For 125 years, utility models have had a firm place alongside patents in the mosaic of industrial property rights. While the background to the creation and development of the utility model has already been examined, the focus will now be on the advantages of the German utility model system, which are unique, especially in an international comparison.
The strategic options arising from these advantages for the IP right holder are often not yet given the attention they deserve in practice.
Despite the lack of an examination procedure, obtaining a legally valid utility model is still easier in some respects than obtaining a patent, even though the requirements for the inventive step are now just as high as those for inventive step in the case of a patent. In addition to written documentation, only Domestic acts of prior use to the state of the art, would therefore stand in the way of an effective utility model. In practice, this represents an advantage for globally active applicants who operate with worldwide subsidiaries. After unexpected acts of prior use by foreign group companies, the German utility model then offers the only remaining fallback position.
Differences to the patent
However, the most significant difference to the patent is probably the grace period. According to this, a description or domestic use of the invention made six months before the priority date of the utility model is not taken into account if it was published by the applicant or his legal predecessor or if the publication is based on his activities.
Furthermore, the opportunities arising from the possibility of bifurcation - in particular the customised, parallel or successive duplication of the legal positions - open up to the property right holder Interesting options for legal enforcement. The applicant is free to protect the same invention both by a German (or European) patent and by one or more German utility models.
The possibility of using a Parallel property right The right to obtain a utility model not only exists during the twelve-month priority period, but also afterwards. A utility model can be branched off from a patent application with effect in Germany as long as the application is pending.
Advantages of a junction
The applicant can use the bifurcation right to bridge the time-consuming examination procedure of a patent application, during which no prohibition effect against imitators develops, and obtain an additional, fully resilient property right at short notice. In practice, it is therefore advisable to make use of the bifurcation if an infringing product appears on the market, which can then even be attacked with customised protective claims of a utility model specifically bifurcated for this purpose from the underlying patent application.
Each utility model is a uniform and separate object of dispute, so that this entails an accumulation of risks for the potential infringer, because his defence will only be successful if he succeeds in fending off all attacks by the proprietor of the property right. If the owner of the property right succeeds in establishing an infringement of several parallel utility models and/or patents, each infringed right in principle triggers independent defences. Claims for damages from.
The institute of bifurcation also gives the owner of the property right the option of a second chance in addition to the patent. This applies in particular if he had to accept restrictions imposed by the patent examiner during the patent grant procedure which, in the opinion of the patent proprietor, are not applicable. In such cases, the patent proprietor is free to branch off a utility model with broader claims.
Author: Hans-Peter Gottfried (Patent Attorney, Dresden)
