After an interim high in the first pandemic year of 2020, which was due in particular to a huge increase in the technology field of "Other consumer goods" (community masks, respirator masks, etc.), the utility model applications declined in 2021. The development in the individual technology fields was mixed: While the number of applications for "Other consumer goods" almost dropped by half compared to the previous year, there was a remarkable increase, for example, in the field of telecommunications as well as in the technology field of "Materials, metallurgy".
The Utility Model Unit still worked hardly unaffected by coronavirus pandemic. As utility model procedures – like patent procedures – have been processed fully electronically since 2011 and due to the fact that more than three quarters of the staff of the Utility Model Unit had teleworking posts even before the pandemic, work was not interrupted at all in spite of the special conditions. As the majority of staff worked mainly from home, the few colleagues who were working exclusively in the office building were able to rely on secure and flexible working conditions, especially with regard to the applicable social distancing and hygiene requirements.
After 12,313 applications in the previous year, a total of 10,577 new applications were received by the office in 2021; this corresponds to a decrease of 14.1%. The German Patent and Trade Mark Office (DPMA) received 64.9% of the national applications electronically. The Utility Model Unit entered 9,972 utility models into the register; this means that 88.0% (previous year: 87.8%) of the concluded registration procedures in 2021 were successful for the applicants. 1,365 applications did not result in a registration because of withdrawals of applications or refusals or for other reasons.
In 2021, the term of protection was renewed for a total of 18,138 utility models (2020: 18,172) after payment of the maintenance fee. The number of utility models which lapsed, for example due to the expiry of the maximum term of protection or because no request for renewal had been filed, dropped from 12,805 in the previous year to 12,126.
At the end of 2021, 72,728 valid utility models were registered at the DPMA.
Applications filed at the DPMA in 2021
National utility model applications and PCT applications that have entered the national phase
(1 According to WIPO IPC concordance table, available here.)
In 2021, too, foreign applicants still had a strong interest in German utility models, because the share of applications from abroad increased markedly, against the overall trend, both in percentage and absolute terms: from 27.8% (3,419 applications) in the previous year to 33.6% (3,559 applications). The PCT applications in the national phase remained at the high level of the previous year; with 647, the number of these applications was only very slightly lower than in 2020 (651). 7,018 utility model applications (66.4%; 2020: 72.2%) came from Germany. The majority of foreign applications came from non-European countries (2,414; 2020: 2,261), whereas the number of applications from other countries in Europe remained at the level of the previous year: 1,145 (2020: 1,158).
Applicants from the member states of the European Union (without Germany) accounted for 786 applications (previous year: 828).
The People’s Republic of China further strengthened its leading position with 1,189 applications (2020: 1,052) and a proportion of 11.2% of all applications, followed by the US and Taiwan with almost equal shares of 3.4% and 3.3%, respectively. Applicants from Switzerland filed 221 applications (2.1%) and those from Austria filed 197 applications (1.9%).
The development of applications from India is remarkable. More and more Indian applicants have been discovering the advantages of the German utility model system: After single-digit numbers of applications from India in previous years, 77 (0.7% of all applications) were received in 2021, and there are signs that the trend could continue in 2022.
| countries of origin | Applications | Percentage |
|---|---|---|
| Germany | 7,018 | 66.4 |
| China | 1,189 | 11.2 |
| USA | 355 | 3.4 |
| Taiwan | 352 | 3.3 |
| Switzerland | 221 | 2.1 |
| Austria | 197 | 1.9 |
| Republic of Korea | 150 | 1.4 |
| France | 133 | 1.3 |
| Japan | 130 | 1.2 |
| Italy | 124 | 1.2 |
| Others | 708 | 6.7 |
| Total | 10,577 | 100 |
With 1,697 applications, North Rhine-Westphalia is still the undisputed leader in the Länder ranking (24.2% of all domestic applications), followed by Bavaria and Baden-Württemberg with 1,534 applications (21.9%) and 1,291 applications (18.4%), respectively. However, seen in relation to the size of the population of each German Land, Baden-Württemberg and Bavaria jointly lead the ranking with 12 applications each per 100,000 inhabitants, followed by North Rhine-Westphalia with nine applications.
If the cursor is moved over the chart, it shows the utility model applications in 2021 and the applications per 100,000 inhabitants as well as the change in percent per German Länder (residence or principal place of business of the applicant).
In 2021, compared to the previous year, the absolute number of split-offs from patent applications fell only very slightly by 9 to 1,205; at the same time, the percentage of split-off utility model applications in relation to the total number of applications increased from 9.9% of all applications in the previous year to 11.4% of the applications in 2021. This means that, many patent applicants still use the application for a low-cost and quickly effective utility model as an accompanying measure to effectively take action against the copying of their innovation as long as the patent sought after has not yet been granted.
Detailed information on the procedure for splitting-off a utility model is available here.
Utility models are registered after an essentially formal examination, that means there is no examination of the invention as to novelty, inventive step and industrial application. This is an essential difference from patents. The applicant can minimise the resulting risk that the IP right may be cancelled later by having a prior art search conducted at an early stage to determine whether anything comparable to the invention was already known at the filing date of the utility model application. For a fee of 250 euros, the patent examiners of the DPMA conduct such a prior art search. In a search report, they list the publications identified that are relevant for assessing the protectability of the utility model. On the basis of the search results, it is easier to assess the prospects of enforcement or defence of the IP right. In the light of the aforesaid, the search is an important part of the system of utility model protection.
Last year, 1,484 effective search requests were received by the DPMA (previous year: 1,817) and 1,742 searches were concluded (previous year: 1,984). The DPMA thus managed to further reduce the number of pending search procedures in utility model matters.
Cancellation proceedings are an efficient instrument for subsequently clarifying the protectability of an initially unexamined utility model. After a decrease in recent years, the number of requests for cancellation received in 2021 amounted to 109 and thus increased markedly compared to the previous year.
A utility model can be cancelled upon request only. Anyone can file a cancellation request; the looming risk of an infringement dispute or an individual’s economic interest is not necessary. The request is subject to a fee of 300 euros upon filing. The request for cancellation must contain a sufficient statement of reasons. In particular, any conflicting prior art should be cited in the cancellation request.
While the Utility Model Unit is responsible for the registration of a utility model, the Utility Model Division is in charge of handling the cancellation proceedings and deciding on the cancellation request. The panel of the Utility Model Division consists of three members. A lawyer acts as the chair and two patent examiners responsible for the technical field are reporting and associate judges. Normally, oral proceedings are held. The pandemic affected the year under review as it was only possible to a limited extent to hold oral proceedings.
The most frequent reason for cancellation is that the subject matter of a utility model cannot be protected, that means the subject matter is not new compared to the state of the art or does not involve an inventive step. The examination can also check whether there is any inadmissible extension of the subject matter of the utility model, usurpation or whether the subject matter of the utility model has already been protected on the basis of an earlier patent or utility model application.
In the year under review, a total of 107 cancellation proceedings were concluded.
Briefly explained: A split-off utility model Valuable instrument for experienced IP strategists
Have you filed a patent application and do you need quick protection? If yes, you can split off a utility model from the application. Please find below some important advice on how to do so.
While a patent grant procedure can take some time, a utility model is usually registered within a few weeks of filing the application. As long as a patent has not been granted, a split-off utility model provides accompanying protection. Upon registration of the split-off utility model, your invention enjoys full protection, provided it is new, involves an inventive step and is susceptible of industrial application — irrespective of the course of the patent procedure.
A split-off utility model is also appropriate if you or your legal predecessor have published the invention prior to filing the patent application. In this case, patent protection is no longer possible because your invention is no longer considered to be new. However, you can file a utility model application within six months of the publication of the invention. In this case, the period of grace applies: Within this period, your published invention is not part of the prejudicial state of the art.
A split-off utility model is an independent utility model application in respect of which the applicant requests that the filing date of an earlier patent application effective in Germany (national patent application in Germany, European patent application, PCT application designating Germany) be granted. This requires that the applicant of the utility model and the applicant of the patent be identical and that an identical invention be applied for. The applicant must submit the splitting-off declaration together with the utility model application.
A utility model application with a splitting-off declaration must be filed within two months of the end of the month in which the patent application is concluded or opposition proceedings, if any, are completed; however, the split-off is possible not later than ten years after the date of filing of the earlier patent application.
For the utility model application, application documents identical to those of the earlier patent application must be filed. In the application form, please tick the box indicating that you split off a utility model from an earlier patent application. Please also state the file number and the date of filing of this patent application. In addition, you can also file limiting documents on which the registration is to be based. Furthermore, a copy of the prior application (including a German translation, if necessary) must be submitted. From May 2022, the copy of the prior application will no longer be required if you have filed the prior application with the German Patent and Trade Mark Office (DPMA).
For a utility model application with a splitting-off declaration, the usual application fee for a utility model has to be paid. The fee is due on the date of filing of the application. The payment period is three months. Upon registration of the utility model, a maintenance fee may also be due.
Further information on split-off utility models and on the related fees is available on our website.