Branching off a utility model

The grant procedure of a patent application may take several years. During this phase, an applicant may be able to assert disclosure claims against a potential infringer.

However, a claim for injunctive relief is only possible after grant. However, the applicant can branch off a German utility model from a patent application (national, European or PCT) and enjoy the priority of the patent application. The utility model is usually registered within a short period of time (see Basics). With claims adapted to a specific infringing embodiment, the utility model proprietor can then quickly take action against an infringer.

The applicant must file a written branch off declaration together with the utility model application. This declaration is only possible until the expiration of ten years after the filing date of the underlying patent application. If the patent application is not pending anymore, for example due to withdrawal, rejection or grant, the period ends earlier. In this case, the deadline is the expiration of two months after the end of the month in which the patent application or opposition proceedings are concluded.

Only the applicant of the underlying patent application may be the applicant of the branched-off utility model. Furthermore, the utility model must cover the same subject-matter.