The German

Utility Model

Protection of Innovation:
fast, flexible, cost efficient
Content
3 Executive Summary

4 7 facts you need to know

5 The fundamental principles

6 The branching-off of utility models – a German pecularity

7 Timeline, Costs, Statistics

Meissner Bolte
Patentanwälte Rechtsanwälte
Partnerschaft mbB

Sitz der Gesellschaft: Bremen (Hollerallee 73, 28209 Bremen)

Registergericht: Amtsgericht Bremen PR 393 HB

Registered Seat: Bremen (Hollerallee 73, 28209 Bremen) Register

Court: Local Court Bremen PR 393 HB
Executive Summary
The German utility model is a sharp weapon, since it conveys the same product and system claims is possible, as is the protection of use
rights as a patent and can usually be obtained in less than 3 months. claims. Thus, in practice there are many ways to circumvent the
The quick registration of the German utility model relies on the fact exclusion of protection for method claims.
that there is no substantive examination with regard to novelty and
inventive step. Due to the lack of examination proceedings, only low As a result, the German utility model belongs in every property right
costs up to the registration of the utility model are incurred, and even portfolio, since it is an ideal instrument to protect innovations at low
after registration, only low fees are due for its maintenance. cost parallel to patent protection. The flexibility of the German utility
model is particularly useful for litigation and offers utility model
In comparison to patent protection, the German utility model only lags owners many interesting advantages.
behind in terms of the shorter term of protection of 10 years and the
exclusion of protection for method claims. However, the protection of

(19)
*DE202019101870U120200813*
(10)
DE 20 2019 101 870 U1 2020.08.13

(12)
Gebrauchsmusterschrift

(21) Aktenzeichen: 20 2019 101 870.4

(22) Anmeldetag: 02.04.2019
(51) Int Cl.: B62D 33/04 (2006.01)
(47) Eintragungstag: 07.07.2020
(45) Bekanntmachungstag im Patentblatt: 13.08.2020

(73) Name und Wohnsitz des Inhabers: (74) Name und Wohnsitz des Vertreters:
Kögel Trailer GmbH, 89349 Burtenbach, DE Meissner Bolte Patentanwälte Rechtsanwälte
Partnerschaft mbB, 80538 München, DE

Rechercheantrag gemäß § 7 GbmG ist gestellt.

Die folgenden Angaben sind den vom Anmelder eingereichten Unterlagen entnommen.

(54) Bezeichnung: Seitenplaneneinheit für einen Nutzfahrzeugaufbau und Nutzfahrzeugaufbau sowie

Nutzfahrzeug mit einer solchen Seitenplaneneinheit

(57) Hauptanspruch: Seitenplaneneinheit für einen Nutzfahr-

zeugaufbau mit einer Seitenplane (10), wobei an der Seiten-
plane (10) wenigstens eine Spannvorrichtung (20) zum ver-
tikalen Spannen der Seitenplane (10) vorgesehen ist, die ei-
nen Spanngurt (25), ein Gurtschloss (21) mit einer Spann-
mechanik und eine Halteplatte (26) aufweist, und wobei die
Halteplatte (26) einerseits fest mit dem Spanngurt (25) und
andererseits fest mit der Seitenplane (10) verbunden, insbe-
sondere verschraubt und/oder vernietet, ist.

3
7 facts you need to know

Tailored enforcement of rights Fast protection

1 5
Under German legal practice, it is possible to tailor the The grant proceedings before the GPTO are merely formal
claims of a utility model to infringing embodiments of the proceedings that give the applicant the opportunity to
competitor. This applies during every stage of the obtain an industrial property right in a particularly fast and
proceedings, which opens up a wide range of strategic inexpensive way. As far as the timeline is concerned, utility
possibilities. model registrations can now sometimes even be achieved
within a few days. Experience has shown that it takes a
maximum of 3-4 months until registration is achieved.
Patent and utility model protection can
2 be obtained cumulatively
Affordable protection
Patent and utility model protection are not mutually 6
exclusive. The applicant is therefore free to protect the With regard to costs, first and foremost, the low registration
same invention by a German (or European) patent, as well and maintenance fees should be mentioned. In addition, it
as by a German utility model. It is precisely this possibility should be emphasized that the German Utility Model Law,
that is lacking in other important jurisdictions (e.g. China), unlike German and European Patent Law, does not provide
which, like German law, have a two-track system of patent for claim fees. Finally, a lack of unity (Sec. 4 (1) sentence 2
and utility model protection. German Utility Model Act) is not objected to under official
practice (so that no cost-incurring divisional applications
are necessary).
The peculiarity of branching-off
3
The possibility of parallel protection is not only available Strong protection: novelty grace period
during the 12-month priority period, but also afterwards. 7 and limited prior art
This is due to the fact that the German Utility Model Act
(GebrMG) provides for the possibility of branching-off one Pursuant to § 3 (1) sentence 2 German Utility Model Act, only
(or several) utility models from a national, European or “written publications” are considered as prior art. Acts of
international patent application with effect for the prior use by third parties are only relevant if they have been
territory of Germany in § 5 German Utility Model Act. performed in Germany. In the case of own prior use acts, the
novelty grace period applies, so that all acts by the applicant
which were conducted 6 months before the priority date are
Double and triple protection possible disregarded for the question of protectability.
4
The possibility of branching-off utility models thus becomes
a weapon, since the law does not explicitly prohibit multiple
(even almost identical) or repeated branch-offs. In practice,
it is therefore possible to issue a large number of branch-
offs in parallel or successively, thus multiplying the number
of rights to be respected by competitors.

4
The fundamental principles

The German utility model is often referred to as the „little brother“ of remains possible by means of a German utility model (and also by means
the German patent. This term ignores the fact that the German utility of a US patent, so that even in such a situation it is still possible to
model is a sharp weapon, which develops its advantages precisely secure important countries with technical property rights).
when it is employed as a flanking measure to patent protection.
Utility model protection is quickly available, since there are often only
According to § 1 (1) German Utility Model Act, inventions are protected a few days between application and registration. Provided that the
as utility models if they are novel, based on an inventive step and utility model filing meets the formal requirements of §§ 4, 4a German
industrially applicable. The wording of the requirements for protectability Utility Model Act, it is registered. An examination of the subject-matter
in utility model law is thus essentially the same as in German Patent of the application for novelty, inventive step and industrial applicability
Law (Sec. 1 (1) of the German Patent Act) and European Patent Law (Art. is not carried out according to the explicit stipulation of § 8 (1) sentence
52 (1) EPC). However, there are considerable differences in the details, 2 German Utility Model Act. However, it should not be inferred from
despite an almost identical choice of words. In particular, the exclusion the lack of substantive examination that the legal status of the utility
of protection for method inventions should be mentioned, but its model is weaker in comparison to the patent. At least, the figures of
practical significance is low, since it can be circumvented in a the GPTO and the Federal Patent Court do not support such a
permissible manner by means of use claims and functionally drafted conclusion.
product claims.
For enforcement purposes, it should be noted that the scope of
Apart from the different treatment of method claims, the 6-month protection of a utility model and a patent are determined according to
novelty grace period, which applicants can claim for their own prior identical standards. This applies both to national German patents and
publications, should be mentioned in particular. The novelty grace to European patents that have been validated in Germany. The legal
period is of particular interest if the invention has been inadvertently consequences of a patent and a utility model infringement are also
disclosed. While in this case German and European patent law must be identical. As a result, the German utility model thus offers a very
discarded (keyword: absolute novelty), the protection of the invention effective and sharp weapon.

German Patent und

Trademark Office, Munich
Image source: DPMA

5
The branching-off of utility
models – a German pecularity

Patent and utility model protection are not mutually exclusive. Parallel multiplication of rights shifts the risk further to the detriment of the
protection can be obtained not only during the 12-month priority period, potential infringer. From his point of view, he will only be successful if
but also afterwards. This is due to the fact that the German Utility he succeeds in fending off all attacks by the owner of the intellectual
Model Act provides for the possibility of branching-off one (or several) property right. In contrast, it is sufficient for the owner of the intellectual
utility models from a national, European or international patent property right to be successful with only one attack – be it from a
application effective for the territory of Germany in § 5 German Utility patent or a branched-off utility model.
Model Act.
The institution of the branch-off also gives the intellectual property
With the right to branch off, the legislator offers the applicant the right owner the option of a (tailor-made) second chance. This is
possibility to bridge the time-consuming examination proceedings of a especially true if the intellectual property right owner has had to accept
parallel patent application. This is relevant because a pending patent restrictions in the parallel patent application proceedings which were
application with effect for the territory of Germany does not entail any required by the patent examiner and which – as is often the case – are
prohibitive effect. In terms of time, the right to branch-off can only be not directly and unambiguously derivable from the cited prior art. The
exercised until the expiry of the tenth year after the filing date of the strategy described above is particularly suitable for parallel European
patent application. In practice, however, it is advisable to make use of patent applications, since the hurdles - especially the formal one
the right to branch-off a utility model when an infringing product regarding inadmissible extensions - are higher than for national patent
appears on the market, so that the infringing product can be attacked applications.
with tailored claims (within the scope of disclosure).

The possibility of branching-off thus becomes a weapon, since the law

does not explicitly prohibit multiple (even almost identical) or repeated
branch-offs. In practice, it is therefore possible to file a large number
of branch-offs in parallel or successively, thus multiplying the number
of intellectual property rights to be respected by competitors. The

PCT/EP/DE Patent

Utility model 1 Utility model 2 Utility model 3

6
Timeline, Costs, Statistics

Time until registration (according to experience)

German first filing: approximately Branching-off from patent application: approximately

2-4 weeks 4-10 weeks

Official Fees Comparison: Country of Origin of Applicants (2020)

Applications %-tage
Germany 8 897 72,2
Filing fee – electronic filing 30 €
China 1 052 8,5

Taiwan 403 3,3

Filing fee – paper filing 40 €
USA 347 2,8

Switzerland 200 1,6

Search Fee (not mandatory for registration) 250 €
Austria 194 1,6

Japan 179 1,5

1st maintenance fee after 3 years 210 €
Italy 147 1,2

Republic of Korea 131 1,1

2nd maintenance fee after 6 years 350 €
France 98 0,8

Other 675 5,5

3rd maintenance fee after 8 years 530 €
Total 11 668 100

(Applications at the DPMA and

PCT applications in the national phase)

7
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