Utility models are also referred to as small patents and represent a cost effective and convenient alternative to patent applications. To some extent, a utility model can be “branched off” from a patent application. Such utility model branch-off may take place at any time from the filing date of a patent application until the examination proceedings are completed.
Only technical inventions, but no processes can be protected by utility models. The maximum term of a utility model is ten years with renewal fees to be paid after three, six and eight years to keep the IP right alive.
Utility model enjoys a so-called novelty grace period. This means that, if you have disclosed your invention without filing any application, which would render the invention no longer eligible for patent protection due to lack of novelty, it is still possible to file a utility model application within six months after publicizing your invention.
Utility model protection is only available in a few countries. For instance, there exists no European or international utility model. Should it be of interest to you, we will be more than happy to advise you in which countries utility model protection is available other than Germany.
The most essential premise for a successful utility model registration is a precisely formulated application. Our team works on applications in all technical fields on a routine basis. We ensure that you will obtain a wide a scope of protection.
In contrast to patents, a utility model is an unexamined IP right, which means that no substantive examinationis conducted during the examination proceedings. Only formal requirements are examined, i.e. whether the application is complete and whether the invention is technical and eligible for utility model protection. Therefore, a speedy procedure is achieved and a utility model can be expected to be registered within a few months.
Utility Model Branch-Off
A utility model branch-off can be of particular interest when a grant of the patent is still not foreseeable, the products of the competitor, however, need to be prosecuted for infringement. Since the exclusive right that a patent confers upon its owner may only be exercised after the intellectual property right was granted, the branch-off of a utility model from a pending patent application may be an appropriate measure to bridge the otherwise protection free time period between filing the patent application and the actual grant of the patent.
Since novelty and inventive step of a utility model are not examined before registration, it is necessary to otherwise assess the legal validity of the utility model. If not, there will be an inherent unforeseeable risk when using the utility model to proceed against a third party. Upon application, the German Patent and Trademark Office issues documents which it deems relevant to the protectability of the utility model. Thus, a utility model may prove to its owner as a very helpful measure in prosecuting potential infringers – even when the examination proceedings for the patent application are still going on.
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
Very often, the criteria with regards to novelty and inventive step of a utility model are only being examined by the civil court during infringement proceedings or by the German Patent and Trademark Office in revocation proceedings. Therefore, it is strongly recommended to have a professional prior art search conducted before taking steps against an infringer to ensure the validity of the utility model. Otherwise, the utility model proprietor might be liable if the utility model turns out to be invalid.
In case you are being infringed by a third party, our patent law firm Meyer-Dulheuer MD Legal Patentanwälte PartG mbB may represent you in all levels of jurisdiction.
One of the ways to defend an accusation of infringement from a proprietor of a utility model is to launch cancellation proceedings against the utility model. In such proceedings, novelty and inventive step of the subject matter of the utility model will be examined. Dependent on the outcome of the examination, the utility model might be completely or partially revoked or the request for revocation will be rejected.
The patent law firm Meyer-Dulheuer MD Legal Patentanwälte PartG mbB is very experienced in the enforcement of intellectual property rights against a third party as well as in the defense of such rights against attacks. In each case, our team will develop a strategy that will suit your interests best.