A utility model is similar to a patent in that it provides a monopoly right for an invention. However, utility models are much cheaper to obtain, the requirements for grant of a utility model are in some countries less stringent and the term is shorter.
Not all countries grant utility models. However, countries granting utility models (or petty patents or innovation patents, as they are called in some countries) do include Germany, France, Spain, Italy, Japan, China and Australia.
Utility models have a long tradition in Germany, having been introduced as early as 1891. While the general remarks in our note are essentially valid for Germany, the following specifications apply:
- A German utility model is registered about 6 to 8 weeks after filing, so effective protection is rapidly available.
- Requirements regarding inventiveness of a German utility model are essentially the same as for a German patent.
- A German utility model is not examined as to novelty and inventiveness when registered, but prior art is considered in invalidation proceedings.
- Prior art is more limited compared to that of patents and only comprises written matter. Prior use is relevant only within the territory of Germany.
- Description or use by the applicant within six months before the application date (priority date) of the utility model is not taken into account as prior art.
- In Germany, utility models are not available for methods, but in some cases method claims can be reworded as apparatus claims.
- As a German utility model is an unexamined intellectual property right, it is essential that validity is assessed before initiating infringement action. Failure to do this might result in the utility model owner having to pay damages if the utility model is found to be invalid during infringement proceedings.
- The maximum term of protection for a German utility model is 10 years.
- A German utility model can be “branched-off” from a pending patent application (German national filing, European patent application or PCT application designating Germany) or from a granted patent during opposition. A utility model branched off is entitled to the application or priority date of the patent application. The ten-year term of protection begins with the application date of the patent. Such a branching off is possible up to two months after grant of a patent or after a final decision in opposition proceedings.
Our team of German patent attorneys at Dehns is available to provide advice about whether to file a German utility model application instead of or in addition to a German, European or International patent application.