A patent application is often the solution for anyone who wishes to officially attach exclusive rights to intellectual property. However, there are alternatives. For instance, in the German market, companies can also choose to protect industrial inventions using a ‘utility model’.
This is useful and can be an alternative to a patent, particularly when speed is of the essence. What is a utility model and how does it work?
The purpose of a utility model can in fact be compared to that of a patent – it gives an exclusive right to a technical invention. The holder of this right can prevent competitors from producing and/or commercializing inventions. In the Netherlands and Belgium, for instance, there are no alternatives to patent procedures. In countries such as Italy, Spain, Portugal, Poland, Denmark and Germany, there is an alternative. The utility model here is the ‘baby brother’ of the patent. It protects technical inventions which can be used in industry. It also covers chemical substances, food products and medicines.
Each country that has a utility model adopts its own rules. These are the most notable differences between patents and utility models:
- A utility model usually gives protection for ten years. However, a patent offers protection for up to 20 years.
- In contrast to patent applications, utility models do not usually involve a content-related examination. Consequently, the turnaround time from application to registration of a utility model is considerably shorter and it can sometimes even be registered within six to eight weeks at the German Patent and Trade Mark Office (DPMA). By way of comparison, a patent application may be granted within a year, but it may also take three to five years, or even longer.
- The German utility model has a so-called grace period of six months. The disclosure of the invention to the public by the applicant within the six months preceding the priority or filing date of the application is then not taken into consideration for assessing novelty and inventiveness.
- For German utility models, it applies that oral disclosure and prior use are only relevant for the assessment of novelty and inventive step, if they took place in Germany.
- Utility models are usually not allowed for the protection of methods.
- German utility models can be branched off from a German patent application, if this is a German national, a European or an International patent application with designation Germany, or during opposition proceedings.
Opting for a utility model
Imagine that you would like to apply for a Germany utility model. As opposed to patent applications, there is no granting procedure, involving costs. In addition to the V.O. service fee, the costs for drafting the application are on average between € 3,000 and € 5,000. No annuities are then charged in the first three years after filing. The fee for the following three years is € 210 , € 350 for the following two years, € 530 for the final two years. Smaller companies often opt for the utility model as the costs for filing the application are significantly lower. For larger companies, a shorter completion time may be a crucial in deciding to opt for the utility model. Moreover, a registered utility model can be basis for an infringement suit against a potential infringer, if a patent is not granted yet.