Definition and Nature of the Utility Model
The utility model is an industrial property right for technical inventions, often referred to as a ‘petty patent’. It serves to protect technical innovations and grants the owner an exclusive right of use. The utility model is characterized in particular by a comparatively fast and straightforward registration procedure as well as a shorter period of protection compared to a patent.
Requirements for the Protectability of a Utility Model
Technical Invention
A utility model protects technical inventions that are new, based on an inventive step, and are industrially applicable. Exclusions from protection exist especially for methods, mathematical methods, discoveries, scientific theories, and software as such.
Novelty and Inventive Step
An invention is considered new within the meaning of utility model law if it does not form part of the state of the art. Unlike a patent, however, a utility model only considers written publications worldwide and public use within Germany as prior art, and there is a so-called ‘grace period for novelty’ of six months from the inventor’s publication. The concept of ‘inventive step’ is set at a lower level compared to the ‘inventive activity’ required by patent law and requires a lesser creative threshold.
Industrial Applicability
The invention must be capable of being manufactured or used in any field of industry. Not eligible for protection are, inter alia, plant varieties, animal breeds, and certain biological breeding methods.
Application and Registration of a Utility Model
Application Procedure
The utility model is applied for at the German Patent and Trademark Office (DPMA) by submitting the required documents and paying the application fee. The application procedure does not include a substantive examination for novelty or the inventive step; only formal requirements are checked.
Publication and Scope of Protection
Once the formal requirements are examined, registration in the utility model register and the publication of the application take place. Only from this moment does the utility model afford protection. The scope of protection is determined by the claims, which describe the technical features of the invention.
Duration and Maintenance of the Utility Model
The utility model is granted for a maximum period of ten years from the date of application. The protection period begins immediately with registration and is divided into three sections (three, six, and ten years). To maintain protection, corresponding renewal and annual fees must be paid.
Legal Effect and Enforcement of the Utility Model
Exclusive Right
The owner of a utility model has the right to prohibit third parties from manufacturing, offering, marketing, or using the protected technical teaching.
Claims in Case of Infringement
In the event of an infringement, claims for injunctive relief, removal, damages, information, and destruction may be asserted. Enforcement is carried out through civil courts.
Scope of Protection
The scope of protection of the utility model is determined by the claims. Unlike the patent procedure, there is no comprehensive substantive examination by the office, so the legal validity may be reviewed during infringement proceedings (if necessary through cancellation proceedings).
Limitations and Cancellation
Legal Limits
Utility models do not protect methods (in particular methods of manufacture and working methods). Protection is limited exclusively to products or devices.
Cancellation Procedure
Any person can apply for the cancellation of a utility model at the DPMA. Reasons for cancellation include, in particular, lack of novelty, absence of an inventive step, or lack of industrial applicability. The cancellation procedure is an administrative process independent of civil proceedings.
Relationship to Other Intellectual Property Rights
Difference from the Patent
The utility model differs from the patent in particular by its application procedure (no substantive examination), the shorter duration of protection (maximum ten years), and the lower requirements for the inventive step. The grace period for novelty is another distinguishing feature compared to the patent procedure.
Parallel Protection
It is possible to apply for both a patent and a utility model in parallel for the same invention (so-called double application). Furthermore, patent applications can be converted into a utility model (‘derivation’). This can be used strategically to obtain short-term, rapid protection before the lengthy patent procedure is completed.
International Utility Model Law
The utility model does not exist in all countries. In many European and non-European countries, such a protective right is known as a ‘utility model’, though its requirements and scope of protection can differ substantially from German law. International protection must be applied for separately; worldwide registration is not possible.
Significance in Research and Business
The utility model is especially relevant for small and medium-sized enterprises as well as individual inventors, as it offers rapid legal protection for technical innovations with minimal financial and time investment. It promotes innovation and enables the commercial exploitation of developments that do not quite reach the level required for a patent but are nonetheless worthy of protection.
Literature and Legal Foundations
Utility model law in Germany is governed by the Utility Model Act (GebrMG). For further information, the official guidelines and publications of the German Patent and Trademark Office are decisive. Decisions by the specialist courts, in particular the Federal Court of Justice, provide important interpretative guidance on detailed questions of utility model law.
Frequently Asked Questions
Can a utility model also be registered for methods?
According to German law, a utility model can only be registered for inventions relating to products, i.e., tangible objects. This is clearly stipulated in Section 1 (1) of the Utility Model Act (GebrMG). Method inventions, such as manufacturing or working processes, are expressly excluded from utility model protection. As a result, innovative manufacturing processes, working methods, or application methods cannot be protected by a utility model. Protection for such inventions is only possible by means of a patent. This fundamental difference means that the legal scope of protection of a utility model differs significantly from patent law, which protects both products and processes.
What formal requirements apply to applying for a utility model?
Applying for a utility model at the German Patent and Trademark Office (DPMA) requires certain formal prerequisites. It is mandatory to submit an application that, in addition to the applicant’s personal details, must contain a comprehensive description of the invention, claims, and, if applicable, drawings (§ 4 GebrMV). The description should be drafted so that a skilled person is able to carry out the invention. A request for a search is not required, though it is recommended for assessing protectability. Furthermore, official fees must be paid on time. Compliance with these formal requirements is essential for the validity of the utility model, as failure to do so may result in rejection of the application.
What options do third parties have to challenge a registered utility model?
Unlike patent law with its opposition procedure, there is no formal opposition against the registration of a utility model. However, third parties can file a request for cancellation at the DPMA (§ 15 GebrMG). The cancellation request can be submitted at any time after registration and must be substantiated. In particular, it can be based on the grounds that the requirements for protection—novelty, inventive step, industrial applicability—are not met, or that exclusion grounds according to § 2 GebrMG exist. The DPMA examines the relevant objections as part of the cancellation procedure and invites both applicant and petitioner to provide statements. Legal remedies against the cancellation decision are governed by the general principles of administrative law.
How does the duration of protection for a utility model differ from that of a patent?
The utility model grants the holder a maximum protection of 10 years from the application date, provided that maintenance fees are paid regularly (§ 23 (1) GebrMG). In comparison, a patent can provide protection for up to 20 years. The utility model’s protection is extended by paying maintenance fees after 3, 6, and 8 years. A further extension after the 10-year period is legally excluded. This means that a utility model provides significantly shorter protection than a patent, which should be taken into account when strategically choosing the appropriate intellectual property right.
What rights does the owner of a utility model have in case of infringements?
The owner of a utility model has extensive rights to defend against and sanction infringements. According to § 24 GebrMG, these include in particular claims for injunctive relief, damages, information, and destruction. If an infringement is established, the owner can require the infringer to cease using the protected product, to compensate for any damage caused by the infringement, and to provide information on the origin and distribution channels. In addition, the destruction of infringing items may be demanded. Enforcement of these rights usually takes place in civil court proceedings.
Is the utility model subject to substantive examination by the patent office?
No, utility models are only subject to a formal examination by the German Patent and Trademark Office, i.e., it is checked whether the application meets the formal requirements, but not whether the requirements for protection such as novelty and inventive step are actually present (§ 8 GebrMG). Substantive examination only takes place, for example, if a request for cancellation is filed. Until then, the invention is initially registered as a utility model without prior substantive examination. On the one hand, this offers quick protection, but on the other hand, there is a risk that utility models not eligible for protection may initially appear legally valid.
Are there special aspects to consider for the international registration of utility models?
A German utility model affords protection solely within the territory of the Federal Republic of Germany. An international application, as is possible with patents via the Patent Cooperation Treaty (PCT), does not exist for utility models. However, some countries—especially in Europe and Asia—offer their own national utility model protection systems. Those seeking protection abroad must therefore file separate utility model applications in every country of interest according to the respective national regulations. There is currently no ‘central application’ or a utility model that is uniform for all of Europe.
