Utility Models (Gebrauchsmuster)
– Utility Model ("Gebrauchsmuster") Law of August 28, 1986, last amended on July 17, 2017.
– Utility Model Regulations of May 1, 2004, last amended on December 10, 2012.
Applicant: the inventor or the legal successor (individual, firm, company, etc.).
Foreigners and nationals not living in the country: as for “patents“.
Naming of the inventor: not required.
Priorities: Convention priorities of foreign applications and priorities of German patent applications and utility model applications can be claimed within twelve months from the filing date of the first application.
Categories: utility models can cover machines, devices and products, but not methods or processes.
Novelty: the subject matter of the utility model must not have been published in printed documents worldwide or used within Germany before the date relevant for the priority of the application (“relative novelty” not “absolute novelty”). Any description or use within six months prior to the priority date of the application shall be disregarded when assessing novelty if and only if it is based on elaboration by the applicant or his predecessor in title (i.e. there is a six-month grace period).
Exceptions to protection: inventions contrary to the law or public morals; discoveries, scientific theories and mathematical methods; aesthetic design creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; reproduction of information; plant or animal varieties; methods or processes, each of the foregoing when claimed as such (per se).
Filing requirements for an application (to be sent to resident agent):
1. Specification with claims (applicants can file in any language, but if not in German, a translation must be filed within three months);
3. Power of attorney (as for “patents“);
4. Copy of priority application (claiming priority within sixteen months of priority date).
There is only a mostly formal examination, but no examination as to novelty and inventive step. However, the Patent and Trademark Office shall upon request carry out a novelty search for pre-published printed matter.
Publication and beginning of protection: the protection begins with registration in the Official Register. Registration will be published in the Patent Journal (“Patentblatt”). The filed documents are at the same time laid open to public inspection at the Patent and Trademark Office. For simplifying the file inspection, printed publications are published.
Opposition: not provided for as such, however a request for cancellation/annulment action may be filed anytime by any third party (see below).
Duration: ten years.
Annuities – latest term for payment – extension: there are no annuities; only three renewal fees fall due, namely after expiry of three years, six years and eight years from the filing date. The renewal fee can be paid without fine within two months of the expiry.
Payment with fine: as for “patents“.
Restoration: as for “patents“.
Annulment action: can be filed at any time of, or in special cases even after, the duration of the utility model, at the Utility Model Division of the Patent and Trademark Office.
Reasons for annulment: (a) the invention is excepted from protection (see above); (b) the invention is not patentable by a utility model because of lack of novelty, or of inventive step; (c) the invention is covered by a patent or a utility model based on a prior filing (or Convention) date (“prior claim approach”); (d) the invention has been usurped from another person; in the latter case, however, the injured person only is entitled to lodge an annulment action.
Marking of protected goods: is not compulsory but usual. If marking is used, the owner is obliged to communicate the number of the utility model under the same regulations as for “patents“.
Text of marking: “D.B.G.M.”. Other non-misleading markings may be acceptable.
Working – compulsory licenses: working is not compulsory. Patent regulations in respect of compulsory licenses also apply to utility models.
Assignment: as for “patents“.
Licenses: as for “patents“. Registration for an exclusive license at the Patent and Trademark Office is not provided for.
Infringement: according to patent regulations. If an annulment action is pending during an infringement action, the latter can be postponed by the court until the annulment action is decided.
Right of prior user: according to “patent” regulations.
Secret utility models: according to patent regulations. A utility model can be declared as secret, too; in this case, no publication takes place.
Utility model derived from a patent: if the applicant has already applied for a German patent for the same article at an earlier date, he may make a declaration with the utility model application claiming the application date and the priority right of the patent application for the utility model application. This right can be exercised within two months after the end of the month in which the patent application has been concluded (refused or granted), but only within ten years after the application date of the patent.