Splitting off a utility model from a patent application
A split-off utility model can be used to supplement an earlier patent application. It provides accompanying protection during the patent pendency period, because, during that period, it is not yet possible to seek injunctive relief or claim damages based on the patent application. Upon registration of the split-off utility model, your invention enjoys full protection irrespective of the outcome of the patent grant procedure.
A split-off utility model can also be useful if you have already published your invention before filing a patent application. This is because, in that case, patent protection is no longer available since your invention is no longer deemed to be new. However, you can apply for a utility model within six months from the publication. In this case, the novelty grace period applies – your publication is not considered to be part of the prejudicial state of the art within that period.
A utility model can be split off from a German patent application, a German patent, a European patent application and a PCT application with effect for Germany. The split-off application is an independent utility model application. Tick box 8 of the application form (Application form G 6003, in German) to indicate that the application is split off from a previous patent application. Furthermore, you must indicate the file number and the date of filing of the patent application. The effect of a splitting-off declaration is that your utility model application is granted the filing date of the earlier patent application.
Splitting off is possible within ten years after filing the earlier patent application but, at the latest, until the expiry of two months from the end of the month in which processing of the patent application is completed or any opposition proceedings are concluded.
Which documents must be submitted?
- For the utility model application, application documents identical to the patent application can be filed as well as additional limiting documents on which the registration is to be based (e.g. limitation because “processes” were designated in the patent application). Thus, the documents consist of “application documents” and “registration documents”.
- In addition, a copy of the earlier application must be submitted. This is an uncertified copy of the patent application as originally filed. If the documents are in a foreign language, a German translation must be attached.
- Priorities claimed for the earlier patent application (prior application) are maintained for the splitting-off application. These data are generally transferred electronically.
If no application documents are attached to the splitting-off request, it is necessary to provide at least a conclusive reference to technical disclosure documents, which the office may consult on the filing date.
What fees must be paid for the splitting-off option?
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 the application. The payment period is three months.
Upon registration of the utility model, that maintenance fee will be due that corresponds to the period of protection of the utility model in which the registration date falls, calculated from the claimed filing date of the earlier patent application. The DPMA will not transmit a separate notification that this fee is due. Previous maintenance fees are not due.
|Due date||Fee due||Payment period|
|25 April 2019 = Date of filing of the utility model application with splitting-off declaration from a patent application with the filing date = 14 March 2013||application fee||25 July 2019 = three months from the date of filing (Sec. 3(1) Patent Costs Act)|
|22 May 2019 = registration date||2nd maintenance fee||31 July 2019 = two months from the last day of the month in which registration in the Register has taken place (Sec. 3(2) Patent Costs Act)|
|Why the second maintenance fee?|
|Calculation of the term of protection of the utility model after the filing date of the earlier patent application = 14 March 2013
The maintenance fee is due for the term of protection in which the date of registration falls = 22 May 2019
|31 March 2016||1st maintenance fee
(4th to 6th year of protection)
|Period of protection is before the date of registration = not due|
|31 March 2019||2nd maintenance fee
(7th and 8th year of protection)
|31 March 2021||3rd maintenance fee
(9th and 10th year of protection)
|not yet due|
|Information on the amount of the fees is available at Fees Utility Models.|
iStock/baona, Picture: DPMA
Last updated: 20 October 2020