26 Oct
2021

Utility model – the underestimated property right

Some countries offer utility model protection in addition to patent protection. In practice, however, utility model protection plays only an insignificant role, or even no role in an application strategy. Even applicants who regularly file utility models and are familiar with its protection per se, typically consider utility model protection only when a small invention is involved.

There is a persistent misconception that a utility model has less value and is more difficult to enforce. In this chapter, using the example of the German utility model, we shall see how, in Germany at least, the exact opposite is the case. A German utility model can have considerable advantages compared to a granted patent. In enforcement, an unexamined German utility model is often even stronger than an examined patent due to its flexibility. In addition, the cost of a German utility model is usually negligible.

Utility model protection

The utility model is a technical property right similar to a patent. Although there is no global definition for a utility model, utility models are generally considered to be particularly suitable for protecting inventions that make small improvements to existing products or inventions that have a shorter commercial life.

Utility models provide similar protection to patents. A registered utility model prevents the protected invention from being commercially made, used, distributed, imported or sold by others without the owner’s consent. They are also jurisdictional, meaning that the right can be enforced only within the country in which the utility model is granted.

The requirements for utility model protection differ to some extent across jurisdictions. Novelty is always required, but inventiveness or non-obviousness requirements may differ. In some countries, utility models have a lower threshold for inventiveness than patents. Finally, in some countries, utility model protection is possible only as an alternative to patent protection, not in addition to it.

German utility models

An extra arrow in the quiver

An important aspect of the German regime is that both patent protection and additional utility model protection can be obtained in Germany on the same invention, and that a German utility model can still be ‘branched off’ from a European or German patent application, even at the end of the patent examination proceedings.

No examination of substantive requirements before registration

The requirements for the protectability of a German utility model are basically comparable to the requirements for the protectability of a patent. In particular, the requirements for inventive step are the same as for a patent in Germany.

In the case of a patent, however, protectability is examined by the German Patent and Trademark Office, in particular, whether the invention is new and has the necessary inventive step. In contrast, in the case of a German utility model, only a few formal requirements are reviewed. If they are met, the German utility model is registered in the German utility model register about four to six months later. From the date of its registration, a utility model can be enforced.

Limited prior art

The prior art for a German utility model is only what has become known to the public worldwide by written description or by public prior use in Germany before its filing date or priority date.

Therefore, any oral state of the art is irrelevant and obvious prior uses are considered as prior art only if they occurred in Germany. An exhibition or any other act of use ‘as such’ does not constitute prior art for a German utility model if it did not take place in Germany.

In contrast to the German or European patent, the German utility model has a six-month grace period for own publications or own prior uses. Therefore, for the assessment of the novelty of the subject matter of a German utility model, descriptions or acts of use within six months before the filing date or priority date are not taken into account, provided that they are based on the preparation of the applicant or its legal successor.

Branching off a German utility model

A very strong instrument

A German utility model can be branched off from a pending European patent application, a German patent application or an international patent application with effect in Germany.

Branching off is possible up to two months after the end of the month in which the patent was granted or the patent application was rejected. Such a branched-off German utility model receives the same time ranking (eg, priority date and filing date) as the patent application. The filing date of the patent application is therefore decisive for assessing protectability, term and due date of the renewal fees of the branched-off German utility model.

The claims of the branched-off utility model application need not be identical to those of the patent application. However, the subject matter of the claims must be disclosed in the patent application. Typically, comparatively broad independent claims are initially included in the utility model, which can be narrowed in the scope of the entire utility model disclosure in the event of enforcement or defence. Furthermore, the applicant may branch off any number of German utility models with different claims from one patent application. It is therefore possible to branch off one or more utility models from a patent application that has already undergone more or less complete patent examination proceedings, and this with the knowledge of the prior art determined from the patent examination proceedings.

An alternative to a divisional application

If during patent examination proceedings the EPO or the German Patent and Trademark Office finds that a patent application lacks unity, the question arises of whether one or more divisional patent applications should be filed to cover all aspects of the invention. However, the cost of divisional applications can quickly become substantial, so that often no further divisional applications are filed on these additional aspects. Alternatively, at least one German utility model can be filed for the parts of the invention that the German Patent and Trademark Office or the EPO has found to lack unity.

High level of uncertainty for third parties

As long as the protectability of the utility model has not been officially examined, it is often difficult for third parties to assess the extent to which the utility model is or could be legally valid without considerable analysis effort of their own. In practice, it has been shown that this hidden effect of a German utility model often leads to a significant competitive advantage for the owner.

Low cost

The costs of a German utility model are generally very low. Currently, filing and maintaining a utility model for the full 10 years costs about €1,100 in official fees. Since a German utility model is not examined in substance, no further costs are added for examination proceedings, as is the case with a patent application.

Attacks on the utility model

The lack of protectability of a German utility model can be asserted either by means of separate cancellation proceedings or as a defence in infringement proceedings.

Due to the bifurcated German system, cancellation proceedings are conducted at the German Patent and Trademark Office. An appeal against the office’s decision can be filed with the Federal Patent Court. In infringement proceedings, the defendant can also assert the lack of protectability of the utility model as a defence, regardless of whether cancellation proceedings are pending.

Utility model in enforcement

One of the main advantages of a German utility model is the various tactical options in its enforcement in infringement proceedings, which make it a highly flexible tool in the IP portfolio.

As with a German patent, based on a German utility model, a third party may be forbidden to manufacture, offer, place on the market or use the subject matter of the German utility model. In addition, the owner can claim damages from the infringer and information and accounting about the extent of the infringement, as well as the destruction of the infringing products.

Probably the most decisive tactical advantage is the possibility for the owner to tailor the scope of protection of the claimed subject matter of the utility model to the competitor’s product even after the lawsuit has been filed. In other words, the owner of the utility model has the option – with the knowledge of the product to be attacked – to specifically limit the claims to be litigated based on the entire disclosure of the utility model in such a way that the validity is as difficult as possible to attack and, simultaneously, the competitor’s product is still covered. Moreover, in general, the owner has the opportunity to file new claims during the infringement proceedings and to adapt or even shift the scope of protection in view of the infringer’s defence. The owner of the German utility model can thereby make very specific limitations, which are generally considered to be too restrictive in the framework of patent examination proceedings without the knowledge that the product may be at risk of later attack.

Moreover, these tailored claims are only binding between the parties, as no limitation declaration is required vis-à-vis the public. In other words, the German utility model owner could assert other correspondingly tailored claims against another infringer using the entire disclosure of the utility model.

Even if a request for cancellation has been filed against a German utility model, this does not automatically mean that the infringement proceedings will be stayed. This is because such a stay is considered only if the infringement court is convinced of the lack of protectability or if the infringement court has reasonable doubts about the protectability of the utility model.

Disadvantages

The shorter maximum 10-year protection term of the German utility model compared to a 20-year patent is often regarded as a disadvantage. In principle, this is true. However, patents in Germany are, on average, abandoned after about 11 years by non-payment of the renewal fee. This suggests that the shorter maximum term of protection of the German utility model appears to be less relevant in practice in many cases. The shorter term seems to be even less relevant in cases where the utility model was filed to accompany the patent protection.

The lack of examination of the protection requirements and the associated legal uncertainty is often cited as a disadvantage of the German utility model. However, it is often a considerable advantage in practice.

The concern that the enforcement of a German utility model leads to higher costs than enforcement of a patent is mostly unfounded. It is true that an attack from a utility model usually leads to a counterattack on the utility model in the form of a cancellation request. However, this is no different in the case of an attack based on a patent. There, too, the defendant typically defends themselves with a nullity action against the patent.

A generally relevant disadvantage is the exclusion of method protection in German utility models. Here, a certain remedy can only be provided by product-by-process claims trying to define a product by means of method steps.

Comments and recommendations

For a low cost, a highly flexible property right can be obtained with a German utility model. Costs are generally incurred only when they are worth it; namely, in the event of enforcement or if a competitor wants to launch a comparable product on the market. Whereas the invention disclosed in the German utility model is economically less relevant, in principle no further costs are incurred.

As a result, the costs of a German utility model are not only justified in the case of allegedly small inventions, but even in the case of strong inventions, the cost of an additional utility model is money well invested, since the various options that it offers often provide the decisive tactical advantage over an examined and granted patent.

For patent managers, when the EPO or the German Patent and Trademark Office consider the granting of a patent, it should be checked, in a standardised manner, whether a branching off a German utility model makes sense in each specific case. Otherwise, not all options for the effective protection of a company’s inventions will be exploited.