as for
German patent applications. A difference however
is that the prior art does not include non-written
disclosures made outside Germany. There is also a sixmonth grace period for disclosures by the applicant.
UM protection can be particularly useful when urgent
enforcement is required. A UM may be used to initiate
litigation, for example as the basis of a preliminary
injunction or to support a customs seizure. UM
protection therefore is attractive when contemplating
involvement in the various international trade fairs
held in Germany each year.
Where parallel patent and UM applications are
pursued in Germany, it may be that only the registered
UM is available at the time of initiating infringement
proceedings. In such a case, separate proceedings
based on an eventual granted patent (which may
exist alongside a registered German UM for the
same or similar subject-matter) may be commenced
subsequently.
There are exclusions from protection for processes
and biotechnological inventions. Further information
is available on request.
Under litigation, a UM may be challenged for validity
in court. It is common for an alleged infringer to
Term of Protection
file a request for cancellation of the registered UM.
The term of protection is initially 3 years from the Often, a prior-art search with the German Patent and
filing date, and can be extended up to a maximum of Trademark Office is requested prior to litigation.
10 years. Extension fees become due 3, 6 and 8 years
September 2012
For further information, please contact:
visit us at
www.haseltinelake.com
or
www.haseltinelake.cn
Miss Li Min
Chief Representative Guangzhou Office
Email: [email protected]
Tel.: + 86 202 826 1916