Need for speed? Exploring the relative importance of patents and utility models among German firms

The role of utility models in patent filing strategies: evidence from European countries

“…It is common practice among patent applicants to file the first patent application at the domestic 9 patent office and then continue to international protection routes, such as the EPO and the PCT (Dernis and Khan 2004;Frietsch et al 2013;Dechezleprêtre et al 2017). The patent application processes of national offices differ from each other (Webster et al, 2007;de Saint-Georges and van Pottelsberghe 2011;Webster et al 2014;Dechezleprêtre et al 2017) and some patent offices provide a menu of different types of patents for applicants (Heikkilä and Verba 2017;Heikkilä 2017;Heikkilä and Lorenz 2018). Thus, several strategic choices related to priority filings are available that, among other things, affect the timing of patent protection and the timing of invention disclosure (Johnson and Popp 2003).…”

“…The communicated raison d'être for several European UM systems is that they provide fast, simple and cheap protection, and that they are especially designed for small and mediumsized enterprises and individual inventors (see European Commission 1995;Suthersanen 2006;Prud'homme 2014;Radauer et al 2015;Heikkilä 2017;Heikkilä and Lorenz 2018). However, systematic use of UMs as part of international patent filing strategies would signal that they may also play a strategic role for other users of the patent system.…”

“…UM systems differ across countries and have evolved over time (European Commission 1995;Janis 1999;Suthersanen 2006;Prud'homme 2014;Radauer et al 2015;Heikkilä 2017;Heikkilä and Lorenz 2018) but common to all of them is that they are considered to be an especially suitable method of protection for incremental technical inventions (Johnson 2002;Beneito 2006;Kim et al 2012;Hamdan-Livramento and Raffo 2016). Hence, we expect that a larger share of technical inventions with a national UM priority filing and a subsequent EPO application are incremental inventions than of technical inventions with a national patent priority filing and a subsequent EPO application.…”

“…Figure A.2 in the online appendix illustrates the concepts of filing lag, grant lag and timespan. UMs are quicker to obtain than patents and are, therefore, an especially attractive form of IP protection for applicants in need of fast protection (Cao 2015;Radauer et al 2015;Cao et al 2016;Heikkilä and Lorenz 2018). Cao (2015) and Cao et al (2016) analyzed filing lags between Chinese patent and UM priorities and subsequent U.S. filings ("SIPO-USPTO dyads" 20 ) and found evidence that applicants who favor fast protection in the U.S. choose Chinese UM priority instead of Chinese patent priority.…”

“…It is particularly important to study these questions in the European context since efficient harmonization of intellectual property rights systems within the European Single Market requires that we understand the functioning and interaction of current patent and UM institutions. Despite some commonalities, UM systems in European countries are heterogeneous (European Commission 1995;Janis 1999;Suthersanen 2006;Prud'homme 2014;Radauer et al 2015;Heikkilä 2017;Heikkilä and Lorenz 2018). In March 2000, the European Commission suspended the proposal of a "community utility model" (European Commission 1995) -that is, a UM protection system for the entire European Union (EU), due to difficulty in reaching agreement on its form and implementation and also because EU member states wanted to focus on developing the Community patent (European Commission 2002).…”