Utility model applications

General information

After a patent, a utility model is the second option for obtaining protection for a technical invention. It corresponds to the patent in substance: Only the applicant is allowed to

• manufacture the invention in Austria,
• distribute or
• use the invention.

The difference is that every formally flawless application is registered without the invention having to be new and inventive, as long as it was published within the last six months before the application. This has the advantage that the procedure is shorter and inventors can quickly protect themselves against imitation. The disadvantage is that other persons can request that the utility model be declared null and void and that the registration be cancelled again.

Compared to a patent, a utility model has the following main differences:

• shorter term: ten years
• lower costs
• shorter procedure
• grace period of six months (registration possible despite publication, as long as this took place within the last six months before registration)
• protection for program logic and treatment methods for animals
• no deferred payment of fees
• no privileges under commercial/tax law

The maximum term of protection is ten years from the filing date. That term lapses if the annual fees are no longer paid, the property right is abandoned, or the utility model is declared invalid.

Enterprises affected

Natural persons and legal entities seeking to protect their invention as a utility model.

Requirements

In addition to novelty and inventiveness, a specific technical task must be solved using specific technical means. It must be clear to a specialist how the invention is to be used.

The technical character requirement results from the purpose of patent and utility model protection, namely that of promoting technical progress.

The following cannot be protected:

• discoveries, scientific theories and mathematical methods
• aesthetic creations
  • the external form of a product can be protected as a design
• schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers
• presentations of information
• inventions that are contrary to generally recognised laws of nature (the law of conservation of energy, the principle of conservation of linear momentum, etc.)

Deadlines

In contrast to a patent, however, a utility model is subject to what is known as a grace period. If you have made your invention public, for example through publication in a specialist journal, and the application is filed within six months of that publication taking place, it is then still possible to obtain a utility model registration in Austria.

Competent authority

Austrian Patent Office (→ ÖPA)^{German text}

Procedure

The utility model application form^{German text} can be used to file an application. This makes it easier to meet formal requirements. When filing an application, the description of the invention should be sufficiently detailed to allow a specialist to be able to implement the invention on the basis of this description alone. As the scope of protection is derived from the claims, it is vital that these are drafted professionally.

If the applicant has his place of residence or a branch office in Austria, the utility model may also be filed without representation. If the applicant wishes to have representation and has his place of residence or a branch office in Austria,he may also choose to have non-professional representation, for which written authorisation must be provided. However, if the applicant does not have his place of residence or a branch office in Austria,a professional representative, duly authorised to provide representation in Austria (patent lawyer or law firm or notary's office), must represent him. If his place of residence or a branch office is located in the EEA or Switzerland,an Austrian address for service is sufficient.

How to submit an application:

• Online (→ ÖPA)
• By delivering it to the Austrian Patent Office
• By mail

Applications cannot be filed by email!

After an application has been filed – The registration procedure

Once the application for a utility model has been filed and if the applicant has filed claims, the Austrian Patent Office examines the legality and carries out a prior art search. It does not, however, examine whether the invention already exists (novelty) or involves an inventive step – if the documents submitted are lawful, the utility model is registered in any case. The applicant receives a prior art search report approximately 6 months after the application has been filed.

The average time for registration is eleven months. A request can, however, be made for accelerated registration for an additional fee. In this case, the application is registered and the utility model specification published immediately if the outcome of the examination of legality is positive. The search report is only created and likewise published afterwards.

Utility model protection begins once registration in the utility model register has been approved by the examiner and the registration published in the Utility Model Bulletin. The utility model specification is sent to the publication server and a utility model certificate is issued.

Utility model infringement

If your utility model is infringed, you may bring an action for an injunction, removal, publication of a decision, reasonable compensation, damages, surrender of profits, accounting, and claims for information on origin and distribution channels.

Required documents

The following must be enclosed in duplicate with the utility model application form:

• Cover sheet – Form GM 3l^{German text}
  
• Description
• Summary
• Claims
• Figures or illustrations (if applicable)

Costs and fees

The minimum cost of a national utility model application with up to ten claims, including registration and publication, is 330 Euro.

The fees are not be paid at the time of filing the application. Applicants will receive a payment slip quoting a reference number and indicating the purpose of the payment within approximately two weeks of filing the application. If filing online, the fees that are due are calculated immediately and the application is assigned a reference number. In this case, applicants do not receive a separate payment slip.

In order to maintain the utility model, an annual fee must be paid each year (from the fourth year onwards), which is from 52 Euro to 470 Euro in the 10th year. There is the option of making a two-stage, lump-sum payment.

Further information

International protection

If the invention’s market extends beyond Austria, inventors may wish to obtain additional international protection for their invention. In many countries, an Austrian utility model application can form the basis for a national utility model application and/or patent application. An Austrian utility model application can form the basis for an international patent application (PCT) or a European patent application in the same way.

Related Links

• see.ip – the Austrian Patent Office's information portal for patent and utility model specifications (→ ÖPA)^{German text}
• Austrian Patent Office (→ ÖPA)^{German text}
• European Patent Office (→ EPO)^{German text}
• World Intellectual Property Organization (→ WIPO)
• DEPATISnet (→ database of the German Patent and Trademark office)^{German text}
• PRIO - The provisional patent application (→ ÖPA)^{German text}
• Patent Scheck (→ ÖPA)^{German text}

Legal bases

• Gebrauchsmustergesetz
• sections 10, 12, 15, 16, 27, 29, 32, 36 of the Patentamtsgebührengesetz

Link to form

• Utility model applications – Form GM 1^{German text}
  
• Utility model applications – Cover sheet – Form GM 3l^{German text}
  

Means of redress or appeal

Third parties have the option of contesting the registered utility model (by filing an application for a declaration of invalidity) if they believe that the utility model should not have been registered.