Is The German Utility Model Your Secret Weapon For IP Enforcement?

Utility Models have lower official fees for application and maintenance compared to patents.

The German Utility Model offers strategic options in addition to standard patent protection. The Utility Model is often referred to disparagingly as a “minor patent”, a label that doesn’t do its actual potential justice. Utility Models are unexamined IP rights for technical inventions that provide fast protection for up to 10 years at low initial official fees. They generally take the form of a patent, having a description, claims, and figures if relevant. For IP practitioners, their primary value lies in their flexibility as a litigation tool and their specific advantages regarding prior art and grace periods. They can also provide a method of obtaining quick and relatively lower cost protection in Germany whilst EP and/or DE patent applications are going through the generally much slower search, examination, and grant phases.

What is a Utility Model? – Comparison to patents

Utility Models offer virtually immediate, tailored registered rights against fast copycat-type competitors.

Unlike a patent, the Utility Model undergoes only a formal examination, which includes examining the application for clarity, support and added matter. Prior to registration of a Utility Model, no substantive examination for novelty or inventive step takes place. This allows for very rapid registration, often within weeks. Protection covers technical inventions, including apparatus, systems, circuits, chemical substances, and pharmaceuticals (including second medical use). Pure methods (e.g., manufacturing or working methods) are excluded. However, case law construes the claim category of “methods” narrowly, and so signal sequences or means plus function claims generally remain protectable.

Prior art and grace periods

If a patent is threatened by prior art that falls under the Utility Model’s specific exclusions (e.g., oral disclosure or use abroad), a corresponding Utility Model may still be valid.

The definition of prior art is narrower than for patents. Written descriptions, published anywhere in the world are considered prior art, whereas public use and oral disclosures are prior art only if they occurred in Germany. A 6-month grace period applies to disclosures made by the applicant (or their predecessor in title) prior to the priority date. Inventive step is assessed equivalently to that of a patent. However, it is assessed against the more limited base of prior art described above.

How to obtain a Utility Model – Filing options

A Utility Model can be filed as direct application, as a subsequent application claiming priority from an earlier application under the rules of the Paris Convention, and as a national phase entry from an international application under the PCT.

Branching-off creates an independent, enforceable right from a pending patent, securing the original priority to target infringers early.

Another way of obtaining a German Utility Model is the unique and powerful feature of filing a branch-off application (in German: Gebrauchsmusterabzweigung), allowing the applicant to derive a Utility Model from a pending patent application (DE, EP designating DE, or PCT designating DE). The branched-off Utility Model creates an independent IP right that retains the filing and priority dates of the original patent application. It can be filed up to 10 years from the patent filing date, or up to two months after the patent proceedings conclude (grant, rejection, or withdrawal). It can also be filed from a German or EP patent undergoing Opposition Proceedings. A branched-off Utility Model may be part of a strategy in infringement scenarios. An applicant can branch off a Utility Model to obtain a practically immediately enforceable right while the base-patent is still stuck in examination (or opposition proceedings). Claims can be tailored specifically to target an infringing embodiment, provided they are supported by the original disclosure and permissible under the legal provisions for Utility Models.

Enforcement and litigation of German Utility Models

Infringement is handled by specialized civil chambers of the normal district courts. Unlike German patent litigation, where the assessment of infringement and validity are strictly bifurcated with the district courts handling the infringement and the Federal Patent Court (BPatG) handling the validity, the validity of a Utility Model may be challenged directly in the infringement proceedings at the relevant district court. The court must examine validity (inter partes) because the right was never substantively examined by the office.

Apart from bringing a validity counterclaim as a court defence in infringement proceedings, third parties can file a cancellation request at the German Patent and Trade Mark Office (DPMA) at any time, and the decision of the DPMA is appealable at the BPatG.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.