October 07, 2019
The advantages of the Utility Model in Germany
As is well known, in general, a company's technical solutions can be protected with both industrial invention patent applications and utility model patent applications.
Both patents must meet the requirements of novelty and inventive step, which allow the invention to differentiate itself from solutions already known in the prior art at the time the patent is filed.
As is well known, in Germany as in Italy, utility models have a shorter term than invention patents, 10 years instead of 20, and are granted without examination of the aforementioned substantive requirements.
German law offers significant advantages for utility models in Germany that are not permitted under Italian law.
A first advantage concerns the documents that can be used to assess novelty and inventive step.
Public disclosures resulting from the use of the invention or oral description of the invention that occurred before the filing date and outside of Germany are not enforceable against German utility models.
Furthermore, disclosures resulting from use in Germany or any disclosure whatsoever are not enforceable if they occurred in Germany and within the six months preceding the utility model filing date.
The advantage a German company has over an Italian company in accessing utility model protection is very clear. While a German company can exhibit or describe its invention abroad before proceeding with its protection in Germany, or even disclose it in Germany in the six months preceding filing, an Italian company must be careful to promote its invention everywhere before filing the utility model application in Italy, under penalty of nullity.
A second advantage of German utility model law over Italian law is that the former allows for the protection of a wider range of inventions, including inventions involving drugs or chemical discoveries, inventions involving electronic circuits, and certain process inventions that are excluded from protection under Italian law.
In Italy, chemical, pharmaceutical, or any industrial process inventions can only be protected as patents or with a patent right that must meet more restrictive validity requirements.
A third advantage of German utility model law over Italian law is the ability to derive one or more utility models from a corresponding patent application and enforce them against infringers without waiting for the outcome of the patent examination.
In Italy, however, it is possible to file divisional applications for an industrial invention patent, but not utility model applications, nor is there any express provision for converting a patent application into a utility model application.
The author finds it hard to understand the efforts made to standardize the laws of various countries on patents for inventions, when utility model rights are subject to substantial differences across countries, despite providing the same protection as patents for technical solutions and requiring the same drafting structure.
Luca Gallo
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