Take 10: German Utility Models – the killer IPR in Europe

Take 10: German Utility Models – the killer IPR in Europe

The new Unitary Patent is being lauded as the new killer Intellectual Property Right (IPR) in Europe. Rightfully so in many ways, never before has the European market had a single patent that provides access to the majority of the European Union’s nearly 450 million people. However, there is one IPR in Europe that is too often overlooked, that hasn’t had the decades of hype and political drama of the Unitary Patent. Instead, it has quietly been doing its thing.
The German utility model, sometimes referred to as the petty patent, is outshined by its better known and understood elder sibling, the good old German patent. But when you get to know the German utility model, you start to realise why it has a cult following amongst certain companies. Furthermore, by far the biggest filers of German utility models are German companies who really understand the value of this unique European IPR.
It’s therefore time that this versatile, cheap and effective IPR is shared with the rest of the world. We’ll set out why we love it, why we think it should form part of your European IP strategy and how it works. Here are our 10 reasons why we love German utility models.

1. Short and sweet, but with all the kick

A German utility model is an IPR for protecting a technical invention, just like a patent, however, there are some differences, which we’ll explain. The first key one is that it has a 10-year term, half that of the German patent.
But is this a problem? In practice, very few patents run for full term. Furthermore, in many fast-moving industries 10 years is more than enough. So outside of, say, pharmaceuticals where patent term is critical, we don’t see the term as a major hindrance, especially if you use German utility models as part of your overall IPR portfolio development strategy.
Whilst the term is shorter than for patents, German utility models still have all the kick of a standard patent with essentially the same remedies including damages and injunctive relief. So other than a shortened term, you’re not losing out on anything else.

2. Faster enforceable rights

Arguably the biggest plus of the German utility model is the speed at which you can get enforceable rights in place. In theory, you can get a German utility model granted in 5 weeks from filing.  You’ll certainly have your right in place within 4-6 months. For a patent you’ll be lucky if you get a search by then. If you want a granted patent in Germany you’re looking at more like 3-5 years from the EPO, and even more if you file directly through the German Patent and Trade Mark Office.
This speed is exciting because unlike patents, utility models can allow you to have an enforceable right in place at product launch. In addition, as we’ll explore, it also provides the option for branching off a utility model during prosecution. Doing this can allow you to quickly and simply target an infringer and get a highly relevant enforceable right in place swiftly so you’re ready to take action. Whilst other IPRs like Community Designs can also be obtained quickly, designs are limited in scope to the look of a product, whereas German utility models combine the speed of a Community Design with the breadth of protection of a patent. We think that’s a superb combination.

3. No complex prosecution

One reason German utility models are so quick to get registered is because there is no examination, like you would have for a patent. Getting the utility model searched is even optional.
To litigate, you’ll be in a stronger position if the claims have been searched and one or more claims have been shown to be novel and inventive. Otherwise there is a risk of proceedings being stayed for validity to be considered. However, as we’ll explore later, even this shouldn’t be an issue.
There is also the perceived downside that given the German utility model’s validity is unknown, the usefulness and value of the right is less clear. However, this is more a problem for competitors than for the owner. It is expensive to assess the validity of a utility model and therefore this cost burden surrounding the unknown validity of a utility model in turn brings uncertainty to competitors, which may be advantageous.

4. Less prior art

If validity of a utility model is ever considered, for example in opposition proceedings, then there is less prior art to deal with than for patents. Oral disclosure, public disclosures outside Germany, as well as subsequently published older patent applications, don’t count as prior art.

5. Time to think

Whilst a German utility model can be filed as a first filing, or claiming priority from an earlier right, it is the option of branching them off that provides the most power. At any point that either a European patent application or PCT application is pending you can branch off a German utility model, which provides numerous ways to use these versatile IPRs. There is no need to decide at or near the priority date that you want to file a German utility model, instead you can do it potentially many years after your first filing. Furthermore, it is this branching off process which enables you to quickly obtain a German utility model to read onto an infringer that comes to the surface whilst your European or PCT applications are pending. If you do the branching off after an EPO search and direct the independent claim to something the EPO deems novel or inventive, you’ll have a ready to enforce right, as the German courts will assume validity unless contested.

6. Cheaper alternative to EPO divisionals

Another great advantage of German utility models is that unlike the excruciatingly expensive back renewals you get hit with when you file a divisional at the EPO, no such back renewals are due when you file a German utility model. So you can consider the German utility model as a cheap alterative to an EPO divisional, albeit with limited geographical scope. For example, if a unity objection has been raised, or you get to grant and there is an alternative embodiment you want to protect, this could be a cheap and quick way to get protection for those alternatives.

7. Double trouble

Unlike some countries, you can have both German patents and utility models deriving from the same specification or priority document. Any number of utility models can be branched off from a single patent application all with overlapping scope. Hence, German utility models can help build a strong wall of protection around a product.

8. A saving grace

One gripe of the European patent system for our friends in America is that the EPO has no grace period. Whilst true of patents, it is not true of German utility models because there is a 6-month grace period for prior publication. So US companies who discount Europe when they discover an invention has already been disclosed may wish to think again – it is absolutely worthwhile considering filing a German utility model application if there has been accidental publication.

9. Access to Europe’s best patent court

If this isn’t sounding good enough already, it is worth reminding you that the German patent court system is the preferred court system in Europe for litigating patents primarily due to its speed and for it being relatively inexpensive (and that is very much a relative thing – don’t get any thoughts that litigating in Germany is going to be cheap!). In addition, being in Germany, you are getting access to damages associated with Europe’s largest country with a population of nearly 85 million.

10. Cheap as chips!

Importantly, getting registered German utility models is pleasingly cheap. It is only just over €1k in official fees for filing a German utility model and paying renewals for the 10-year term. Furthermore, given there is no examination, the only legal fees will be those of filing the application, which should be relatively minimal. Obviously, if you do enforce it, then that’s another question.

Next step? Give your portfolio a cheap, versatile and effective boost!

Hopefully you can now see that German utility models are a cheap, impactful, flexible, and easy to obtain IPR. Whether you consider filing one to strategically map claims on competitors for quick enforcement, or branch one off a European patent application to cover alternative embodiments or to save on extortionate EPO renewal fees, it is about time you thought about the part German utility models could play in your European IP strategy.

If you have questions about German utility models, please contact Nick Shipp or your usual Kilburn & Strode advisor.

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