This brings us to another, perhaps the biggest, difference: the duration of protection. The term of protection, often called life span, is a maximum of 20 years for a patent. For a utility model, the maximum duration of protection is only half as long, at 10 years. For short-lived products or innovations, a protection period of 10 years may be more than enough, but for a fundamental invention or new standard, a longer protection period makes sense.
An often overlooked difference is what can be protected at all. For utility models, in contrast to patents, processes are expressly excluded from protection. This may seem Spanish at first, but it may also seem unfair. In its decision “Feldmausbekämpfung” (BGH Ref.: X ZB 18/16), the Federal Court of Justice (BGH Az.: X ZB 18/16) has commented on this and writes the following in its guiding principle
“The exclusion of utility model protection for proceedings is in accordance with Art. 14 (1) and Art. 3 (1) of the Basic Law”.
Thus, it remains the case that processes are not accessible to utility model protection. In practice, it is possible to circumvent this restriction by cleverly formulating the claims (legal tip: claims) by reformulating them into a device claim. Otherwise, both the patent and the utility model can be used to protect devices, installations, chemical substances, foodstuffs and medicines.
The difference in costs could also be an important factor in the decision-making process. For example, the pure official costs for a utility model for the entire maximum term of protection (10 years) are less than 1,500 euros and for a patent with a maximum term (20 years) >10,000 euros. Of course, a patent or utility model can also be abandoned beforehand, so that not all official fees necessarily have to be paid.
Brief summary
| Topic | Patent | Utility model |
| Maximum protection period | 20 years | 10 years |
| Registration/granting period | 1 – 3 years (average for granting) | 1 week -2 month (registration) |
| Protectable invention | Devices and procedures | Devices, not procedures |
| Examination of the invention | Formal and technical | Formal |
| State of the art technology that is harmful to novelty | Written disclosure and use worldwide | Written publications worldwide, use only national |
| grace period to own disclosure | No | 6 months from first disclosure |
Practical tip
Do you want a patent, but shy away from the costs of the examination procedure? You can postpone the examination procedure for the grant of a patent for several years, for example by filing the request for examination at the latest seven years after the filing date.
You have decided in favour of a patent and find that your own disclosure as prior art conflicts with it? It may be that branching off a utility model from the patent can help you, so that you may still obtain a durable utility model.
If you have further questions about possible protective rights for your invention and would like to achieve the optimum protection for you, please contact me today.
Photo: Pixabay/Pixabay
18.11.2020