German utility models do have several advantages, which changed their initial role as a cheap and simple IP protection means for smaller companies or private persons, towards a powerful weapon frequently used in litigations between multi-billion companies.

Advantages of the utility models vs. European or German Patents are:

  • quick protection: Typically a German Utility Model is registered and thus enforceable within very view months,
  • cheap: Low office fees incl. the extension fees
  • no examination as to novelty and inventive step,
  • no unity requirement and no claim fees:

Thus a utility model can be smartly drafted having a plurality of independent claims, which are not necessarily satisfying the unity requirement, and which makes it very difficult to invalidate all of the multiple independent claims, and they

  • can be derived from a pending patent application having effect for Germany:

A German Utility Model can be derived (“abgezweigt”) from a pending German or European Patent Application. This measure is actually frequently used in case the wording of the German or European Patent Application is not perfectly matching a competitor product, and when the more liberal German standards as to the due support in the originally filed documents is used to massage the claim wording towards the competitor’s product.

Downsides of a German Utility Model are:

  • the limitation of lifetime to 10 years, and
  • the exclusion of “method “ claims in § 2 (3) of the German Utility Model Act.

Exclusion of method claims:

There is certainly an argument that there are actually only 2 categories of claims, i.e. method claims and product claims, wherein use claims can then be classified under the main category “method claim”. Following this argument for decades use claims have not been seen as eligible for German utility models in view of the exclusion of method claim under § 2 (3) of the German Utility Model Act.

A first exception to this rule has been the Supreme Court’s decision XZB7/03 in 2006 explicitly deciding that second medical use claims are eligible for German utility model protection and are not excluded as “method claims”.

Now the Federal Patent Court (which is the appeal instance in utility model invalidation proceedings) has decided in 35 W (pat) 412/16 that actually only very specific use claim are actually excluded by § 2 (3) as “method” claims. In the case decided, the claim related to the use of a specific ceramics material as dental material. The Federal Patent Court decided that such a claim is not excluded from German utility model protection as it is not a working or production method. Working and production methods continue to be excluded from German utility model protection.

Thus, this decision goes beyond the Supreme Court’s decision and explicitly allows even further types of use claims for utility model protection.

It seems that a key criterion whether a use claim is legible for German utility model protection or not is whether the claimed use involves the structural modification of the product/material claim. If yes, the claim will be considered an excluded method.

Practical Impact:

To summarize, especially the spinning off (“Abzweigung”) of German utility models from pending DE or EP applications has become even more attractive by the Federal Patent Court (“Bundespatentgericht”) in Germany further opening the possibility of protecting use claims in German utility models.