Accelerating Intellectual Property Protection Using Germany's Utility Model Patent Strategy
Guide for Germany Utility Model Patent Application
In today's fast-paced innovation environment, it is crucial for companies to protect their intellectual property swiftly and effectively. Germany's utility model patent offers an efficient avenue for businesses to quickly obtain patent protection. This article will explore in detail the examination procedure of the German Patent and Trade Mark Office (DPMA) for utility models and the advantages it presents for innovators.
In Germany, there are two routes to apply for a utility model: one is via the Paris Convention, and the other is through the PCT entering the national phase in Germany.
The utility model is an untested protective right . Novelty, Inventive Step and Industrial Applicability are not tested in the examination process. This makes utility model protection easier, faster and cheaper to obtain than patent protection.
Authority:
- German Patent and Trade Mark Office, DPMA, www.dpma.de
Terms:
- 10 years
Due Date:
- Paris Convention: 12 months from the earliest priority date (no extensions/no restoration allowed)
- Nationalization of PCT: 30 months from the earliest priority date (no restoration allowed)
Required Documents:
- Specification (in German)
- Claims (in German)
- Drawings (in German)
- Abstract (in German, can be supplemented up to 15 months from the application date)
- Ownership Declaration/Employment Statement/Assignment for Priority Right Transfer
- Power of Attorney
Progress & Procedure:
Only formal examination is conducted by DPMA, which includes verifying the completeness and compliance of application documents. The applicant must pay the application fee within 3 months of the application date. If no formal deficiencies are found, or if any deficiencies are corrected, the utility model will be registered in the DPMA’s official registry. The utility model description is typically published approximately 4 weeks after the application date and is accessible in the DPMA Register.
For a German utility model, the specification and claims are mandatory documents. If the specification mentions drawings, these must also be included. The application documents must clearly and completely describe the invention. Once submitted, no additional technical features can be added.
- Splitting Off from a Patent Application:
- A utility model can be split off from a patent application. This allows protection even if the substantive examination for the patent has not been requested, is ongoing, or if the opposition procedure is pending. The application date of the utility model will match that of the original patent application.
- Advantages: While patent grant procedures can take a long time, utility models are usually granted within 2-3 months or even a few weeks. If the patent is not yet granted, the applicant cannot enforce injunctions or claim damages. A split-off utility model provides interim protection before the patent is granted, ensuring the invention is comprehensively protected.
- Requirements for Splitting Off:
- The earlier patent application must precede the utility model application by at least one day.
- A splitting declaration must be provided.
- If the split-off is from a pending patent application, the utility model application must be submitted within 2 months after the patent application or opposition procedure concludes. A split-off can be filed up to 10 years from the date of the original patent application.
- Maintenance fees for the utility model must be paid corresponding to its protection period, starting from the date of the earlier patent application. Maintenance fees for lapsed protection periods before submission are not due. DPMA does not issue notifications for due fees.
- A utility model can be split off from a patent application. This allows protection even if the substantive examination for the patent has not been requested, is ongoing, or if the opposition procedure is pending. The application date of the utility model will match that of the original patent application.
Grace Period for Novelty:
- A grace period of 6 months before the application date is allowed.
Grant and Annuity:
- No grant fee is charged.
- Fees are paid 3 times during the 10- year protection period: in the 4th, 7th, and 9th years after the filing date. At the start of the 4th year of protection, you must pay maintenance fees for the protection of your utility model without being asked to do so. The maintenance fee is due on the last day of the month in which the respective protection period ends. You then have 2 months to pay the fee due without surcharge and a further 4 months to pay the fee plus a late payment surcharge of 50 euros. The maintenance fee can be paid in advance no earlier than 1 year before the respective due date.
- Sample: The filing date of your utility model is June 15, 2017. The first maintenance fee is due on June 30, 2020. If you have not paid the maintenance fee by August 31, 2020, a late payment surcharge of 50 euros will be due. You then have until December 31, 2020 to pay the maintenance fee AND the late payment surcharge. If you miss this final deadline or do not pay in full, the protection right will expire.
Average Timeframes:
- 3-4 weeks
(The image is taken from the DPMA website.)