Utility Model Protection in Germany

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5 1. What is a utility model? 5 2. What can be protected by a utility model? 6 3. What constitutes the relevant prior art for a utility model? 7 4. The inventive step 7 5. Priority 8 6. Splitting-off 9 7. Application 10 8. Cancellation of the registered utility model 11 9. Infringement 12 10. Summary

3 Introduction

In Germany, in addition to patent protection, technical inventions can also be protected by a utility model which provides low-cost protection for such inventions with the exception of processes. In some countries intellectual property rights similar to a utility model are closely linked to patent rights and as a rule only differ from the patent in terms of a shorter duration and registration without examination of protection requirements. A German utility model, on the other hand, is a separate intellectual property right which is entirely independent of the patent. Incorporating the utility model’s special features in a strategic portfolio of intellectual property rights can have advantages for the rights holder.

4 1. What is a utility model? 2. What can be protected by a utility model? A German utility model is a national tech- What is a utility model? nical intellectual property right which is For an invention to be protected as a utility What can be protected by a entirely independent of the patent. Like model it must be new, based on an inventive utility model? a patent it protects technical inventions step, and have industrial application. The Utility other than processes within the Federal Model Act (GbmG) does not specify the subject Republic of Germany. Unlike a patent matter or inventions which can be protected, however, a utility model is an unexami- but, like the German Patent Act and the Euro- ned intellectual property right which, pean Patent Convention, Sections 1(2) and (3) after the formal requirements have been contain a non-exhaustive list of subject matter fulfilled and no obvious defects are evi- which is excluded from utility model protection. dent, is entered into the Patent Register and published. There is no further examination of intellectual property right re- Accordingly, a utility model can be: quirements. As in a patent specification, the utility model specification contains – movable and immovable matter a description, claims and drawings. – apparatus (machines, appliances, ...) The claims define the subject matter for – systems (e.g. switches) which can include which protection is sought. remote material features – substances (e.g. pharmaceutical products, When it was introduced in 1891, the utility food and natural stimulants) model was originally conceived of as a “minor – substance applications which are part of a patent” for “minor inventions”. Since the 1990 new medical indication Reform Act, utility model law has been largely consistent with patent law with all but a few – albeit substantial – exceptions. In recent years an average of around 17,000 utility model applications have been filed annually at the German Patent and Trade Mark Office.

5 3. What constitutes the relevant prior art The following in particular cannot be for a utility model? protected as utility models: What constitutes the relevant Prior art is decided by the priority status of prior art for a utility model? – inventions whose exploitation would be the utility model application, i.e. as a rule the contrary to public order or morality application priority date or filing date. Abso- – plant or animal varieties lute novelty, however, is not a requirement – processes for a German utility model. Prior art is sim- ply deemed to be what has been made public worldwide through printed publications or, in The term “process”, however, has been inter- Germany, through public use, prior to the utility preted in a very narrow sense in recent court model filing date and/or the priority date. decisions and has only been applied to manufac- turing processes and operations. For example, Prior art therefore does not include The German Federal Supreme Court decided that a claim for an intellectual property right in – a publicly-announced, oral description respect of a signal sequence for a computer pro- – known prior use outside Germany gram flow does not constitute a process claim – or older, subsequently published (decision of the Federal Supreme Court 2004 applications GRUR 495 – Signal sequence [Signalfolge]). A substance application which is part of a new medical indication was likewise considered not to This means that the use of the subject matter be a process and, in particular, a rights claim in abroad before the utility model priority date, or this regard was ruled not to be a process claim an oral description, does not constitute prior art (decision of the Federal Supreme Court 2006 for the utility model. GRUR 135 – Pharmaceutical product utility model [Arzneimittelgebrauchsmuster]). The In addition, a novelty grace period applies to Court also decided that so-called “means plus German utility models. Use of the invention, or function” claims do not define a process (BGH a description published in the six months prior X ZB 23/07 Telekommunikationsanordnung to the priority date is not deemed to be detri- [Telecommunications systems]). Claims worded mental to novelty provided it is based on the such as these can therefore define and assert applicants’ own work or that of his/her prede- how a particular piece of apparatus functions. cessor in title.

6 A narrower interpretation of state of the art 5. Priority hence applies to the German utility model compared to that which applies to a patent. German Utility Model Law provides for the Priority assertion of priority rights pursuant to Article 4 of the Paris Convention for the Protection of In- 4. The inventive step dustrial Property. A utility model can therefore assert the priority of a foreign patent application Unlike patent law, the German Utility Model up to 12 months after the date it is filed. The inventive step Act does not contain a legal definition of the “inventive step”. The term “inventive step” was, Domestic priority may also be asserted. The however, deliberately chosen for the Utility earlier application can be any first application Model Act in preference to the term “inventive for a patent or utility model which has effect activity” used in the Patent Act. Based on this in Germany, i.e. including a European patent and the legislator‘s intentions (“minor” patent, application designating Germany, or a Patent “minor” inventions, ...) court decisions and the Cooperation Treaty application designating literature concluded for many years that an in- Germany. ventive step required a lesser degree of inventive performance, i.e. a theory is eligible for utility Conversely, a utility model application can also model protection if it is obvious to the specialist be used as a low-cost way of establishing early practitioner from the state of the art but he is priority status for a later patent application unable to discover it ipso jure based solely on which can then assert the domestic priority of his general subject knowledge and routine mo- the earlier utility model application. nitoring of the state of the art. However, more recent court decisions have treated the inventive Exhibition priority constitutes a special case. It step of the utility model as equivalent to the applies to the display of the invention at dome- inventive activity of patents. stic or foreign exhibitions announced annually by the Federal Ministry of Justice. A utility Assessment of inventive step for the purposes of model application filed within six months of the a utility model, however, is based on a different opening date of the exhibition is given the prio- interpretation of prior art (see above). rity status of the first display. Exhibition priority can be added to the novelty grace period.

7 6. Splitting-off The requirements for splitting off a Splitting-off The German Utility Model Law provides for utility model from a patent applica- split-off applications. A split-off application is tion are: an independent utility model application for which the filing date of an earlier patent applica- – An earlier patent application which is tion is asserted. effective in Germany is pending. This may be a national German patent application, A utility model application which is split off in a European patent application designa- this way is given the same priority status (the ting Germany, or a Patent Cooperation priority date, filing date) as the earlier patent Treaty application designating Germany. application. The filing date of the earlier patent – The splitting-off declaration must be application is used in determining the split-off made at the same time as the utility mo- utility model’s protectability, duration and the del application is filed. due date for its renewal fees. – A utility model split-off application can be filed up to a maximum of ten years The claims of the split-off utility model ap- from the filing date of the earlier patent plication need not be identical to those of the application. pending patent application. The subject matter – A utility model split-off application must in the patent application must however be be filed no later than two months from disclosed in a manner that is entirely clear to the end of the month in which the patent a person skilled in the art. Provided this is the application is concluded or opposition case, there is no limit to the number of utility proceedings are terminated. Conclusion models with different claims that can be split-off can take the form of withdrawal or legal from a patent application. fiction of withdrawal, rejection, granting etc. Opposition proceedings revive the Application for a split-off utility model can splitting-off right. hence be made, for example, as flanking patent – The invention in question must be the protection in order to obtain an enforceable same as that of the earlier patent applica- intellectual property right in Germany while the tion filed by the same applicant. patent is still subject to examination. – Similarly to a divisional application for patents, all fees due for the split-off utility A split-off utility model can also be used as model must be paid retrospectively from a fallback position in the event of a citation the filing date.

8 against the patent application stating that it Changes to the application documents are per- is not part of the limited prior state of the art missible until the ruling on registration has been applicable to utility models. issued, provided they do not extend the subject matter of the application. Once registration has taken place, no further changes are permissible. 7. Application Nevertheless the scope of the utility model can Utility model applications are subject to the be reduced after registration if the utility model Application legal requirement of uniformity. An application holder files a new set of limited claims by means must therefore be made for each invention. of a contractually binding public declaration. An Uniformity is not however a requirement for application for cancellation, however, can only protection but for registration. Failure to file be made in respect of the registered claims. uniform applications does not therefore constitute a reason for their cancellation, but is merely A search in respect of the utility model appli- a hindrance to registration. cation and a registered utility model may be requested by the applicant or any third party. A utility model application must contain the A pending search request does not affect the applicant’s name, a request for registration with registration of the utility model. the designation and a description of the subject matter. Claims may continue to be submitted up Utility model protection starts on the filing date to the time of registration. Utility model appli- and ends ten years after the month of filing. cations can also be filed in a language other than German. In such cases, a German translation The German Patent and Trade Mark Office’s must be submitted within three months of filing. current application fee is EUR 40 and includes the maintenance fee for the first three years. Receipt of the utility model application has the The maintenance fees for subsequent periods same legal effect as receipt of a patent applica- are currently EUR 210 for years 4 to 6, EUR 350 tion, i.e. the date of receipt and the documents for years 7 to 8, and EUR 530 for years 9 to 10. submitted determine inter alia the filing date, duration of protection, priority status and the subject matter of the application.

9 8. Cancellation of the registered utility model Reasons for cancellation are:

Cancellation of the registered In order to prevent double protection, should – non-protectability pursuant to Sections 1 utility model an identical existing German patent or regis- to 3 of the Utility Model Act (GbmG) (i.e. tered utility model with an earlier priority date not of a technical nature, lack of novel- exist, which is not prior art (i.e. not previously ty, lack of inventive step, no industrial published), the new utility model will not be application) afforded protection if they concur. – identical, older intellectual property right (inadmissible double protection) Anyone can file a cancellation request in writing – unlawful withdrawal to the German Patent and Trade Mark Office. – inadmissible extension The cancellation request must be in respect of the registered version of the utility model’s claims. The decision on cancellation of the utility model lies with the Utility Model Division of the A part cancellation of the utility model is per- German Patent and Trade Mark Office. Appeals missible. against a first instance decision are heard by the Utility Model Senate of the German Federal Patent Court. In-person hearings must be held in utility model cancellation proceedings.

10 9. Infringement Combining lawsuits, as under the Patent Act, is not permissible under the Utility Model Act. Registration of a utility model has the effect of Different patent and utility model infringement Infringement creating an exclusive right for the holder cor- suits may therefore be brought simultaneously responding to a granted patent. Third parties against the same or similar action. are prohibited from making, selling, marke- ting or using the subject matter of the utility The non-protectability of a utility model can be model. The utility model holder can require the asserted in infringement litigation as a defence infringing party to pay compensatory damages, plea since the utility model is unexamined. The to desist from the infringement, and to provide infringement court must then examine capacity information on the extent of the infringement. for protection even if a cancellation request has He/she may also require the goods which in- been filed. fringe the utility model to be destroyed. The utility model holder can assert limited As in the case of a patent, the scope of protec- claims in infringement litigation which only tion afforded by a utility model is determined apply to the parties involved without having by the content of its claims. In order to interpret to make a binding public declaration. A utility the claims, the description and drawings must model which is deemed non-protectable in the be consulted. course of infringement litigation remains in existence. The establishment of non-protectabi- The competent authority for utility model lity in infringement litigation only has effect on infringement litigation is the specialised civil the parties involved in the said litigation. chamber in each of the twelve district courts which also have jurisdiction for patent litigation, plus one further district court.

11 10. Summary Notwithstanding these benefits it must be remembered that the German utility model is Summary A German utility model provides a number of an unexamined intellectual property right of ten advantages which ought to be taken into ac- years’ duration which does not provide protec- count when considering a strategic intellectual tion for processes. property rights portfolio: In practice the German utility model is often – as it is registered without examination, it used as a means of enforcing protection quickly is available quickly and at little cost (as a in infringement litigation. This is particularly rule registration takes place within three important for innovators in fast-moving lines months of filing the application) of business whose products are copied almost – the limited prior art compared with as soon as they appear on the market and hence patent law, and the novelty grace period need to be protected quickly, long before a may also mean subject matter made pub- parallel patent is granted. As a utility model can lic prior to the filing date can be protected be obtained at little cost, several utility model – the possibility of splitting off allows applications with different claims or split-off flanking protection for pending patent applications can be filed as part of an enforce- applications and tailoring claims to the ment strategy so that innovators are thus well subject matter of an infringement prepared for potential defence strategies of – asserting the domestic priority of an ear- infringing parties and thereby enhance their lier utility model application can be a low- chances of success in infringement litigation. cost way of establishing an earlier priority status for a later patent application

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