Frequently the protective rights of a client don’t allow the patent attorney to immediately provide the legal assistance the client needs in a specific competitive situation. For example, as long as a patent application is still pending under examination, according to German practice, no infringement action can be brought before a court and even no warning letter but only an authorization enquiry can be sent to the infringer. Or, if the independent claim of a patent application doesn’t perfectly cover the competitor’s embodiment, the chances of success of an infringement action are often doubtful. For these and similar situations, the German IP Laws provide an often underestimated tool which enables the patent attorney to help his client:
The branched-off utility model
According to §5 of the German Utility Model Law, when filing a utility model application, the applicant may simultaneously file a declaration claiming the filing date of an earlier patent application having effect for Germany as the filing date of the utility model. As European patent applications and PCT applications have effect in Germany due to the general designation of all member states, the branching-off of a German utility model may be based not only on a national German patent application, but also on a European patent application or a PCT application.
The registration of a utility model, according to an information issued by the German Patent and Trademark Office (GPTO), usually takes about 3 to 4 months. This period may, however, be shortened to only a few weeks by filing simultaneously to the utility model application, a request for accelerated registration emphasizing that an infringing product has been found in the market. In this way, for example, German utility model DE 20 2013 102 436 U1 was registered within only six days.
Immediately after filing the utility model application at the GPTO, an authorization enquiry can be sent to the infringer together with the application documents, and after registration of the utility model a warning letter may follow. Furthermore, an infringement case may be brought before German courts without a further expert’s opinion issued by the GPTO on the validity of the utility model.
One of the greatest advantages of the branched-off utility model is that the claims on which the utility model is based may be tailored to the competitor’s infringing embodiment. In other word, the branched-off utility model may be based on claims fulfilling the following three criteria:
a) The claims are disclosed by the originally filed documents of the European patent application.
b) The claims are delimited over the prior art.
c) And, most importantly, the competitor’s product is covered by the scope of protection conferred by the claims.
In case that the utility model is branched off from a European patent application, the change-over to the German IP system is a further advantage, as the German practice of examining the admissibility of amendments is more liberal than the corresponding European practice. In particular, the German practice has a broader understanding of “the overall disclosure” of an application.
Furthermore, advantage might be taken of specific differences between the Patent Law and the Utility Model Law. For example, the Utility Model Law provides for a 6 months novelty grace period and accepts only prior public uses within Germany as prior art – to specify only a few of these differences.
All in all, the branched-off German utility model is a powerful tool for defending economic interests against competitors. Consequently, we think it is worth having a closer look at German utility models and in particular to the differences between patents and utility models which might be taken advantage of. Therefore, we would like to invite you to read our upcoming articles
A Short Introduction to German Utility Models (Part 1),
A Short Introduction to German Utility Models (Part 2), and
Patent versus Utility Model
which will be published here in the weeks ahead.