UTILITY MODELS in Denmark
In Denmark it is possible to file a Utility Model and the object of a Utility Model is referred to as a “creation” corresponding to an “invention” of a patent application.
The creation of a Utility Model must be new (global novelty), differ distinctly from the prior art and be industrially applicable. Basically, a Utility Model must fulfill the same conditions as an invention of a patent application, although an invention must “differ essentially” from the prior art which is considered to be a more significant difference. However, it must be possible to argue that some advantage is obtained by the creation of the Utility Model.
The Utility Model provides an exclusive right for up to 10 years, if renewal fees are paid.
Utility models can be registered for products, apparatuses and applications, but cannot be registered for methods. The applicant may request an examination to establish whether the creation is new and differs distinctly from the prior art. If such an examination is not requested, the utility model will be registered without examination.
If the Utility Model is a first application, the applicant may choose to proceed with the utility model application internationally, either as an international application (PCT), European application (EP), or filing in another country with priority from the Danish Utility Model application. Such applications must be filed within 12 months of the date of filing the application.
Utility model applications based on previously filed patent applications
According to Art. 12 BML and Rule 13(1)(i)-(iii) BEK, it is possible to file a Danish Utility model application based on (i) a Danish patent application, (ii) an International patent application proceeded in Denmark, or (iii) a European Patent application designating Denmark. A Utility model application based on a previous patent application should be filed while the previous patent application is pending and within 10 years of the filing date of the patent application.
Filing a Danish Utility model application based on a previously filed patent application may be desirable if the applicant wishes to instigate court actions against an infringer in Denmark as the Utility model may be used as basis for court actions, and as the issuing of a valid Danish Utility model is very fast compared e.g. to the issuing of a European patent. Also, due to the low cost of a Danish Utility model, it may be relevant to file several Utility model applications directed to different aspects of the invention of an original patent application.
If examination is not requested upon filing, the utility model application may be registered within 2-3 months. If the utility model application is examined for novelty and inventive step, the applicant will receive the first evaluation within 3 to 4 months from the date of request.
Request for examination
Any party may request examination of your Utility Model throughout the life time of the Utility Model.
This means that although the applicant e.g. decided to have the Utility Model application examined upon filing, a third party may file a request for examination after the application is registered and e.g. introduce new documents in the procedure.
If a third-party requests examination, the third party pays the examination fee. The applicant will be informed by the Danish Patent Office that a request for examination has been filed, and the applicant may then file comments to the arguments of the request. There is no official fee involved at the applicant’s end, our fees relating to such a response normally amounts to between €1200 and €3500.
Examination or not?
Whether a Utility Model is examined or not, is of importance if you decide to instigate court actions in Denmark based on the Utility Model. If you wish to enforce a Utility Model, it must be examined. However, should you need to have the Utility Model examined after registration, you may file a request for examination and pay the examination fee.
Please keep in mind that even though your invention has been searched and examined in another country, examination of a Danish Utility Model will include a search in Danish, Swedish and Norwegian documents and this might add new documents to the search result.
Also, if you decide to amend the claims as a consequence of an examination procedure, the possibilities for formulating amended claims are less restricted if the claims are amended before registration i.e. in connection with filing of the Utility model application. After registration you may not extend the scope of the claims.
The basic fee for filing a utility model application is DKK 2000 and the optional fee for examination is 4000 DKK. The price list of the Danish Patent and Trademark Office includes information about other fees related to utility models. Please contact us if you wish to know our fees for filing a Utility Model with or without examination.
The utility model registration is effective until 3 years have elapsed from the date of filing, after this date renewal fees must be paid respectively 3 and 6 years after filing. If an application is filed on 10th January 2018, a first renewal fee of 2000 DKK (approximately 270 Euro) is to be paid when 3 years have elapsed, i.e. the due date is 31-1-2021, and a second renewal fee of 4000 DKK (approximately 540 Euro) is to be paid after 6 years, i.e. the due date is 31-1-2024. The renewal fee falls due on the last day of the month in which the fee period begins. Renewal fees may not be paid earlier than 3 months before the due date.
There are no official fees relating to registration and publication.
Price list from the DKPTO: https://www.dkpto.dk/media/1045/prisliste-rettigheder.pdf
The complete specification and claims must be translated into Danish before registration.
The application may be filed in another language, and then the applicant will have approximately 1 month to produce and file a Danish translation of the full text of the Utility Model.
It is possible to request to have an examination procedure conducted in English. The applicant may therefore choose to file a foreign language text first and then e.g. file an English translation of the text and request examination in English. In this way, filing of the translation into Danish may be postponed until the application has been accepted.
/15 February 2019 IW