The utility model is often referred to as a “small patent” and is a cost-effective and quick alternative to a patent application. In some cases, it may also be advisable to “branch off” a utility model from a patent application. Such a “utility model branching” can be considered within ten years of the patent application, but at the latest until the patent granting procedure has been completed.
Technical inventions are eligible for utility model protection; however, no processes can be claimed. Unlike a patent, the maximum term of a utility model is ten years, with maintenance fees payable after three, six, and eight years.
The utility model enjoys a so-called grace period. This means that if you have already published your invention without filing a property right application, it is no longer eligible for patent protection due to lack of novelty. However, it is still possible to apply for a utility model for the invention within six months.
Utility model protection can only be obtained in a few countries. For example, there is neither a European nor an international utility model. If you are interested in utility model protection beyond Germany, we will be happy to let you know where this is possible.
Applications
The most important prerequisite for successful registration of a property right is a precisely formulated application. Our in-house patent attorney is an experienced professional who is well versed in the preparation of utility model applications in all fields of technology. In doing so, he always ensures that you receive the broadest possible scope of protection.
Unlike a patent, a utility model is an unexamined property right that is initially not examined by the office for substantive protection requirements. First and foremost, the formal requirements are examined, i.e., whether the application is complete and whether the invention is technically accessible to utility model protection. This ensures a speedy procedure, and registration in the utility model register usually takes place after just a few months.
Utility Model Branch-Off
A utility model spin-off can be particularly interesting in cases where patent granting is not yet foreseeable, but competing products are nevertheless to be prosecuted for infringement of property rights. Since a patent only takes effect once it has been granted and third parties can be prevented from using the invention, the derivation of a utility model from a patent application is a suitable means of bridging the otherwise unprotected period between patent application and grant.
Since the utility model is not examined for novelty and inventive step prior to registration, it is necessary to be able to assess its legal validity differently. Otherwise, taking action against third parties based on the property right involves an unforeseeable risk. Upon request, the German Patent and Trademark Office therefore determines the publications relevant to protectability, and the rights arising from the utility model may, if necessary, enable rapid enforcement of injunctive relief and claims for damages against potential infringers, even if the patent grant is still pending.
Search Requests
Before a planned application, it is of extreme importance to analyze the most current state of the art. A prior art search is especially recommendable before a utility model application is filed, since no substantive examination will be conducted before it is registered. Such prior art search very often economizes the cost of an application or further proceedings. We may search for prior rights and documents which already exist in a particular technical area, so that we can assess, whether your invention is de facto new or whether a similar product has already been disclosed. Thus, we enable you to evaluate whether it is worth investing in an application for IP protection.
In addition, we conduct “freedom-to-operate” searches if you would like to obtain legal assurance before you, for instance, produce a newly developed product or bring it onto the market. We broadly analyze both, relevant utility model applications as well as registered utility models in a particular technical field, and examine the validity of these rights. By doing so, we can minimize your risk of infringing third party IP rights or advise you on how to modify your products so that you do not encroach upon any foreign IP right. This way, you obtain a comprehensive state of knowledge of the current state of the art in your technical field and may plan your new product developments in a better way.
Utility Model Infringement
Often, the substantive criteria of a utility model are only examined in the context of infringement proceedings by a civil court or in cancellation proceedings by the German Patent and Trademark Office. Before taking action against an infringer of the utility model, it is therefore strongly recommended that the proprietor of the property right arrange for a professional search to examine the legal validity of the utility model. Otherwise, there is a risk of liability for damages if the utility model turns out to be invalid.
In the event of an attack based on a registered utility model, the attacked party can defend itself, for example, through revocation proceedings. In such revocation proceedings, the novelty and the existence of an inventive step in the subject of the utility model are examined. Depending on the outcome of this examination, the utility model is revoked in whole or in part, or the application for revocation is rejected.
MDLEGAL EUROPEAN PATENT ATTORNEYS GbR has many years of experience in European opposition and appeal proceedings before the European Patent Office (EPO). In enforcing property rights against third parties and defending existing property rights against attacks, our employed lawyer and our employed patent attorney represent your interests as their professionals.
