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Splitting off a utility model from a patent application

Split-off from a patent application – quick protection for your invention

You can split off a utility model from a patent application. This affords you quick protection for your invention even if you have not yet applied for the examination of the patent application, the examination of the patent application has not yet been completed or opposition proceedings against your patent are pending. Another advantage of a split-off is that your utility model is granted the date of filing of the original patent application. A split-off is an independent utility model application.

A patent grant procedure may take quite a long time, whereas a utility model is, in most cases, registered within two to three months – often as quickly as within a few weeks. As long as the patent has not been granted, you cannot claim injunctive relief or compensation under that patent. A split-off utility model provides supplementary protection during the period between the filing of the patent application and the grant of the patent: Upon registration of the split-off utility model, your invention enjoys full protection, irrespective of the course of the patent procedure.

A split-off utility model is also appropriate if you have published your 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 opposing state of the art.

Which documents must be submitted?

• For the utility model application, application documents identical to the earlier patent application must be filed. In item 8 of the application form (Form G 6603), 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 (for example, a limitation may be reasonable if “processes” were claimed in the patent application for which utility model protection is not possible). Thus, the documents consist of “application documents” and “registration documents”.
• In addition, a copy of the prior application must be submitted. An uncertified copy of the originally filed patent application is sufficient. 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 in the splitting-off application. This data is generally transferred electronically.

What fees must be paid for a split-off?

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. It corresponds to the term of protection of the utility model in which the registration takes place, with the term of protection being calculated from the date of filing of the earlier patent application. Maintenance fees for previous terms of protection that have lapsed prior to the date of registration will not become due. The DPMA will not transmit a separate notification of any fees due.

Example

Filing of the utility model application with a splitting-off declaration on 25 April 2019; date of filing of the earlier patent application: 14 March 2013; registration of the utility model: 22 May 2019

Fee due	Due date	Payment period
Application fee	25 April 2019 = date of filing of the utility model application with a splitting-off declaration	25 July 2019 = three months from the date of filing (section 3 (1), section 6 (1) of the Patent Costs Act)
2nd maintenance fee	31 May 2019 = last day of the month in which the entry in the register was made	31 July 2019 = two months from the last day of the month of the registration in the Register (section 3 (2), section 7 (1) of the Patent Costs Act)

Why must the second maintenance fee be paid?

• Calculation of the term of protection of the utility model after the date of filing of the earlier patent application = 14 March 2013
• The maintenance fee becomes due for the term of protection in which the date of registration falls = 22 May 2019

Type of fee	Due date	Reasons
1st maintenance fee (4th to 6th year of protection)	Not due	First term of protection ends before the date of registration
2nd maintenance fee (7th and 8th year of protection)	Due on 31 May 2019	Date of registration (22 May 2019) falls in the second term of protection; Due date of the fee on the last day of the month in which the registration took place
3rd maintenance fee (9th and 10th year of protection)	Not yet due	Fee for the third term of protection does not fall due until the end of the second term of protection, namely on 31 March 2021
Information on the amount of the fees is available at Fees Utility Models.

Picture: iStock/baona

Last updated: 5 March 2021