Enforceable intellectual property rights in Europe are of great strategic and economic importance. Many companies, especially from the Far East, are therefore interested in getting their international applications granted quickly in at least one European heartland. The German utility model represents a smart solution in this respect, since this way is
- cost-effective and
Registration or patenting?
Even accelerated examination procedures take at least 12 months in the best case. However, this presupposes that the claims can be granted immediately. An alternative is registration with delayed examination. This means that validity is only examined after an action for annulment has been filed by third parties. Procedures in which patents are not examined but only registered exist for example in Belgium and the Netherlands. They do indeed lead to an enforceable property right within a short time. However, PCT applications cannot be nationalised in these countries directly. If no domestic application is possible according to the Paris Convention, the only option is the time-consuming and costly route via a European patent.
Alternative German utility model
Unlike in other European countries, Germany allows a PCT application to be nationalised directly as a German patent application or utility model. The utility model has a number of advantages:
– it is regularly registered within 2-3 months;
– lower standards for novelty apply;
– the official fees are only EUR 40;
– the amount in dispute in an action for cancellation of a model is significantly lower than in an action for nullity of a patent.
It is recommendable submitting a search request together with the nationalization (EUR 250). Within about 6 months one will receive a list of the references which the DPMA considers relevant for novelty and inventive step.
Things to be considered
– The claims of the utility model are limited to substances and devices; processes cannot be protected;
– For therapeutic applications, claims for use are possible to a limited extent;
– The number of claims is limited to 10;
– Standards for inventive step are nowadays similar to those for patents;
– The application must be filed in German or along with a German translation;
– The term of the model is limited to 10 years.
Combination of design and patent
A particularly clever alternative is the combination of a German utility model and a German patent application, which can be nationalised together from a PCT application. The application fees are also low here, namely a total of only EUR 80. This variant is particularly recommended if the PCT application also contains process claims which the model cannot protect.
For the German patent application the request for examination can be deferred for 7 years. This means a strategic advantage as well as financial relief.
During the entire term of the patent application further utility models can be branched off. This is a further advantage because their claims can then be tailored exactly to a possible form of infringement.