Inventions sometimes need to be protected quickly and it would take far too long for a patent to be granted. Utility models are ideal in such cases and have recently stepped out of the shadow of patents thanks to changes in utility model law. They now offer significantly more protection for tangible inventions and represent a real alternative to patents—or can also complement them.
What are utility models?
Utility models were previously seen as the ‘little brother’ of patents. They were typically used for smaller inventions while anything bigger and more important was protected by a patent. But the amount of protection afforded by patents and utility models has been converging. Both are now used for inventions because the qualitative aspects are no longer significant. However, there are still differences between utility models and patents, such as legal protection, the maximum term of protection of ten years and procedural costs.
Utility model protection: What can be protected?
Utility models can protect physical items, e.g., a product to be sold. Utility models cannot be used to protect manufacturing and work processes. Instead, patent applications are required to protect them against third parties. In some cases, you can apply to protect a ‘new type of use’ for an existing product, e.g., medical products.
Any items requiring protection must be novel and involve an inventive step to be eligible for protection with a utility model.
Our expert patent attorneys at RGTH help clients develop the right strategies to protect their products, processes and designs with utility models, design rights and patents.
Where does utility model protection apply?
You can apply for utility models in Germany and several other countries. In Germany, a utility model is called a “Gebrauchsmuster” (under the German Utility Model Act) and is similar to utility models in other countries. You can apply for utility models in several EU countries as well as numerous countries worldwide, including Australia, Mexico, South Korea and China.
Who can apply for a utility model?
In principle, anyone with a physical invention can apply for a utility model. At RGTH, our patent attorneys support clients in applying for utility models in Germany and abroad and represent them in any disputes.
Differences between patents and utility models
Patents are still the most well-known way to protect an invention. However, they are not always the most appropriate option in specific circumstances.
This is especially true when protective rights need to be exercised quickly, e.g., when you need to pursue an infringement claim quickly. Applying for a utility model is therefore preferable in these situations. While it may take several years for patents to be granted, utility models can be registered within a few weeks and are also less expensive. This is because the registration process does not examine the product’s novelty, level of inventiveness and industrial applicability.
However, utility models grant a maximum term of protection of only 10 years versus up to 20 years with patents.
Applying for a utility model
Filing an application for a utility model involves far more than simply filling in a form. It is generally a good idea
- to carry out extensive research into existing utility models and patents before making an application.
- Any application to register a utility model must also contain a detailed description of the invention, complete with technical drawings.
- Claims must be formulated in such a way to guarantee the utility model provides sufficient protection.
Our patent attorneys at RGTH help clients find the right strategy for their utility model.
After paying an application fee, the relevant Patent Office then registers the utility model. Registration usually takes between two and four months on average, after which the utility model is published by the respective Patent Office and is protected from this point onward.
Costs of applying for a utility model
As a ‘cut-down’ version of a patent, utility model costs are frequently lower overall than applying for a patent and the costs of maintaining that patent. Although the costs of being granted a utility model are similar to that of a patent application, there are no follow-up costs associated with utility models.
Utility model searches
Regardless of whether you are applying for a patent, utility model or design right, you have to carry out extensive research before making the application as this is the only way to guarantee that an invention is actually new and therefore eligible to be protected. Specific databases containing previously registered inventions are available for searches. Our patent attorneys carry out research for our clients in the following areas:
- State of the art search/novelty search:Looking for information that could refute the novelty of the invention.
- Nullity search:Looking for information and documents which could be used to challenge a third party’s utility model.
- Utility model monitoring:These searches are regularly carried out to monitor whether third parties have filed applications relevant to our clients’ utility models.
- Freedom to operate searches (FTO): These searches aim to ensure that using your product will not infringe any third-party protection rights. You do not need to have any protection rights in place yourself to conduct this research.
Our utility model services
- National and international utility model applications
- Utility model searches
- Bringing infringement actions before the ordinary courts in Germany
- Conducting utility model cancellation proceedings