Germany's unique utility model separation procedure

Unlike China, in Germany, you can have both an invention patent and a utility model for the same technology at the same time. Applicants can have both a German invention patent and a utility model with the same protection scope at the same time without giving up either one. The claims of invention patents and utility models can be exactly the same or different. For invention patents and utility models with the same subject matter, the German utility model application does not have to be submitted at the same time as the invention patent application, but can be submitted at any time when the German invention patent application is under review. This is Germany's unique " utility model separation procedure" .

The German Utility Model Law stipulates that if an applicant first files a valid patent application for the same invention patent in Germany, the applicant can file a statement at the same time as filing a utility model application to claim priority for the patent application. The priority claim for the patent application also applies to utility model applications. The protected object of German utility models can protect any device, system, compound, composition, etc. In addition, if the claim can reflect the use of the inherent material or objective properties of the material or device, a utility model can also be applied for.

According to the priority provided for above, the separation of utility model application can be exercised within 2 months from the end of the month when the patent application is completed or the possible opposition procedure is terminated, and can be exercised within 10 years from the filing date at the longest.

According to the above provisions, Germany allows one or more utility model applications to be separated from a German invention patent application, a European patent application or a PCT international application, as long as the basic application is within two months of the last day of the month in which the application is withdrawn, deemed withdrawn, rejected, the authorization is not effective, or the opposition procedure is concluded. The validity period can be exercised for a maximum of 10 years from the date of application of the patent application.

The utility model separation system allows applicants to separate a utility model application from a patent application without affecting the status of the patent application. After separating the German utility model application, the original invention patent application procedure will continue. The German utility model separation procedure provides applicants with the possibility in many situations, such as:

• If you miss the 31-month deadline for filing a PCT application in Germany, you may consider separating the German utility model application from the PCT application within two months from the end of the month in which the 31-month deadline falls.
• During the examination of invention patents or opposition procedures, you can consider separating out the German utility model application, quickly obtaining the patent and using it to request cessation of infringement and compensation for damages.

The German Patent Office does not conduct substantive examination of utility models. Generally, if the formal requirements are met, it only takes 2-3 months from filing a utility model application to obtaining authorization and obtaining a utility model certificate, and the authorization can be obtained within 1 week at the fastest.

In the German utility model, novelty is relative novelty, that is, the disclosure of documents is global, but the scope of public use is limited to Germany. Oral disclosure before the application date and public display or use outside Germany do not belong to the prior art of the utility model and will not destroy the novelty of the utility model. At the same time, for utility models, the prior conflicting application only considers the claims, that is, only the content recorded in the conflicting application claims will destroy the novelty of the later utility model application. Novelty, creativity, and practicality can be raised in the opposition procedure as reasons for requesting the cancellation of the registered utility model.

In addition, the German utility model has a six-month grace period before the loss of novelty, that is, within six months before the application date or priority date, any form of disclosure by the applicant or inventor himself will not destroy the novelty of the German utility model.

The inventiveness standard for German utility models is the same as that for invention patents, but German invention patents and utility models have different definitions of the scope of "prior art". Only for the same scope of prior art, the inventiveness evaluation standards are the same.

The annual fee for German utility models must be paid starting from the fourth year from the date of application, and in three installments, in the 4th to 6th year, the 7th to 8th year, and the 9th to 10th year.

According to the relevant provisions of the German Patent Law, the request for invalidation of utility models in Germany is heard by the court, which not only decides on the patentability issue, but also the winning party can obtain compensation. In other words, if the patent right is invalidated by someone else, the patent owner needs to pay the expenses incurred by the other party in filing the invalidation of the patent, including attorney fees. In this way, the patent owner must carefully consider the scope of patent protection obtained, otherwise it is not good enough. Therefore, in Germany, even if it is a utility model, the patent owner may pay a high price for its inappropriate patent protection scope.