Registering a utility model: What you should know beforehand
A utility model offers a quick way to protect technical inventions. Unlike a patent, the examination procedure for a utility model is less comprehensive, which leads to quick registration. Nevertheless, it can provide effective protection for technical innovations and developments. This article explains how you can register a utility model and when it makes sense to do so.
When is a utility model useful?
A utility model is particularly useful if the aim is to quickly protect a technical invention. It is suitable for inventions that already have a certain degree of market maturity and for which the innovation cycle is short.
As the application procedure does not involve a comprehensive substantive examination, protection can be obtained within a few months, sometimes even within weeks. A utility model is also suitable if quick protection is initially desired before a patent is considered later.
Utility models were and are often used to protect simple everyday objects. An example of this would be a one-handed mechanism for pocket knives that allows them to be opened and closed with one hand.
Registering a utility model: How it works
The application process for a utility model begins with a formal application to the German Patent and Trade Mark Office (DPMA). First, a detailed description of the invention should be prepared - preferably with the assistance of a lawyer - which clearly sets out the technical features and functionalities. The description is regularly supplemented by technical drawings that visually illustrate the essential features. In addition, claims must be formulated to define the scope of protection of the invention.
Before filing, a thorough search is recommended to ensure that the invention is actually new and does not infringe any third-party property rights.
Once the documents have been submitted, the DPMA examines the application formally, but not in terms of content, for the existence of the requirements for utility model eligibility, such as novelty or inventive step. This leads to rapid registration, which often takes place after just a few months.
From the date of registration, the invention enjoys legal protection that can be maintained for a maximum of ten years from the filing date. Initially, however, the utility model is only valid for three years. Protection can be extended by paying maintenance fees after 3, 6 and 8 years - similar to patents with annual fees.
Filing a utility model internationally - is that possible?
A European or international application for a utility model is not directly possible as, unlike patents, there is no European or international application procedure. However, you can file national utility model applications in some countries, which work in a similar way to Germany.
Alternatively, it is possible to first file a European or international patent application and convert it into a utility model in certain countries if their national laws provide for this.
In many countries, such as Germany, it is possible to protect an invention in parallel by means of a utility model and a patent application. In Germany, for example, a utility model can be "branched off" from a pending patent application in order to quickly obtain effective protection against imitators while the patent examination is still ongoing. This can also be a strategically sensible option.
Risk: Cancellation Proceedings
In the case of utility models, there is always the risk of cancellation proceedings, as there is no comprehensive examination of novelty and inventive step before registration. Every third party can file a cancellation request with the German Patent and Trade Mark Office (DPMA) if there are doubts about the legal validity of the utility model.
In such proceedings, it is examined whether the invention is actually new and is based on an inventive step. The proceedings can be very costly, as the entire costs of the proceedings are generally borne by the losing party, in contrast to patent opposition proceedings, in which each party generally bears its own costs.
Cancellation proceedings can lead to a partial or complete loss of the utility model if the substantive requirements for protection, in particular novelty and inventive step, are not met. A thorough preliminary search minimizes this risk.
Register a utility model: These costs are to be expected
The costs for a utility model application are made up of various factors. There is often a misperception that utility models are significantly cheaper than patents. In fact, the official fees for utility models are lower - the application fee at the German Patent and Trade Mark Office (DPMA) is currently around 40 euros, whereas patent applications require significantly higher fees. However, these official fees are only a small part of the total costs.
Significant costs are incurred through attorney's fees, which are similar for both utility models and patents. A lawyer is particularly beneficial when drafting the description and formulating the subject matter of protection, as this is where the basis for the subsequent scope of protection is laid. Errors at this stage can lead to problems later on (e.g. warning letters, cancellation) and thus cause further costs.
Another difference to patents is the examination procedure: In the case of a utility model, there is no comprehensive examination for novelty and inventive step. Although this saves time and costs in the application process, it comes with the risk that the property right can be more easily challenged and possibly canceled in the event of a dispute.
The maintenance fees are also lower for utility models and only apply until the expiry of 10 years. Patents, on the other hand, can be maintained for up to 20 years, which is an important difference for longer-term innovations.
How a patent attorney helps with the utility model application
It makes sense to seek legal support even before filing a utility model application. An experienced patent attorney not only offers comprehensive advice on the choice between a patent or utility model, but also ensures that the application is legally compliant.
In particular, this includes a careful search for existing IP rights that could affect your invention. As the utility model does not undergo an examination procedure, there is a higher risk of legal conflicts. For legal laypersons without specialized tools, such a search is difficult to carry out, which jeopardizes legal certainty.
The precise formulation of the description and claims is crucial for a successful application in order to clearly define the scope of protection of your invention. An attorney will help you to draft the claims precisely and in a legally compliant manner in order to avoid potential disputes. Should the utility model be challenged or infringed, an attorney will represent your interests in court proceedings or in out-of-court negotiations.
Conclusion: Utility models as effective protection for technical innovations
A utility model offers companies and individuals an effective way to quickly protect technical innovations. However, a utility model is not as attractive and cost-effective in comparison to a patent as it is often assumed, as the attorney's fees are similarly high. An experienced patent attorney can help you make the most of the special features of utility model protection and consider whether a patent or a utility model is better suited to you and your invention.