Q&A with Herbert Kunz: What You Need to Know about Patents in Europe

Herbert Kunz, a trained European and German patent attorney with 20 years' experience, was interviewed by Metropolitan Corporate Counsel in the article “What You Need to Know about Patents in Europe.” In the interview, Mr. Kunz discusses why Germany is so important for technology patents in Europe, what are the German utility models and when should a company consider using one, are there advantages to filing for a European design patent and how will Brexit impact the EU’s plan to create a Unitary Patent (UP) and Unified Patent Court (UPC). He also shares a lesson he's never forgotten when he took a class at Cambridge from Stephen Hawking. Click here to read the full article.

MCC: Why is Germany so important for companies who seek to patent their technology in Europe?

Kunz: Germany is Europe's high-technology center and home to the European Patent Office (EPO). The EPO was established by the European Patent Convention in 1973, and many people don't realize that the EPO is not run by the European Union (EU). A patent owner who obtains a patent from the EPO receives patent protection in all 31 contracting states that are part of the convention. The EPO has been heavily influenced by German patent prosecution practice, so German patent practitioners have substantial insight into how to obtain EPO patents. Germany is a great venue for companies that need to enforce their patents through litigation because of its bifurcated system, which separates the trials for infringement and validity. Enforcing patents in Germany is also less expensive than in many other countries. German courts allow for limited discovery, typically resolve within a year and offer good options for injunctive relief. And because technically skilled judges rule on patent validity, parties typically don't have to take much time to teach their technology to the court.

MCC: What are German utility models, and when should a company consider using one?

Kunz: A utility model is an IP right created under German law and registered through the German Patent and Trademark Office. A utility model functions almost like a patent and conveys many of the same rights - i.e., cease and desist claims, damage claims, claims to render account and even destruction claims. But unlike a traditional patent, the claims of a utility model are not examined by the Patent Office before the rights are granted. This expedited process allows an applicant to obtain enforceable rights - including the right to injunctive relief - with a fraction of the time and expense required to prosecute a patent application. Utility models are registered through the German Patent and Trademark Office (DPMA). These applications can be filed by themselves, or branched off from pending German, European or Patent Cooperation Treaty patent applications. As long the applications meet the DMPA's formal requirements, they will be registered as utility models within two to three months. This registration process is one of the principal advantages of utility models over patents. Like their U.S. counterparts, German and European patent applications may remain pending for years before enforceable rights are granted.

Utility models can be registered in a fraction of that time because they are not examined for novelty and inventiveness. The utility model will be registered as long as the filing is in the proper form, granting the owner presumptive authority to enforce the claims as originally filed.

There are many advantages to filing a German utility model. Firstly, the ability to branch off from a pending patent application gives companies an effective way to measure and monitor the market and/or the competitors' products, i.e., the claim language of the utility model to be branched off can be drafted so as to cover the competitor's products. Secondly, if a product has an expected short lifetime, it is advantageous to have an enforceable right within the two to three months, which is much shorter than the regular examination period of a patent. Utility models are also much cheaper to obtain than traditional patents. The application fee for a utility model is 30 euros, and the maintenance fees for the whole lifetime of the right are below 1,000 euros.