What is an utility model?
As the "little sister" of the patent, the utility model is the fast and effective alternative to the lengthy and cost-intensive patent. Just like a patent, the utility model protects technical inventions. However, it does not protect biotechnological processes or processes as such, such as manufacturing and working processes, animal and plant breeding processes, or medical or microbiological processes.
The protection of the utility model rather relates to objects of utility, such as chemical substances, pharmaceuticals, cooking appliances (e.g. Thermomix), lamps, etc. Therefore, the utility model does not protect a process, but rather the product which results from the invention.
What do I have to consider when filing an application?
Requirements for the invention
The utility model, like the patent, protects inventions that are new and commercially usable. Furthermore, a utility model must have an "inventive step".
As with a patent, the invention or newly invented product must be new.
Example: A ballpoint pen that is provided with a measuring unit over its entire length so that it can also serve as a ruler.
A written description or information which has already been made public is considered to be detrimental to novelty, whereas only oral publications of the utility model are not detrimental to novelty.
In principle, the applicant is granted a grace period of six months. This means that if the applicant has already made the invention public (e.g. within the scope of an exhibition or an essay etc.), but subsequently files an application for a patent within the six months, the invention is still considered new.
The requirements for the criterion of novelty are therefore much lower than for a patent. This is because the applicant can still apply for his utility model, even if it has already been published, if it is still applied for within the six months following publication.
The inventive step
The "inventive step" of the utility model, in contrast to the "inventive step" of the patent, has no special requirements for the invention itself, as long as the invention is not obvious from the prior art. This means that the person skilled in the art could not obviously see or recognize with his technical knowledge whether this invention already results from the prior art. The applicant can therefore assume that his invention does not have to meet the high requirements of a patent.
Just like the patent, a utility model also requires to be industrially applicable.
Examination of the registration
Examination of formalities
The application documents must be filed with the DPMA. The request for registration must contain a short and clear technical description of the invention. However, the invention must still be described completely and clearly to such an extent that a person skilled in the art can easily carry it out. It must be clearly stated what the utility model protects, which is why specific claims should be formulated. Furthermore, drawings of the invention must always be filed with the application.
The special feature of a patent is that a subsequent description of the invention is possible even after the application has been filed.
Examination of the Invention Requirements
Just as with design protection, the DPMA examines only the formal requirements, but not the requirements for the invention itself, i.e. the criteria for sufficient utility model protection. These are also only examined upon request in case of a request for cancellation or infringement proceedings. If a request for cancellation is filed, the owner must prove that the utility model meets the criteria.
Registration of the utility model right
If the formal requirements are met and no obvious criteria for the utility model application are violated, the utility model is entered in the register of the DPMA. The design right is created upon registration. The protection for a utility model is 3 three years and can be extended to a maximum of 10 years.
As a utility model application is only examined to a very limited extent, the formal requirements and the payment of fees must be met, so that no notice of refusal is issued.
However, the following must always be observed:
Even if the invention requirements (novelty, inventive step and industrial applicability) are not examined and the utility model is therefore usually registered without any problems, the registration has no legal effect if these three criteria are not met. Rather, the registration can be cancelled at any time, provided that a request for this has been filed. This could be done by way of a request for cancellation or infringement proceedings.
May I also apply for a utility model abroad?
A uniform registration of a utility model at EU level is not possible. Furthermore, many countries do not know this type of property right. If the applicant wishes to obtain utility model protection also in other countries, he must register it individually in each country (if possible).
The utility model is a quick and much more cost-effective alternative to a patent. However, the protection of the utility model is much weaker than that of the patent because it is easier to attack. The main difference is, above all, that the patent must never have been publicly known before the application was filed, whereas this does not lead to a ground for refusal with the utility model.
In principle, the utility model enables the inventor to obtain a fast registration of his right, which, however, does not provide lasting legal certainty if the requirements for invention are not met.