Utility Models offer alternative or back-up to patent protection
Several territories around the world provide the option of protecting inventions via a Utility Model, as an alternative or a back-up to patent protection. Utility Models tend to be granted more quickly and at lower cost than patents, but it is important to be aware of all the pros and cons before applying for this form of protection. As an example, we discuss the Utility Model system that’s available in Germany.
Route to registration
Utility model (UM) registration is available for products and devices in the same technical subject areas as a patent, but cannot be used to protect innovative processes (such as manufacturing processes or new methods of using a known device). A description and claims are required for filing along with a request and an application fee. Drawings are not essential and are only required if the claims or the description refer to the drawings.
The main benefit of applying for utility model rights instead of, or in addition to, patent rights, is that while examination and grant of a patent usually take several years, a utility model can be registered within a few weeks. Broadly speaking, a utility model confers the same rights as a patent. However, utility models are not examined in the registration procedure so there is no assessment of novelty, inventive step and industrial application. This means that utility model protection can be obtained more easily, faster and at lower cost than patent protection.
Utility models can make use of an earlier filed patent application as its priority, gaining the application date of the earlier application. A utility model can also serve as such a priority application according to the regulations of the PCT.
Other important points about utility models are given below:
There is a six month grace period, unique to utility models, that means a utility model can be filed within six months of any disclosure of the invention. A disclosure or your own publication of the invention is not considered to be part of state of the art (not considered as prior art) if it occurs within this six month period.
Utility models as Supplemental Protection
It is possible to apply for both utility model registration and patent protection for the same invention. In fact, for any pending application with Germany included as a designated country, it is possible to ‘split-off’ a utility model, to provide supplementary protection while the patent is pending. This makes it possible to take action against potential infringers even before the patent application has been granted. Once the split-off utility model is registered, the invention enjoys full protection irrespective of the outcome of the patent grant procedure.
Splitting-off is allowable within 10 years from the date of filing the original patent application, or within two months of when the patent application or any opposition proceedings are concluded.
An important difference between a patent and a utility model is the term of protection. While a patent can be kept in force for up to 20 years, utility model protection lasts for up to 10 years. At registration the initial term of protection is three years from the date of filing. The utility model can then be renewed with a maintenance fee after three years, and again at six and eight years.
An optional search can be requested if the applicant wishes to assess the strength of the utility model over the existing prior art.
Interestingly, the sale or use of a product before the priority date of the UM is only considered relevant to the validity of the UM if it occurred inside Germany.
Cancellation Proceedings – utility models put to the test
Once a utility model is registered it is possible for any party to attack it by filing a request for cancellation proceedings. There is no need for that party to show a particular legal interest in the utility model. However, costs should be considered as the losing party has to bear their own costs as well as those of the other side.
The cancellation sees an examiner consider the substantive requirements for effective utility model protection, such as novelty, inventive step and industrial application.
In contrast to the patent system, there is no European filing route for utility models and so utility models have to be obtained on a country-by-country basis, where available.