Protecting Inventions in Times of Budgetary Constraints

Despite having recently been overtaken by China as the world’s third biggest economy, Germany still boasts the biggest European market (see our handy “EPC States At-a-Glance” guide.) Protection in Germany alone may sometimes be sufficient to keep competing products out of Europe altogether, or to make their exploitation across Europe extremely difficult.

Germany provides ways to obtain protection at reduced or defered costs.

In times of budgetary constraint, filing for protection in Germany only may be a canny option.

1. Pay less – utility models

Utility models are “petty patents” which provide the same protection as “ordinary” patents. The vast majority of utility models are filed by German companies, which suggests that they are not widely known abroad.

In contrast to a patent, the subject matter of a utility model application is not examined as to novelty and inventiveness before registration. Registration thus can take place shortly after filing, normally within three to six months. Consequently, utility model protection can be obtained more quickly and at lower costs than patent protection.

Another useful feature of utility models is the “splitting off” procedure. That is, a utility model application can be “split off” from a pending patent application with effect in Germany (i.e. a German national or European/PCT applications designating Germany). The utility model retains the priority date of the earlier patent application. Thus, if costly examination of a pending patent application is to be avoided, it is possible to drop the patent application in favour of a utility model.

There are additional benefits; for example, there is a “grace period” in respect of self-disclosures within six months before the priority date of the utility model – a feature which is not available to patents. On the downside, utility model protection is not available for method inventions, and the maximum term of protection is limited to 10 years.

2. Pay later – deferring examination of patent applications

Requesting examination of German national patent applications can be deferred up to seven years from the filing date. Furthermore, even if examination has already been requested (and perhaps an examination report issued), it is still possible to ask the responsible Examiner to put aside the application for a substantial period, i.e. year or more. Thus the costs of examination proceedings – which are sometimes higher than the costs for drafting and filing the application – can be deferred until budgetary pressures have eased.

Enquiries to our Munich Office

If you would like a cost estimate for translation of a patent specification and filing of a German utility model or German national patent application, please enquire with our Munich office by email to: munich@jenkins.eu