Protecting Your Inventions: Why Germany’s Utility Model System is Worth Considering

By Robert Fichter, JET IP

With 3,869,000 million Euros in 2022, Germany has the highest gross domestic product within Europe, followed by the UK and France with 2,904,089 and 2,639,092 million Euros, respectively. Germany has a well-established intellectual property system which grants protection for technical inventions not only via patents but also via utility models.

According to the German Patent and Trademark Office (DPMA – GPTO), around 10,000 utility models have been filed in 2022, with a total of 70,253 utility models in force by the end of 2022. While the majority of right owners (58.3%) are German, 12.2% of all German utility models are owned by Chinese entities, followed by 6.8% Indian proprietors, and only 3.8% US owners.

About 10% of all utility models are filed by the so-called branching-off procedure (“Abzweigung”), a very specific instrument in German IP law that creates a quickly enforceable right from any pending patent application with effect for Germany.

In this article, we’ll look into the requirements, procedures, and specialties of the utility model registration procedure in Germany, giving you a comprehensive guide to safeguarding your invention in this important European market.

Contents

1. What can be registered as a utility model in Germany?

2. The process of utility model registration in Germany

3. Novelty requirements for German utility models

4. Documents required for registering a utility model in Germany

5. The utility model cancellation process in Germany

6. Costs related to utility models in Germany

7. The German utility models as a hidden champion

8. Final thoughts 

1. What can be registered as a utility model in Germany?

Generally, and comparable to patents, the invention subject to the claims of a German utility model must be novel, inventive, and industrially applicable. 

Not protectable are discoveries as well as scientific theories and mathematical methods; aesthetic shape creations; schemes, rules and methods for performing mental acts, games or business activities as well as programs for data processing systems; the presentation of information; inventions violating public policy or public order; and biotechnological inventions.

The major difference to patent protection is that a German utility model may not be directed to methods. However, so-called product-by-process and certain use claims, such as the use of a known substance for a medical indication, are indeed allowable.

2. The process of utility model registration in Germany

German utility models are not examined as to substance. Only a formal examination taking place after filing ensures that the claimed subject matter doesn’t fall under the above-mentioned exclusions.

Registration occurs swiftly, usually within 2 to 3 months after filing. Once registered the right is enforceable, which makes the German utility model an important instrument of a European IP toolkit.

As no substantive examination takes place, applicants may optionally request the GPTO to conduct a prior art search and deliver a search report. This report serves merely informative purposes; even if novelty-destroying prior art was revealed, the application would still proceed to registration.

The application may be filed in any language, provided a verified German translation is filed within three months.

German utility models may be filed directly, with or without priority claim(s), and they may serve as a basis for subsequent priority claims by patent applications, e.g., German national, European or PCT applications.

The duration is maximal 10 years, with renewals due after 3, 6, and 8 years. Also check how to register a trademark in Germany. 

In addition to the direct filing process, German utility models may be branched-off to any pending patent application with effect for Germany. This very special legal instrument is admissible up to the expiration of two months from the end of the month in which processing of the base patent application (or an opposition procedure against the base patent application) is terminated and within 10 years of the filing of the base patent application.

In this context, the German law surprises with a specific feature, namely the assumption that an already granted patent is again considered “pending” during opposition procedures. In other words, if opposition has been filed against a granted German or European patent, a German utility model can still be branched off this patent (provided the time frame of 10 years is met). The importance of this possibility is explained further below.

3. Novelty requirements for German utility models

A six-month grace period from the disclosure of the invention is granted by the Act. Any publications or use by the applicant or his predecessor in title within six months preceding the priority date shall not be taken into consideration for assessing the validity of the utility model. In consequence, a German utility model may be the last resort for obtaining patent-like protection in Germany in case of previous disclosure of the invention by the applicant.

Further, patents (German national, European national phase) and utility models for the same invention may co-exist in Germany.

4. Documents required for the registration of a utility model in Germany

Utiliry models can be conveniently filed using the GPTO’s filing software without the need for paper documents. No Power of Attorney is required, but applicants  who do not reside in Germany require the utility model being filed by a patent attorney or attorney-at-law registered to practice in Germany and having a German address for service.

The required application fees must be paid within 3 months after filing, and it is recommended to pay upon filing.

Any required translation into German has to be filed within 3 months after filing. Certification of the translation by a German patent attorney or attorney-at-law is required, or the translation be prepared by a publicly appointed translator.

The application documents shall comprise the description, claims and figures, where applicable.

5. The utility model cancellation process in Germany

Opposition procedures against German utility models do not exist. However, the validity of a utility model can be contested in front of the German Patent and Trademark Office by request and payment of the official fee. The appeal instance against decision of the GPTO is the Federal Patent Court in Munich. Under special circumstances further appeal to the German Federal Supreme Court is available.

This invalidity procedure involves written discussions among both parties and an oral hearing and results in an appealable decision. The losing party bears as well the costs of the winning party. During the procedure, the proprietor of the utility model may limit the claims of the utility model to overcome relevant prior art cited by the adverse party. Also, the body may decide on partial cancellation of the attacked utility model.

6. Costs related to utility models in Germany (as per publication date of this article)

Application:

Renewal:

Cancellation:

The cost of filing a utility model in Germany through the iPNOTE platform starts as low as $406, which includes all government fees and filing stage. Find the best IP attorney in Germany on iPNOTE.

7. The German utility model as a hidden champion

Many good reasons to consider filing a German utility model. The most pertinent ones are as follows:

1. Low filing fees: for only €30, one can file a German utility model, either directly or via the branching-off procedure.
2. No prosecution fees: the utility model is registered without substantive examination. Unless unallowable subject matter is claimed or formal mistakes are made, the application is registered without further official actions.
3. Fast procedure: The registration of a German utility model takes only a few months. The utility model is published right after registration. Consequently, a German utility model may be used as an “official” defensive publication to avoid other parties seeking patent protection for an invention the inventors are not interested in patenting.
4. Novelty grace period: the 6-month novelty grace period may be the only remedy for applicants being denied patent protection in Germany for prior disclosure by the applicant himself.

In case of litigation, German utility models offer several advantages as well:

1. The utility model is enforceable as of the date of registration. Utility models can be a powerful weapon against infringers entering the German market while awaiting the grant of a pending German or European patent application.
2. Damages can be claimed as of the date of registration. Accrued damages based on the registered utility model might be higher than the compensation based on still pending patent applications.
3. The claim set of a branched-off utility model can be tailored to the infringing product. During the filing procedure, the original claims may be amended, or new claims be drafted, obviously not extending beyond the matter originally filed. For example, a utility model with claims clearly adapted to the infringing product may be more easily enforceable through preliminary injunctions as the judge deciding on the matter has less effort in comparing the infringing product to the claim features.
4. More than one utility model may be branched-off a pending patent application. This would generate an entire arsenal of tools against an infringer, and thus contribute to a powerful enforcement strategy.

8. Final thoughts 

Germany’s strong economy and well-established intellectual property system make it an attractive destination for businesses looking to protect their inventions. With the highest gross domestic product in Europe, Germany offers a stable and lucrative market for companies seeking to expand their operations. Additionally, the country’s utility model system provides a cost-effective and efficient way to secure protection for technical inventions. With low filing fees, no prosecution fees, and a fast registration process, German utility models offer a powerful tool against infringers entering the German market. 

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