Utility model protection in Germany: German utility model registration at a fixed price by a German Patent Attorney

According to Section 1 (1) of the German Utility Model Act (GebrMG), inventions which are new, based on an inventive step and industrially applicable can be protected as utility models. An invention protected by a German utility model may concern products and devices, but not processes.

A protectable invention must be new, it must be based on an inventive step and it must be capable of industrial applicability. According to Section 3 (1) of the Utility Model Act, an invention is considered “new” if it does not belong to the state of the art, the relevant state of the art comprising all knowledge which has been made available to the public by written description or by use within the scope of the Utility Model Act before the date relevant for the priority of the application. However, a description or use made within six months before the date relevant for the priority of the application shall not be taken into account if it is based on the applicant or his predecessor.

In contrast, an invention is considered to be based on an “inventive step” if it is not obvious to a person skilled in the art from the prior art. Finally, “industrial applicability” exists if the subject matter of the invention can be made or used in any industrial field, including agriculture.

In Germany, utility models are not protected for inventions whose exploitation would be contrary to public policy or morality, plant varieties or animal species, or processes. Therefore, utility model protection in Germany is excluded for these.

A registered German utility model is only registered in the territory of the Federal Republic of Germany. If a utility model should be protected in other countries besides Germany (e.g. in Austria or the Czech Republic), a utility model application must be filed separately in those countries. Utility model protection is only possible in a few selected countries. There is also no European utility model or “EU utility model”. However, it is possible that the German utility model can also be considered as the basis for a European patent (EP patent), through which protection can be achieved in other European countries.

If you do not have your idea or invention protected by a patent or utility model, it can basically be imitated and adopted by third parties without being able to do anything against it. A registered utility model defines the scope of protection of the utility model, creates a monopoly right and enables action to be taken against imitators. For example, third parties are prohibited from manufacturing the protected product in Germany, offering it, putting it on the market, or importing or possessing it for the aforementioned purposes without the consent of the utility model owner. In addition, a registered utility model may be highlighted in advertising, for example (e.g., with a reference to a “utility model-protected product” or “utility model protection in Germany”). Furthermore, licenses can also be granted to a protected utility model or a sale of “the idea” can take place.

Once an invention has been completed, it is advisable to not wait too long before filing a utility model application, as third parties may come first. Even though a utility model – in contrast to a patent – has a grace period of six months, it is advisable to file a utility model application as early as possible.

There are various differences between a utility model and a patent in Germany. For example, while there is no examination procedure for a utility model, a patent application is examined by the German Patent and Trademark Office (GPTO). A utility model is therefore an unexamined intellectual property right. Another important difference is the significantly shorter maximum term of protection of a utility model of only ten years, whereas for a patent the maximum term of protection is 20 years. While any prior publication is detrimental to novelty in the case of a patent application, there is a grace period of six months in utility model law.

The costs of a utility model application in Germany depend on the scope of services requested. These consist of the official fees of the German Patent and Trademark Office (DPMA) (as well as our fee if we are allowed to assist you). The official fee for the application of a utility model in Germany is only 30 Euro. In addition, there may be further costs for an optional search.

Overview of official fees for a utility model application in Germany:

Even though it is theoretically possible to prepare and file a utility model application in Germany yourself, this is generally not advisable – especially if you do not have extensive experience in the field and the corresponding expertise.

On its website the German Patent and Trademark Office (GPTO) conveys the impression that all you have to do to obtain a utility model is to complete a few forms. However, this is a very abbreviated presentation. For a (good) utility model application, the most important part is the exact wording of the claims. Since a German utility model is an unexamined intellectual property right, it is ultimately no great deal to get it registered. However, this is regularly worth nothing, since the claims are often formulated incorrectly and the intellectual property right thus offers only very limited protection against imitators.

Sometimes, applicants contact our IP Law Firm who have filed a utility model application in Germany themselves and wish to take action against third parties on the basis of this application. If we are then entrusted to save what can be saved, the result is unfortunately often worse (and sometimes more expensive) than if it had been done by a specialist.

Against this background, it is predominantly advisable to either have the application for a utility model done by a specialist or don’t do it at all.

The scope of protection of a utility model (e.g. the claims) can only be limited after the utility model application or even the registration, but not extended. Here, one is limited to the scope of the originally filed application documents.

No. In contrast to a patent, a utility model – as an “unexamined IP right” – is not examined at all with regard to earlier intellectual property rights. However, a search request can optionally be filed for a utility model for an additional fee. A search is carried out for relevant documents, which can then be viewed in the register.

Unfortunately, a registered utility model does not mean that the product based on it does not infringe any patents or utility models of third parties – even if a search has been carried out.

Procedure of a utility model registration in Germany (with our assistance):

➔ Order & payment ➔ Draft (optionally: prior search if necessary) ➔ Filing of the application and forwarding of the official fees after your approval

• ➔ Registration of the utility model at the GPTO and issuance of the certificate (there is no examination for novelty or inventive step)
• ➔ if search request has been filed prior art search by German Patent and Trademark Office (GPTO)

(Duration from application to registration of the utility model at the GPTO ideally: between 2 and 6 weeks)

After the registration of the utility model, you may advertise for the protected invention, for example, with a notice such as “utility model protection in Germany”, “protected utility model” or similar, as long as the utility model is in force here.

A utility model at the German Patent and Trademark Office can be renewed – upon payment of the renewal fees – up to the maximum term of protection of 10 years.

Unlike a trademark, a utility model does not have to be used in Germany. Therefore, non-use is not a reason for cancellation of the utility model. As with patents, there is no obligation to use a utility model and no grace period for use.