Germany

hLLp//wwwuncLadorg/en/docs/lLelpc20066_enpdf
1he Cerman reglme 1he Cerman uLlllLy Model Law proLecLs any lnvenLlons of Lechnlcal characLer
LhaL are new based on lnvenLlve sLep and are capable of lndusLrlal appllcaLlon A more analyLlcal
dlscusslon of Lhls form of uLlllLy model proLecLlon ls avallable below ln ChapLer 2 1he AusLrlan law ls
vlrLually Lhe same as Lhe Cerman law Lhough lL goes furLher ln allowlng uLlllLy model proLecLlon Lo
exLend Lo Lhe underlylng algorlLhm or process of a compuLer program Lhe only excluslons under
AusLrlan law seem Lo be mlcroorganlsms and slmllar bloLechnologlcal lnvenLlons and even chemlcal
processes are proLecLable by way of a uLlllLy model
Lmplrlcal flndlngs
WlLhln Lhe Luropean unlon one flnds a wlde dlsparlLy ln Lhe amounL of appllcaLlons made wlLhln
each counLry and Lhls ln Lurn correlaLes Lo Lhe naLure of uLlllLy model 1he sLaLlsLlcs ln 1able 3 show
uLlllLy model appllcaLlons over Lhe perlod 19871991 MosL counLrles wlLh uLlllLy model proLecLlon
have less Lhan 1000 appllcaLlons per annum Lhe only counLrles where Lhe appllcaLlons exceed Lhe
1000 mark are Cermany Spaln and lLaly Cne reason for Lhe dlsparlLy ls LhaL some sysLems requlre a
hlgh level of lnvenLlve sLep A second reason for Lhe dlfferences ln flllng flgures ls LhaL Lhls ls a
reflecLlon of dlfferenL economles wlLh dlfferenL manufacLurlng bases llnally Lhe lrench flgures do
noL Lake lnLo accounL Lhe l'unlLe de l'arL prlnclple under copyrlghL and deslgn laws whlch ls
generous ln offerlng proLecLlon Lo Lhreedlmenslonal Cermany
Lconomlc and lnnovaLlon CllmaLe ln Cermany
Cermany had no coherenL or unlfled lndusLrlal properLy pollcy unLll Lhe creaLlon of Lhe Cerman free
Lrade area ln Lhe laLe nlneLeenLh cenLury 1he flrsL paLenL law ln Lhe Cerman 8elch was lnLroduced
relaLlvely laLe ln 1877 agalnsL a background of anLlmonopoly and anLlpaLenL movemenLs arL of
Lhe reason for Lhls push for lndusLrlal properLy proLecLlon was Lhe change ln Lhe economlc landscape
of Cermany Cerman LerrlLorles especlally russlan ones were agrarlan aL Lhe beglnnlng of Lhe
nlneLeenLh cenLury 8eLween 1830 and 1870 however Cermany was lndusLrlallzlng rapldly and
lndusLrlal leaders such as Lhe Slemens flrm organlzed propaLenL lobbles 1oday ln Lerms of Lhe
number of paLenLs Cermany belongs Lo Lhe leadlng lnLernaLlonal group Cerman paLenL ouLpuL
lncreased ln recenL years afLer an lnlLlal posLreunlflcaLlon downLurn n addlLlon Lo hlgher
lnnovaLlon ouLpuL Lhls general growLh ln paLenL acLlvlLy may be aL leasL parLly due Lo companles'
lncreaslng sLraLeglc focus on legal proLecLlon for lnLellecLual properLy on globallsed markeLs A
ueuLsche 8ank 8eporL ldenLlfled Lhe followlng faceLs wlLhln Cermany's economlc and lndusLrlal
sLrucLure
O Cermany has hlgh labour cosLs coupled wlLh producLs Loo few oLher hlghly skllled personnel
O 1here ls a lack of lnnovaLlve drlve and a relucLance Lo lnvesL by SMLs lndeed Lhe
8u expendlLures by Sweden and llnland now far exceed Lhe Cerman level
O 1he esLabllshed companles are now more llkely Lo be Lhe ma[or conLrlbuLors
Lowards lnnovaLlon raLher Lhan SMLs and Lhey generaLe a far larger proporLlon of
Lhelr Lurnover wlLh lnnovaLlve producLs
O Leadlng Cerman lndusLrles are Lhe Lhe auLomoblle lndusLry mechanlcal englneerlng
medlcal preclslon and opLlcallnsLrumenLs measuremenL and conLrol englneerlng LexLlles
(Lechnlcal LexLlles) and parLs of Lhe chemlcal lndusLry
1he 8eporL also ldenLlfled LhaL on average across lndusLrles Cerman lnnovaLors flrsL Lake
advanLage of Lhelr Llme lead and secrecy wlLh paLenLlng comlng only Lhlrd AnoLher LacLlc
employed by Lhe lndusLry ls Lo lncorporaLe dellberaLely complex Lechnlcal producL deslgn
so as Lo dlscourage reverse englneerlng and Lo use Lrade marks 1he lmporLanL facLor ls LhaL Lhe
Cerman local markeL and lndusLry ls conslderably knowledgeable as Lo Lhe lnLellecLual properLy
reglme
PlsLorlcal lnfluences of deslgn law
1he Cerman uLlllLy model (CebrauchsmusLer") sysLem has been ln place slnce 1891 lL was
lnLroduced because lL was percelved LhaL paLenL law was unsulLable for all Lypes of lnvenLlons 1hls
derlved from Lhe sLrlngenL Cerman paLenLablllLy requlremenL LhaL lnvenLlons represenL a
Lechnlscher lorLschrlLL or Lechnlcal sLep forward ln Lhe arL" a sLandard LhaL was consldered Loo
elevaLed Lo be meL by mlnor lnvenLlons
1hus Lhe uLlllLy model sysLem was lnLroduced wlLh a lower sLandard of lnvenLlveness a non
examlnaLlon sysLem and a shorL perlod of proLecLlon ConcepLually Lhe Cerman sysLem was noL
a supplemenLal paLenL reglme raLher Lhe uLlllLy model proLecLlon was lnLroduced as a supplemenL
Lo 1876 leglslaLlon proLecLlng copyrlghLs and deslgns 1he Cerman uLlllLy model reglme was a
classlc uLlllLy model reglme le one LhaL ls Lled lnexLrlcably Lo deslgn proLecLlon and Lo prevenLlng
Lhlrd parLles from dupllcaLlng Lhe exLernal conflguraLlons of cerLaln handLools and oLher everyday
lmplemenLs whose creaLlve conLrlbuLlon fell chronlcally shorL of Lhe lnvenLlve helghL LhaL Lhe
maLure paLenL paradlgm requlred
1hus Lhe classlc uLlllLy model reglme as exempllfled by Cerman leglslaLlon was orlglnally concelved
as a form of deslgn proLecLlon1he uLlllLy model sysLem was and ls sLlll consldered Lo be an
lndlcaLor and encouragemenL of local lnnovaLlve acLlvlLy ln Lhe flelds of agrlculLural producLs and
domesLlc appllances 1hus hlsLorlcally Lhere has always been a Lhreedlmenslonal" requlremenL
for uLlllLy model laws as such a requlremenL relaLed Lo Lhe Lypes of lnnovaLlve acLlvlLy Lo be
encouraged Cne could almosL say LhaL Lhls was an early reglsLered deslgn sysLem for funcLlonal
deslgns WhaL Lhe followlng analysls reveals ls LhaL Lhe Cerman local lndusLry ls very knowledgeable
abouL Lhe sysLem and uLlllses lL Lo lLs fullesL exLenL
CurrenL subsLanLlve law
1he Cerman uLlllLy Model Law lasL amended on 21 !anuary 2003 proLecLs any lnvenLlons of
Lechnlcal characLer LhaL are new based on lnvenLlve sLep and are capable of lndusLrlal appllcaLlon
ln addlLlon Lo Lhe usual excluded sub[ecL maLLer under paLenL law (such as dlscoverles sclenLlflc
dlscoverles sclenLlflc Lheorles aesLheLlc creaLlons eLc) Lhe uLlllLy model law addlLlonally excludes
lnvenLlons relaLlng Lo processes and bloLechnologlcal lnvenLlons lurLhermore as opposed Lo
Cerman s opposed Lo Cerman paLenL law uLlllLy model law requlres lesser Lhresholds of proLecLlon
1he sub[ecL maLLer of a uLlllLy model ls consldered new lf lL does noL form parL of Lhe sLaLe of Lhe arL
1he sLaLe of Lhe arL comprlses any knowledge made avallable Lo Lhe publlc by means of a wrlLLen
descrlpLlon or by use wlLhln Lhe LerrlLory of Cermany before Lhe daLe relevanL for Lhe prlorlLy of Lhe
appllcaLlon (le local novelLy") nonobvlousness under uLlllLy model law ls easler Lo meeL Lhan
under paLenL law as Lhe uLlllLy model law refers Lo lnvenLlve sLep" whlle Lhe paLenL acL requlres
lnvenLlve acLlvlLy" whlch ls a hlgher level of lnvenLlveness
1he process of obLalnlng a uLlllLy model reglsLraLlon ls made even slmpler by Lhe facL LhaL Lhere ls no
pregranL examlnaLlon 1he maxlmum duraLlon of proLecLlon ls Len years
Lmplrlcal evldence
8ecause Lhe uLlllLy model reglsLraLlon ls lssued speedlly lnvenLors Lend Lo flle for paLenLs and uLlllLy
models slmulLaneously 1he resulL ls LhaL nearly one Cerman paLenL appllcaLlon ln every Lwo ls
accompanled by a uLlllLy model reglsLraLlon 1he Cerman uLlllLy models sysLem conLlnues Lo be a
popular one llgures on uLlllLy model appllcaLlons flled aL Lhe Cerman aLenL and 1rade Mark
Cfflce whlch lnclude C1 flllngs show LhaL appllcaLlons lncreased sLeadlly up Lo 1999 1he numbers
have fallen from Lhelr 1999 peak buL noL by a greaL deal and Lhe drop ls lnsufflclenL Lo lndlcaLe LhaL
use of Lhe sysLem ls decllnlng AdmlLLedly Lhe LoLal of uLlllLy models ln force has fallen from 113333
ln 2000 Lo 108173 ln 2003 buL glven LhaL Lhe number of 2002 and 2003 appllcaLlons are boLh
greaLer Lhan ln 2001 Lhls may be a shorLLerm Lrend 1he facL LhaL Lhe Cermany uLlllLy model sysLem
conLlnues Lo be popular wlLh lndusLry desplLe Cermany's belng ranked by Lhe Luropean Commlsslon
as slxLh mosL lnnovaLlve economy ln Lhe world suggesLs LhaL Lhe advanLages of uLlllLy models are noL
conflned Lo LhaL of faclllLaLlng an economy's advancemenL from developlng Lo developed counLry
sLaLus 8uL lL may noL be qulLe as slmple as LhaL glven LhaL Lhe poorer LasL Cermany was
lncorporaLed lnLo Lhe lederal 8epubllc of Cermany ln 1990 Moreover lf we compare Cermany wlLh
!apan we flnd Lhe Lwo counLrles desplLe Lhelr slmllar economlc clrcumsLances and lnnovaLlon
cllmaLe dlverged from Lhe mld 1990s wlLh Lhe Cerman flllng numbers remalnlng hlgh whlle
!apanese flllngs markedly decllned Powever lL does appear LhaL desplLe Lhe popularlLy of uLlllLy
models ln Cermany SMLs are sLlll relucLanL Lo lnvesL lnLo 8u lL ls argued LhaL Cermany's leadlng
poslLlon ln Lhe world markeL for producLs ls a resulL of lLs MlLLdsLand a neLwork of SMLs lncludlng
famlly flrms lnvesLmenL levels accordlng Lo Lhe reporL has been sLeadlly dropplng slnce 1998 so
worrylng ls Lhls Lrend LhaL Lhe Cerman CovernmenL has sLarLed a seed fund Lo asslsL 8ubased
sLarLups Arguably Lhe uLlllLy model sysLem ln Cermany may noL really be servlng one of lLs prlmary
purpose whlch ls Lo spur lnnovaLlon Lhrough SMLs

hLLp//wwwwhlpcom/germany/german_uLlllLy_modelhLml#vorLelle
Advantages and Disadvantages of a Utility Model compared to a
Patent
A German Utility Model provides the following advantages compared to a patent:
O ow official fees
O mmediate protection beginning from publication of the utility model
O Grace period of 6 months for own prior use
O hibition protection and ehibition priority for own presentation on particular trade fairs 6
months before the filing date
O !rior usage out of the Federal Republic of Germany does not constitute prior art.
O Alternative to an epensive divisional application
O %he subject matter of a pending international, uropean or German patent application can
be enforced by a utility model branch off.
O A German utility model can be the last possibility to get protection for an aspect of the
invention for which no divisional application can be filed with the !.
O ven after registration and publication of a German utility model it is possible under some
circumstances to narrow the claims to an embodiment actually of interest based on the
original disclosure of the utility model.
A utility model has the following disadvantages compared to a patent:
O %he maimum term of protection is only 10 years.
O t is only possible to protect products, apparatus and substances, but not methods.
O As long as no search has been done, there is a legal uncertainty with respect to the
validity and scope of protection of the utility model.
O f no postponing of publication is requested, a German utility model is published within few
weeks and can thus be prior art for the patentability of a further development of the
invention.

hLLp//blospecLrumlndlaclolcom/conLenL/columns/10906092asp

The utiIity modeI comes out of the shadow of patent

!atent or utiIity modeI? Or both?
So why would one look for an alternative to patents? When a person tries to obtain a patent, be it a
national patent (such as an ndian or a US patent) or a regional patent (such as a European Patent),
pushing a given patent application through to grant at the given patent office during prosecution can
be a long and sometimes painful process that can take up to several years from the date of initial
filing. But sometimes there is simply no time to wait, what is if the given applicant, e.g. a small
biotech or pharmaceutical company, needs protection on an urgent basis? What is if that company
knows about somebody selling their product or using their medical application of a compound in a
given state while its patent application is still only an "application (as opposed to a granted patent)
that is resting at the patent office for years to come?
n Europe, there are at least two options for such a scenario: provisional protection conferred by the
European Patent (EP) application under defined conditions, which will not be discussed here, and
branching off a utility model application from a pending patent application. The second option is
available if the company already has a patent application pending, which has effect for this particular
state. Such a patent application can be a national, a regional or an international patent application.
mportantly, a number of states in Europe allow you to have two P rights on the same invention, i.e.
the utility model and the corresponding patent that may have proceeded to grant after the utility model
was branched off (e.g. Austria, Germany, Czech Republic, Denmark, Portugal, Slovakia, Finland and
Estonia).

Advantages of the utiIity modeI: Germany as an exampIe
Going for a national utility model can be a good option, since it comprises the advantages of speed,
low costs, and less restrictive prior art provisions as compared to patents. The utility model is usually
registered very quickly (i.e. no long examination/prosecution phase) and is therefore quickly
enforceable in court against an infringer. n addition, the utility model is usually cheaper than a patent
and, in some cases it comprises a grace period for subject-matter disclosed by the applicant himself.
n Germany for example, a journal article disclosed in advance of the patent filing date will not affect
novelty of the utility model if the disclosure has not been made more than six months pre-filing
whereas novelty of the corresponding EP application will be affected. As there is no grace period in
Europe for patents, branching off a utility model from an existing patent application can be the only
option for an applicant if he has created prior art himself prior to filing.
The utility model is a separate, national P right and is therefore subject to the particular national law
on utility models in the respective state. That means that it is granted by national offices, such as the
German Patent- and Trademark Office (GPTO) in the case of the German utility model. That also
means that for going ahead with branching off a utility model application you will be dependent on a
national patent attorney for that respective state, e.g. Danish patent attorney in the case of Denmark,
since there are considerable national differences in the various national laws on utility models.
From a German perspective the German utility model offers a series of advantages. Although it is
sometimes referred to as the "small patent, since its duration is only 10 years from filing (as opposed
to 20 years for patents), it can be as powerful as a patent in deterring competitors and in taking
concrete action against infringers in court by filing an infringement suit that is based on the utility
model remember, while you do this, your corresponding patent application can still be shelved in the
patent office for years to come.
One thing that needs to be mentioned is the language issue since the utility model is a national P
right, most national laws require to file a translation into the respective official language of the
particular state. That means that e.g. for Germany, if the parent patent application is written in
English, you will be required to file a German translation within three months from the filing of the
utility model application. Although this is another cost factor that needs to be considered, most law
firms can provide such a translation in a cost effective manner.

hat can be protected by utiIity modeIs?
As mentioned briefly above, e.g. compounds, drugs, compositions, formulations, medical devices and
medical systems can be protected by a German utility model. However, methods and processes are
not protectable via a utility model in Germany. Note that there can be considerable differences in the
various national laws on utility models, e.g. Austrian law does allow the protection of methods and
processes via utility models. Another example is Portugal, which excludes pharmaceutical
compounds from protection via utility models, which is not a problem in Germany.
A special case is the medical use of a known compound. Quite often patents are granted not only for
compounds and formulations as such at least in Europe it is also possible to have a patent claim
that is aimed at the first or further, specific therapeutic, medical uses of said compound or
formulation. Up until recently, it was uncertain in Germany whether protection for a therapeutic
medical use would also be possible via the German utility model. This question has been clearly
answered by the German Federal Court of Justice (Bundesgerichtshof, BGH) in his landmark decision
"Arzneimittelgebrauchsmuster (roughly "utility model for the use of a drug, X ZB 7/03) of October 5,
2005, in which the court held that the therapeutic, medical use of a drug was an inherent, technical
feature of the drug as such, and therefore not to be excluded from protection via a German utility
model. Similarly, a number of national laws in other states in Europe also allow this.

Invention or no invention
Although an application for a utility model in Germany does not undergo substantial examination (only
with regard to formal issues, quick registration and speed as a major advantage) this does not mean
that any utility model will remain registered. This would be unfair and an obstacle to the public if the
subject-matter of the utility model would not be novel and therefore not a true invention. Utility models
can be cancelled on request by a third party in cancellation proceedings, where novelty and non-
obviousness indeed do play a role. Up until recently, only the hurdle of novelty had to be taken, while
inventiveness was not so much of an issue in Germany. This has changed recently by a further
landmark decision of the German Federal Court of Justice in which the court ruled that an invention
protected via a utility model in Germany does also have to comprise an inventive step (BGH,
"Demonstrationsschrank, X ZB 27/05).

UtiIity modeIs as part of a GIobaI I! strategy in biotech and pharma
Utility models may not be as well-known as patents however, they should be considered as part of a
global P strategy. A lot of countries all over the world do offer the option of the national utility model,
and some of them, including Germany, do allow double protection of the same invention via a granted
patent and a registered utility model. Speed, low costs and less restrictive prior art provisions can
provide substantial advantages over a patent application that may be shelved in the patent office for
years to come. Therefore, any biotech or pharmaceutical company should not only rely on patents -
but also on utility models as part of their global portfolio of P rights.

Peculiarities of German Utility Models
n discussions with foreign associates, we have repeatedly found that the special advantages of German utility models are
unknown. We have therefore compiled a list of areas in which German utility models differ from German patents:
1. Prior Art:

4 !rior public uses outside Germany do not constitute prior art with respect to German utility models.

4 ral disclosures do not constitute prior art with respect to German utility models.

4 lder, but post-published patent and utility model applications do not constitute prior art. However, a utili
model must not protect subject-matter which is already protected by an older patent or utility model.

4 %here is a si-month period of grace before the priority date for written disclosures or prior public use by
applicant or his predecessor in title.

2. Protectable Subject-Matter:

Under the new Utility Model Act applicable since July 1, 1990, everything which is protectable by a patent is also
protectable by a utility model with the eception of processes and methods. n particular, chemical compositions
and electronic circuits are now protectable by a utility model.

3. %e maximum duration of a utility model is ten years.

4. xamination:

German utility models are registered without eamination as to the merits. Registration usually takes place within
two to four months. t is possible to request a prior art search.

5. Priority of a pending patent application:

%he priority of a German patent application or a uropean or international (!% patent application designating
Germany - including a possible convention priority - can be used by a German utility model which is identical to th
patent application. Such a utility model can be filed at any time during the pendency of the patent application up
the end of the second complete calendar month after grant of the patent, rejection of the patent application or
conclusion of opposition proceedings - but in any event only within ten years after filing the patent application. Su
a German utility model branched off from a pending patent application can be very helpful, particularly in case of
infringement of a uropean patent application and especially when a positive uropean !atent ffice Action is
available. As you are no doubt aware, uropean grant proceedings are quite lengthy. As mentioned above, a
German utility model will usually be registered within a few months and confers on the owner the same right as a
granted patent. %herefore, if time is important, it is advisable to file such a branched-off utility model and to base
an infringement action on this rather than await grant of the uropean patent.

6. oexistence wit an identical uropean patent:

A German utility model can coeist with an identical uropean patent. t can also coeist with an identical German
national patent. n contrast. a German national patent cannot coeist with an identical uropean patent designat
Germany. t becomes ineffective in as much as its scope of protection overlaps with that of the uropean patent a
soon as the grant of the uropean patent is final.
. Designation of inventors and abstract:

A designation of inventors and an abstract do not have to be filed in utility model applications.
!lease contact us if you have any questions.

hLLp//bclpLforg/wpconLenL/uploads/2011/07/13lpLf8rackpdf

Boston ollege ntellectual !roperty & %echnology Forum http://www.bciptf.org
1
opyright 2009 Boston ollege ntellectual !roperty & %echnology Forum, Dr. Hans-!eter Brack
U%% MDS AND %HR M!ARSN W%H !A%N%S
AND M!A%NS FR %H US N%%UA !R!R%
AW SS%M
Dr. Hans-!eter Brack [a1]
ABS%RA%
uropean !atent ffice (! practice, guided by the uropean !atent onvention (! is in many aspects
very similar to urope's national patent practice, such as the German patent law. n this article, the US practitioner is
briefly reminded of some of the considerable differences between US !atent and %rademark ffice (US!% patent
prosecution practice and its uropean counterparts, primarily the !. %he utility model is highlighted and
discussed using the patent laws of Germany as a case study for comparison. Additionally, this paper eamines the
potential benefits of utility model protection in the US, as well as what changes would be required in order to
minimize any negative impact of the introduction of such a new intellectual property (! right to the eisting US
legal system.
N%RDU%N
US!% and ! patent prosecution practices differ in several respects. For eample, a patent application to the
! goes through a centralized application and prosecution phase, and, if granted by the !, this patent has the
same effect as a national patent granted by all contracting states. %herefore a uropean patent (! is subject not
only to the national law of the individual member states but also to the provisions of the !. During centralized
prosecution at the !, patent claims are generally amended more easily than in the US, and without significant
negative consequence. Finally, one of the more notable differences is that an ! application may be subject also to a
centralized inter-parties opposition process at the ! in which it may be granted in either its original or amended
form or revoked.
Another important difference is that the US!% has a "first to invent system whereas the ! is a "first to
file system. %hus, the earliest applicant may obtain an ! even if the invention was first invented or conceived of
by another party. Also, an inventor has the right to be named on an ! application, but--in contrast to the US--the
inventor on an ! application has the right to decline being named as an inventor on the patent application. n
addition, and most importantly, incorrect naming of the inventor will not jeopardize the validity of the !.
Also in contrast to US patent law, ! applications are required to have "absolute novelty. For the purposes of
the ! application, if the invention was known, described in a printed publication, or publicly used anywhere prior
to the priority date of the ! application, novelty of the invention is destroyed. %hus the concept of a grace period is
not known in urope, generally, with the eception of a si-month grace period in etremely rare cases related to
certain ehibitions or instances of evident abuse. Novelty of an ! application is destroyed also if the invention has
been described in another ! application with an earlier priority date--even if it was not published before the priority
date of the application under eamination. However, even where such "special prior art does carry an earlier
priority date, it cannot be used for evaluating non-obviousness (inventive step in the prosecution of an !
application.
%he hurdle to demonstrate inventive step is often higher in ! practice. ! eaminers have never been under
an obligation to demonstrate a prima facie case, for eample, and they are able to base their arguments on what is
generally known to one skilled in the art more than their US counterparts. Another key difference is that it is
epected that inventive step in ! practice will be argued on the basis of the "problem solution approach, which
consists of determining (1 the closest prior art, (2 the technical problem which the claimed invention addresses and
solves in light of the closest prior art (the objective technical problem, and (3 eamining whether the claimed Boston
ollege ntellectual !roperty & %echnology Forum http://www.bciptf.org
2
solution to the objective technical problem is obvious to the skilled person in view of the state of the art in general.
[i]
Furthermore, there is no requirement to specifically disclose a "best mode in an ! application; an enabling
mode is sufficient. Also, applicants for an ! are not under any requirement to disclose known prior art or evidence
relevant to the patentability of an application to the ! together with the application or later during its prosecution.
t is worth noting, finally, that uropean prosecution history estoppel has been a matter for national law rather
than one for the !. With fairly limited eceptions, prosecution history estoppel does not eist in the member
states of the !.
. U%% MDS
Utility models are a short-term registered right granted for inventions that often lack the same degree of
inventive step that patent law requires. Utility models are often referred to as "small patents or "petty patents and
are sometimes considered to be a type of "second-tier protection. n many systems this registered right is granted
without a substantive eamination, in contrast to most patent granting procedures, and it often has a shorter lifetime
but otherwise gives the same eclusive rights as a patent does. Accordingly, because they are granted without
substantive eamination, utility models are considered "weak. %he utility model is enforceable but is more likely to
be invalidated than a patent that has undergone substantive eamination. n other words, while a weak patent
application is likely to be made stronger by the substantive eamination, the utility model will be granted if it only
meets the formal requirements. However, the quality of the utility model application - and whether an
uninvalidatable right results - depends a great degree on the applicant. For eample, an applicant himself may
choose to do a very thorough prior art search and evaluation prior to filing the application, in which case the utility
model might be relatively strong.
At present, many countries have adopted some form of utility model protection. Various terms such as utility
innovations, utility certificates, innovation patents, utility solutions and short-term patents may be used in different
countries. Major industrial nations such as Germany, South Korea, and Japan; U member states such as Austria,
Belgium, zech Republic, Denmark, stonia, Finland, Greece, Hungary, reland, taly, the Netherlands, !oland,
!ortugal, Slovakia, and Spain; and critical emerging economies such as Brazil and hina offer some form of utility
model protection. n total, about seventy five countries currently provide utility model protection. nterestingly,
utility model protection is widely available in only non-nglish language countries. Janis reviewed this topic [ii]
several years ago, but, due to the general lack of utility model laws in major nglish-speaking economies such as the
United Kingdom, anada or the United States, much of the literature on this issue is not in nglish.
US patent practitioners may encounter utility models on a regular basis as part of their normal international
filing practice; such as in !atent ooperation %reaty (!% applications, for eample. %he !% nternational
Application encompasses the filing of applications for not only patents but also applications for the various other
means of protecting inventions-- including utility models. [iii] %he filing of the !% application constitutes a request
for every kind of protection that may be available from each designated ontracting State. %hus, !% applicants
always have the option of applying for utility model protection in ontracting States offering such protection. Any
further choice with respect to kind of protection sought can be made only at the time of national phase entry before
the respective designated ffices. %he option to file for utility model protection can be particularly interesting, as
will be discussed later, in cases where an enforceable right is rapidly sought or when the international search report
and/or written opinion of the international searching authority or the international preliminary eamining authority
indicates that the international application might fail to meet the higher novelty or inventive step requirements for
obtaining patent protection. n a similar manner, filing of the ! application is equivalent to a national application
for a patent or utility model. [iv] %he ! application may similarly be converted to a national utility model if it is
refused by the ! or deemed withdrawn, for eample, in the rare case where a ! application filed initially with a
national authority due to potential national security issues, is not forwarded to the ! in time. [v]
t is worth noting that the uropean ommission ( initially declared itself in favor of utility model Boston ollege
ntellectual !roperty & %echnology Forum http://www.bciptf.org
3
protection in 1995 by either harmonizing Member State protection, introducing protection in Member States lacking
such protection, creating a community utility model, or a combination of these. [vi] ater in 199 the presented
the proposal for a Directive, approimating the national provisions of Member States, for protecting utility models.
[vii] %his proposal was later suspended and finally withdrawn in 2005 though largely due to the majority of Member
States indicating a preference for giving priority instead to efforts to introduce a ommunity patent. n addition, the
ommission had instead published in 2001 a consultation document on the impact of the introduction of a
ommunity utility model. [viii] A later summary report of the responses [i] indicated that the majority of the
respondents opposed the introduction of a ommunity model due to concerns about introducing further legal
uncertainty to ! protection, dissatisfaction with the low inventiveness criteria of the proposed utility model, and
fear that the utility model would unnecessarily compete with the eisting patent systems without introducing any
real benefit to small and medium-sized enterprises (SMs. Nonetheless, proposals for a community utility model
have been made by lewellyn [] and Ravillard, [i] and studies have been carried out by Dinwoodie and co-authors
[ii] and Kern. [iii] %he interested reader is referred to those original works for more detailed information. n
conclusion, further uropean action at the ommunity level on either harmonizing Member State law or introducing
a ommunity utility model appears to be very unlikely for the foreseeable future.
Suthersanen has studied and reviewed the influence of utility models on innovation and economic development,
especially in the case of developing countries. [iv] Research into the influence of utility models on innovation and
development has revealed that utility models would likely promote local industrial growth by offering rapid and
inepensive intellectual property protection in certain specific circumstances. For eample, net importers of
intellectual property could benefit from the introduction of utility model protection to stimulate local incremental
innovations. n other cases, utility model protection could provide protection against massive copying and imitation,
especially if protection against such copying was not available through unfair competition laws. n addition, it was
proposed that economies dominated by industries characterized by more incremental innovation such as
transporting, domestic articles, basic electronics, and optics etc. could be stimulated by utility model laws; whereas,
industries more typically characterized by "breakthrough innovations such as biotechnology and pharmaceutical
were unlikely to need such forms of protection. Boppart has also found that the food industry would generally
benefit from utility model protection [v] due to its typically high failure rate of new product launches and relatively
short product cycle of even many successful product launches due to rapid changes in consumer trends and the
seasonality of certain products. %he point is that there are industries would benefit from cheaper short-term
protection; they do not need long-term (patent protection because their products typically have short lifetimes
relative to the twenty year patent term.
n the present manuscript various aspects of the German utility model or "Gebrauchsmuster system will be
net eamined and compared and contrasted with those of German patents. %he interested nglish-language reader
may obtain nglish language translations of the discussed German patent and utility model laws on-line from the
World ntellectual !roperty rganization (W! ollection of aws for lectronic Access (A database. [vi]
A. Subject Matter for the German Utility Model
%he allowable subject matter eligible for protection as a German Utility Model is defined in sections 1 and 2 of
the Utility Model Act (GebrMG. [vii] %hese two paragraphs set the absolute preconditions required for obtaining
protection. nventions must be new, involve an inventive step, and be capable of industrial application in order to
eligible for protection as a utility model. As in the case of patents, several types of inventions are not considered as
acceptable subject matter for a utility model. Such non-registrable inventions include:
- !rocesses for manufacture or use;
- Discoveries, scientific theories, and mathematical models;
- Aesthetic creations;
- Schemes, rules, and methods for performing mental acts, for playing games, or for doing business;
- !rograms for computers;
- !resentations of information;
- nventions covering matter that, if published or used, would contravene "public order or morality; and
- !lant or animal varieties.Boston ollege ntellectual !roperty & %echnology Forum http://www.bciptf.org
4
%herefore nearly the same subject matter can be protected by a German utility model as by a German patent as
described in sections 1 and 2 of the German !atent Act (!atG. [viii] %he most important eception is that
processes cannot be protected as utility models. n particular, case law has indicated that a new use for a known
substance is to be considered a process and therefore not protectable as a utility model, although Knig [i] has
offered a dissenting opinion on this matter. t should be noted, however, that means or substances described by a
product-by-process claim might nonetheless still be protected as utility models.
B. Novelty for the German Utility Model
%he invention of the utility model is considered to be novel according to GebrMG 3 if it does not form part of
the state of art comprising any knowledge available to the public in Germany through either written description, as
in a patent or publication, or use within the territory of the Federal Republic of Germany. n other words, oral
disclosure does not destroy novelty of Germany utility model nor does public use outside of Germany. n contrast,
! or German patent must have absolute novelty and oral disclosure or public use anywhere destroys novelty. n
addition, there is a grace period of si months prior to the priority date of the utility model for written description or
use if it is based on the concept of the applicant or his predecessor in title. n order to remove uncertainty regarding
the question of novelty of the utility model application, the applicant can elect to request a prior art search at the
time of application or at a later date. %his prior art search is in no way a requirement.
n contrast, the German patent law defines the state of the art quite differently and more broadly. [] For
patents, the state of the art includes all knowledge made available to the public (anywhere in the world by means of
a written or oral description, by use or in any other way, before the priority date of the patent. t should be noted that
there are considerable differences in how utility model law and patent law treat unpublished prior art. According to
!atG 3, the content of several types of patent applications, having an earlier priority date and which were
published only on or after the date of the German patent application in question, are also considered to be part of the
state of the art in the case of German patents. %hese prior art applications include German national patent
applications and international applications filed under the !% and for which the German !atent and %rademark
ffice (G!% (Deutschen !atent-und Markenamt is the designated ffice with respect to the application.
Additionally uropean applications designating Germany and for which the designation fee has been paid are also
part of the prior art unless the uropean application is based on an international application and does not fulfill the
requirements of ! 158(2.
n addition, the G!% takes in accordance with the GebrMG, a prior claim approach with utility models. n the
prior claim approach it is still possible in principle for a utility model claim to be novel and have an inventive step
over prior art that is simply disclosed in the description of an earlier patent or utility model. t is therefore often
possible to amend the claim of a utility model to get around an earlier claim. n contrast, the G!% tends to take a
prior contents approach when judging the novelty and inventive step of a patent claims. n the prior contents
approach, the entire contents of the earlier application are looked at in judging the novelty and inventive activity of a
patent application.
n summary, it can be concluded that the novelty requirements of a German patent application are much stricter
than those for a utility model application.
. nventive Step
%he inventive quality defined by the meaning of GebrMG 1(1 is an inventive step (erfinderischer schritt that
is more than just handicraft skills and, as such, is inventive over the prior art defined by the prior section on novelty.
ompared to a German patent, a utility model has a less rigorous requirement for the inventive character--the utility
model inventive step is satisfied by anything beyond handiwork and prior art. For patents, inventive activity is
required. nventive activity should not be obvious to one skilled in the art or be a simple etension of the state of the
art. [i] !atents require novelty and inventive activity (erfinderische taetigkeit, understood as being something not
obvious to one skilled in the art starting from the prior art and not a simple etension of prior art.Boston ollege ntellect
!roperty & %echnology Forum http://www.bciptf.org
5
Despite a lower threshold for determining inventive step in utility models as compared to patents, the fate of
utility models is less secure than patents. %his can be generally ascribed to the human factor in judging the inventive
character. %he human factor is particularly important during the cancellation proceedings for utility models and, in
the case of patents, appeals of decisions of the amining Sections or !atent Divisions before the hambers of
Appeals or proceedings for a declaration of nullity of patents before the Nullity hambers. Since there is always a
technical member on the latter hambers in patent matters, this member may be hesitant to indirectly attack his
colleague in the amining Section by attacking the inventiveness of the patent in question. n the case of the
cancellation proceedings for utility models, a new unbiased panel is convened. Because the inventive step in the
utility model claims have not actually been eamined by the G!% during the formal eamination and registration
process, they are much more likely to take a quite critical stand on the matter of inventive step.
D. amination and Registration of Utility Models
%he registration of the utility model typically takes about two to three months from the filing date. %he Utility
Model Section of the German !atent and %rademark ffice eamines utility model applications only with regards to
the formal requirements of the first section on allowable subject matter (absolute preconditions prior to registration.
%he relative preconditions--the requirements of novelty, inventive step, and industrial applicability--are eamined
only during litigation processes, for eample, in the event of nullity or infringement proceedings. %his means that a
utility model, which satisfies the subject matter requirements, will be registered even if it fails to meet one of these
relative preconditions. But while the utility model is granted in this scenario, it remains invalid and, thus, not
enforceable. No rights are granted; instead, only a fictitious title results. %his lack of legal certainty can be avoided
by prior art searches carried out either by the applicant or the applicant's representatives or, upon request, by the
German !atent and %rademark ffice. [ii]
%he G!% undertakes an eamination of a German patent application prior to grant with respect to the formal
requirements of !atG 34, 36-38 [iii] and considers whether the invention is or is not patentable due to its nature,
subject matter, or amenability to industrial application. %he applicant may comment or make amendments to the
application upon notification of any deficiencies in the application. n contrast to the utility model, a third party can
request that the patent be eamined for "informal requirements, [iv] although the third party does not become a
party to the proceedings. %he filing of a request for search reports by applicants is fairly rare. A more efficient
strategy for the applicant is to request an epedited eamination of the patent application. %he applicant can then
receive an actual opinion within twelve months. %his opinion can be useful not only in judging the strength of the
patent in question, but it can also help the applicant to decide whether to also file for further patent applications
under the !% or !. n the case of utility models, it is much more common to assert them on the basis of the
G!% search report, especially if no eaminer's report is available yet on a patent application filed on the same
invention.
n a similar manner, the applicant or a third party may request eamination of the patent application as to formal
requirements, as above, and whether the subject matter is patentable under the requirements of sections !atG 1-5.
%hese requirements include the content of the application and the payment of the fee, naming of the inventor(s, and
the prohibition of the addition of new material through amendments. %he requirements of !atG 1-5 include
allowable subject matter, novelty, inventive act, and industrial applicability. f the application is judged to be
defective with regards to formal requirements, the applicant will be requested to remedy them within a certain
period of time. f the application is judged to be defective under these sections, the applicant is notified of this
decision and its basis and also invited to comment upon them within a period of time. %he applicant may reply with
comments and/or may chose to amend the application at this time. A decision to grant a patent or reject an
application may be appealed by either party to the !atent ourt.
. !riority and Derivation of the German Utility Model
n the case of the utility model, the date of receipt determines the priority date of the application unless other
priority is claimed. According to GebrMG 6(1, domestic priority may be claimed based on an earlier patent or
utility model application filed with the G!% for the same invention, ecept in the case that the earlier application Boston
6
has already claimed a domestic or foreign priority. As in the case of a patent, this domestic priority may only be
claimed within twelve months of the filing date of the earlier G!% application. %his claim to domestic priority of
the utility model application must additionally be made within two months of the filing date of the utility model
application, and priority may be claimed only for those features that are adequately disclosed and supported by the
earlier application.
!riority may be claimed based on a combination of several earlier applications. f the earlier application is also a
utility model application and is still pending before the G!%, it will be deemed withdrawn when the priority claim
is made. %he features of the laws governing claims to domestic priority for German patent applications are quite
similar and are found in !atG 40, and many of them apply mutatis mutandis to utility model applications. Finally,
foreign priority based on an earlier application disclosing the invention in a !aris onvention country may also be
claimed for a utility model application according to GebrMG 6(2 in eactly the same way as for a patent
application. [v]
An interesting additional option for a German utility model application is to make a derivation or "branching
(abzweigung application off of an earlier patent application on the same subject matter and invention with effect in
Germany, [vi] such as a national patent or an international (!% or uropean application designating Germany.
n this case the filing date as well as the priority date of the patent application is maintained in the derivative utility
model application, and the filing date of the patent determines the term of the protection offered by the utility model.
%his derivation right can be eercised up to two months after the prosecution of the patent application is completed,
for eample, the grant of the patent, rejection of the application, or conclusion of opposition proceedings. However
this derivation can no longer be eercised once ten years have passed since the date of filing of the patent
application. A derivative utility model application can also potentially be a useful tool for dealing with an original
patent application for which the search results indicate an incurable deficiency with respect to the stricter inventive
activity or novelty requirements of a patent application but which still meets the lesser requirements for a utility
model application.
However, there are limitations imposed on the derivative utility model application. Since processes are not
protectable in a utility model, the application cannot branch off of a patent application having only process claims.
Similarly, if the patent application has both product and process claims, the process claims must be deleted in the
derivative utility model application. Along the same lines, one must be careful to avoid introducing "new material
into the utility model application that is not supported by the original patent application.
n spite of these limitations, the derivative utility model application can be a useful strategic tool, especially in
the case of infringement. For eample, if the applicant has received a favorable search report already in the patent
application procedure and is aware of a potential infringer, the applicant can much more quickly obtain strong
protection in the form of the full injunctive and damage rights by filing a derivative utility model application. %his
derivative utility model will generally be granted much more rapidly than the patent, especially if the pending patent
application is a uropean one. n addition, the claims of the derivative utility model application can be amended and
adapted to a known infringement product, so long as everything in the amendments had been disclosed in the
original utility model application. n this manner, the applicant can create a situation of clear and unambiguous
infringement, which may be easier to enforce in infringement proceedings.
F. %erm of Granted Utility Model
%he registered utility model is initially granted protection for a term of three years, beginning the day following
the filing of the application. %he term may be renewed for another three years upon payment of a fee, followed by
additional terms of two years each up to a maimum total utility model term of ten years. [vii]
n contrast, the term of a German patent is twenty years, beginning on the day following the filing of the
application for the patent. [viii] Furthermore, annual fees are due for an application or its resulting patent
beginning in the third year. f these annual fees are not paid within the required time limits and conditions, the patent
application will be deemed to be withdrawn or the patent to be lapsed. [i]Boston ollege ntellectual !roperty &
%echnology Forum http://www.bciptf.org

G. nfringement !roceedings
For the utility model, protection from infringement begins upon publication of the utility model registration and
covers uses of the subject matter of the utility model, such as offering, producing, using, selling, importing, or
possessing for the stated purposes. GebrMG 11-14 defines the scope of protection of a registered utility model in
terms of prohibited acts, limitations in scope of effects (i.e., eemptions for private or eperimental use, and scope
of protection (i.e., defined by the claims, which may be interpreted based upon the description and drawings.
%he proprietor of a registered utility model may sue infringers in order to: stop the infringing activities, claim
damages, bring about the destruction of infringing goods, and obtain information on the origin and distribution
channels of the infringing product. [] n addition, the infringer may be subject to fine or even imprisonment and
the infringing goods may be subject to seizure by customs officials according to GebrMG 25. However, because
no substantial eamination of utility model applications is carried out, a potential infringer may commonly defend
himself by asserting a claim against the proprietor of the utility model for cancellation of the utility model, as
discussed in the net section.
H. ancellation of the Utility Model
According to GebrMG 15, any person may assert a claim for cancellation of a utility model in the case that (1
the subject matter is not registrable within the terms of GebrMG 1-3, (2 the subject matter is already protected
based on an earlier patent or utility model application, or (3 if the claims etend beyond the content of the
application as originally filed. A request for cancellation stating the grounds for cancellation is filed with the G!%
along with the fee. [i]
Upon receiving a cancellation request, the G!% notifies the proprietor of the requested cancellation and invites
him to reply within one month. %he utility model is cancelled if there is no response. Where the proprietor contests
the cancellation, the G!% notifies the requestor and investigates the merits of the request. %he final decision is
based on a hearing and that decision is then communicated to the parties in writing. [ii] %his decision may then
be appealed to a hamber of Appeal of the !atent ourt; [iii] an appeal on a point of law from the hamber of
Appeal may be appealed to the Federal ourt of Justice. %his appeal to the Federal ourt of Justice is only possible,
however, where the !atent ourt allows it.
. Advantages/Disadvantages of Utility Models versus !atents
As suggested by the discussion above, there are several advantages of utility models in comparison to patents.
Some of these advantages include:
- ower costs;
- ess strict requirements concerning novelty;
- ess strict requirements concerning inventive character;
- More epedient registration procedure;
- A certain strategic means (branching off for obtaining full protection for an invention during the
intermediate period between publication of a patent application having effect in Germany and its actual grant;
and
- A means to protect a "lesser invention that a !% or ! search or opinion indicates would not meet
the more rigorous novelty and/or inventive step requirements for a patent.
!atent ffice Activity Utility Model !atent
amination for Formal Required RequiredBoston ollege ntellectual !roperty & %echnology Forum
http://www.bciptf.org
8
Requirements

ptional Required
!rior Art Search Report
(request & payment
Substantive amination Not Done Required
%able : verview of the Stages of !rosecution eading to Grant of ! Right
%he above table illustrates why utility models are granted faster and are typically less epensive than patents.
%he eamination for formal requirements for utility model and patent applications typically takes only a few months
at most. %he German patent office and ! then require the payment of a fee for carrying out the prior art search.
%he search can usually be carried out within a few months, and it is completely optional for a utility model, which
may instead be directly granted at the conclusion of the eamination for formal requirements. After the patent
applicant receives the search report, the applicant may decide to request substantive eamination and pay the
eamination fee, depending on whether or not the report is positive. %he substantive eamination of patents at the
German patent office or ! may take many months or even several years depending on the particular
circumstances, such as the number of prior art documents found in the search and their relevance to the claimed
invention, the speed at which the applicant requests and pays for the eamination, the necessity of amending the
claims and the willingness of the applicant to do so, the speed at which office actions are prepared and sent by the
eaminer, and the speed at which replies are prepared and sent by the applicant. %herefore, it may be concluded that
utility models are granted more rapidly since they do not usually undergo a prior art search at the patent office and
never undergo substantive eamination at the patent office prior to grant.
oncerning epenses, typically the patent applicant must pay both a search fee and an eamination fee during
prosecution, anticipating any possible grant of a patent. For businesses using outside counsel, such as small
businesses without their own internal patent counsel, substantial additional out-of-pocket legal epenses may be
incurred. %hese legal fees may derive from the hours of time required for counsel to analyze the search results and to
develop a prosecution strategy with respect to any relevant cited prior art and the time needed to respond to office
actions during the eamination phase. For these reasons, obtaining a utility model is also generally less epensive.
Furthermore, for the case of ! patents, it should be noted that any opposition to the grant of the ! patent at
the ! by other parties will generally etend the prosecution phase of that patent by several years, particularly if
either or both the patent proprietor and opponent(s end up appealing the decision of the pposition Division. Any
opposition and subsequent appeal will also greatly increase the legal epenses for the proprietor, particularly for
small businesses relying on outside patent counsel.
Despite its benefits, there are several disadvantages of the utility model as compared to patents, including:Boston
9
- nability to protect a method or process in a utility model;
- maimum protection period of ten years is inadequate for some inventions;
- Utility model can be "weaker than a patent in that it is not eamined as to substance during the
eamination procedure (therefore it is a good practice to attack an infringer only if one at least has a search
report on the utility model; and
- !ostponement of infringement proceedings by the parallel claims of a potential infringer for
cancellation is more likely to succeed in the case of a utility model than a patent.
J. onclusions
Based on an eamination of the prosecution histories of many German patents (e.g. the option of branching off a
utility model application from a patent application, and the large number of utility model applications that continue
to be filed, it can be concluded that the German utility model is in many ways a complementary or even competitive
means, relative to patents, for the protection of intellectual property in Germany. For eample, although the numbers
have shown a slight downward trend in recent years, the number of German utility model applications filed,
concluded registration procedures, registered, and in effect in 2005 and 2006 are about twenty to thirty percent of
the respective numbers for German patents originating from national and ! applications. [iv]
Despite their appeal, larger firms such as those in the German chemical industry have taken the position that
utility models are "unsafe, and oppose them. For eample, large firms do not wish to consume their resources
defending themselves against an uneamined right. However, such companies could handle utility models more
strategically and monitor potentially infringing utility model applications as is done in the case of patent
applications. %hese companies could, for eample, gather evidence indicating a lack of novelty or inventive step for
the "troublesome utility model and file litigation requesting cancellation of the utility model. However, this
additional monitoring and litigation is quite costly for the firms involved. Furthermore, there is considerable risk of
receiving negative publicity in the event that one of the major chemical manufacturers takes action against the utility
model of a much smaller company. n the other hand, Grund and co-authors have taken the position that utility
models can be used to great effect in the biotechnology sector, [v] especially since a somewhat recent decision
by the German Federal ourt of Justice (BGH [vi] has allowed medicinal uses of chemical compositions and
biotechnology products to be protected as utility models. Nonetheless, although they have been subject to some
criticism, it seems clear that the utility model system has many advocates in Germany and will remain a useful
intellectual property protection method for quite sometime into the future.
. U%% MDS AND %H US N%%UA !R!R% AW SS%M
As mentioned in the introduction, the US does not and never did offer protection for inventions in the form of
utility models under its intellectual property laws. n this section, the potential benefit of an introduction of utility
models into the US is eamined, particularly for the case of small businesses or certain industries. %hen, the negative
aspects resulting from a possible introduction of utility models are considered, and finally, the changes in other areas
of US law that would be required for a successful introduction of utility models are discussed.
K. !otential Benefits of an ntroduction of Utility Model !rotection in the US
ven in today's modern US economy, large enterprises play a much smaller role than often epected. [vii]
For eample, according to the U.S. Small Business Administration (SBA, ninety nine percent of all independent
enterprises in the US have fewer than 500 employees, and these small enterprises employ fifty two percent of all US
workers. n fact, about 19.6 million Americans work for businesses having fewer than twenty employees, 18.4
million Americans work for companies employing between twenty and ninety nine workers, and 14.6 million work
for businesses employing between 100 and 499 people. n contrast, 4. million Americans work for larger firms
employing 500 or more people. n addition, small businesses provided seventy five percent of new job growth in the Bost
10
period between 1990 and 1995, an even larger contribution than in the 1980's. t is evident that small businesses are
a critical part of the US economy and a major contributor to its growth.
Unfortunately, US intellectual property law and its practice can be financially challenging to small businesses.
For eample, it is estimated that the typical cost for a small US business to obtain a patent might be $20,000 to
$30,000-- not including the necessary attorney's fees and associated legal services. [viii] n fact, due to these
rapidly increasing costs, some small businesses question whether filing a patent is a worthwhile practice. [i]
Similar comments have been made by small business leaders in ongressional testimony; for eample, Mitchell
Gross, hairman and of Mobius Management Systems, has stated that the process of issuing US patents is too
costly and takes too much time. [l] %herefore it appears that there is clearly a need for a more rapid and less
epensive form of intellectual property protection for inventions in the US, particularly one that would be affordable
and useful to small businesses.
f course, the reduced costs associated with utility models would benefit not only small businesses, but also
larger technology firms. %hose businesses that are characterized by rapid innovation and short product cycles would
benefit from the inepensive and rapid protection of intellectual property rights, as discussed above. n particular,
start-up firms would more quickly obtain enforceable ! protection for their developments, which could aid them in
seeking capital and investors. n addition, US firms face increasingly stiff competition from abroad, and some of the
rapidly developing countries still have weaker ! protection and enforcement, which has in some cases fostered the
development of companies that are quite effective at rapidly bringing copying or imitating products to the
marketplace. %herefore a number of firms in various industries might also potentially benefit by being able to
quickly obtain an enforceable ! right in the US to help in dealing with the potential importation of any such copied
or imitated products.
. !otential Disadvantages of an ntroduction of Utility Model !rotection in the US
ne major concern is whether the implementation of utility models might cause significant harm to US
business. For eample, the introduction of utility models as an uneamined right might only eacerbate the current
problems related to the litigation of poor quality patents or overly broad patent claims. Many authors are in
agreement that such litigation is a large burden to US business, particularly smaller businesses, which often do not
have the financial resources and personnel to deal with lengthy and costly litigation. [li]
ntellectual property litigation involves significant cost and uncertainties, which make it unattractive to smaller
start-ups, even though it can lead to a significant financial return and the eclusion of competitors. %he costs might
include the preparation of the legal case, distraction of employees, attendance of court proceedings by witnesses
such as employee inventors, and document production. Furthermore, there may be considerable risks of the loss of
trade secrets through the discovery process and of counterclaims of infringing the competitor-defendant's patent
portfolio. [lii] ven though most patent lawsuits settle before trial, attorneys' fees and the indirect costs of litigation
are almost always still high.
%here are also indirect business costs associated with patent litigation, which may include strained relationships
and jeopardized cooperative development. Furthermore, businesses in weak financial positions may eperience
dramatic increases in their credit costs due to potential bankruptcy risks created by patent litigation. Researchers
report that alleged infringers lose approimately a half a percentage point of their stock market value upon being
sued for patent infringement. [liii] Furthermore, they report that this indirect cost is actually an order of magnitude
larger than those of the actual legal fees of the patent litigation. %his indirect cost and amounts to about nineteen
percent of these same companies' R&D spending, an amount that is often greater than some estimates of the value of
their granted patents.
Not only have the costs of patent litigation been traditionally high, they have been increasing dramatically in
recent years, as have the rates of patent litigation. [liv] imited available evidence and its analysis, as well as
anecdotal evidence, indicate that the high costs and risks of litigation have created opportunities for abuses of the
patent system in which there is the potential for larger and wealthier firms to willfully infringe the patents of Boston olle
ntellectual !roperty & %echnology Forum http://www.bciptf.org
11
individuals and small businesses or to eert clearly invalid patents against smaller firms. [lv] learly it is small
businesses that are most at risk in the litigation of poor quality patents. Without other additional systemic changes
and reforms, the introduction of an uneamined ! right such as utility model protection would only increase the
burden on small and all other businesses, as well as add additional stress to an already overloaded court system.
M. Means to Address imitations of Utility Models for the US
%he introduction of utility model protection into the US could bring significant benefits only if it were
accompanied by legal system reforms and the development of new business methods for minimizing the cost and
risk of ! litigation.
Numerous authors over the years have proposed reforms of the legal system and the process of litigating patent
disputes. Such reforms and changes could promote the successful introduction of utility model protection. A few
relevant and representative reforms will be briefly mentioned here. For eample, it has been proposed that limits be
put in place to control ecessive damage awards. Such a change may promote the settlement of patent disputes,
discourage speculation in litigation, prevent the protection of patents of questionable validity, and better confine the
reward of patent holders to within the scope of their invention. [lvi] Similarly, to control and limit ecessive
damage awards might also reduce the risks in the litigation of uneamined short-term registered rights such as utility
models. ndeed, the relatively smaller damage awards and lack of punitive damages available in other regions such
as urope are a factor in the relative success of utility model protection in those regions.
Also, fostering or even mandating the use of alternative dispute resolution methods such as mediation and
arbitration has been proposed as a useful means to control costs, reduce damages, and increase the speed of
resolution of patent disputes. Finally, several authorities have hypothesized that more widespread availability and
reduction in the cost of patent insurance for both pursuing patent infringers (patent abatement or enforcement
insurance and for defending against patent infringement suits (patent liability insurance would be an effective
means of minimizing the sometimes crippling financial effects of patent litigation. [lvii] According to %he Danish
!atent and %rademark ffice (D!%, this is a major reason why SMs do not patent their inventions as frequently
as do larger firms. %he high cost of patent insurance is also why the D!% has, for some years, strongly urged
private insurance providers to offer patent insurance to the Danish market. [lviii] n addition, the uropean
ommission's epert Best !ractices on nforcement of !R working group has a sub-group for Funding and
valuation that is working on promoting the possibilities of obtaining insurances in urope covering patents and
other types of intellectual property rights. [li] Unfortunately patent insurance is generally quite epensive and of
limited availability, in part due to the difficulty in assessing the risk to be insured. As a consequence, patent
insurance might find widespread application only in markets the have also been undertaking efforts to reduce the
costs and uncertainty of patent litigation.
. NUSNS
Utility models are an important, albeit second-tier, means of protecting inventions and lesser inventions at lower
cost for shorter periods of time. %hey are complementary and sometimes even competitive means, relative to
patents, and thus particularly useful to SMs. n particular, the derivative utility model application can be a very
useful strategic tool, especially in the case of infringement. %herefore utility models are a useful intellectual property
right to be considered by US applicants and practitioners in their strategies for international intellectual property
protection.
Furthermore, the introduction of utility model rights in the US could benefit small businesses and start-up firms
in the form of low cost and rapid ! protection. Such firms may benefit not only from the reduced costs but also
from the rapidly obtained enforceable ! right. %his may assist start-up firms in obtaining capital or seeking
investors, stimulate innovation in industries characterized by rapid developments or short product cycles, or be
useful to a variety of firms in dealing with the importation of any rapidly copied or imitated products. However, the
effective integration of an uneamined ! right such as the utility model into the US would require further
refinement of patent insurance products as well as the development of markets to minimize the costs and risks Boston
12
incurred in the litigation of ! rights.
AKNWDGMN%S
%he author wishes to thank Frederik Grever, uropean ! counsel at SAB nnovative !lastics, for his critical
reading and constructive comments during the preparation of this manuscript, the kind and thorough mentorship of
Dr. Matthias Brandi-Dohrn, Attorney at aw, and the helpful discussions with his former fellow uropean
ntellectual !roperty nstitutes Network (!N colleagues Milagros Angulo, Sarah Berisford, ouise Blakeney
during the early stages of his research.
[a1]. !h.D. hemistry, Masters in ntellectual !roperty Swiss Federal nstitute of %echnology-Zrich, US !atent
Agent, student member nstitute of !rofessional Representatives before the uropean !atent ffice ("epi, student
at Delta !atents of indhoven, the Netherlands, uropean !atent Attorney %rainee SAB nnovative !lastics,
Bergen op Zoom, %he Netherlands.
[i]. Guidelines for amination in the uropean !atent ffice pt. , ch. V, 11. (200; see also ase %-0024/81-
3.3.1, BASF, 1983 .J. 13; ase %-0002/83-3.3.1, Rider, 1984 .J. 265.
[ii]. M. D. Janis, Second %ier !atent !rotection, 40 HARV. N%'. .J. 151,169 (1999.
[iii]. !atent ooperation %reaty, art. 2(i, 3(1, June 19, 190, 1 B.D.... 833; see also WRD
N%RNA%NA !A%N% FF S%A%S%S AND NFRMA%N, !% A!!AN%'S GUD,
N%RDU%N % %H N%RNA%NA !HAS, HA!. V, 43 (2009.
[iv]. uropean !atent onvention, art. 66, 140, ct. 5, 193, 1 B.D.... 985 (13th ed. 2000 [hereinafter !]; see
also D. VSSR, %H ANN%A%D UR!AN !A%N% NVN%N 131, 332 (16th ed. 2008.
[v]. !, supra note 4, art. 135,13, rule 155,156; see also VSSR, SU!RA N% 4, 322 - 325 AND 625 - 626.
[vi]. ommission of the uropean ommunities, %he !rotection of Utility Models in the Single Market (Green !aper
M (9530 Final, 1995 available at http://aei.pitt.edu/1216/01/utility_model_gp_M_95_30.pdf
[vii]. ommission of the uropean ommunities, !roposal for a uropean !arliament and ouncil Directive
approimating the legal arrangements for the protection of inventions by utility model (M(90691 Final, 1998
.J. ( 36 13.
[viii]. ommission of the uropean ommunities, onsultations on the impact of the ommunity utility model in
order to update the Green !aper on the !rotection of Utility Models in the Single Market (M(9530 Final
(Green !aper S(2001130, July 26 2001, available at http://ec.europa.eu/internal_
market/indprop/docs/model/consultation_en.pdf
[i]. ommission of the uropean ommunities, Summary report of replies to the questionnaire on the impact of the
ommunity utility model with a view to updating the Green !aper on protection by the utility model in the internal
market, (S(2001130 March 1, 2002 available at http://
ec.europa.eu/internal_market/indprop/docs/model/utilreport_en.pdf
[]. M. WN, !R%%NG NNVA%N W%HN %H UR!AN UNN; %H !R!SAS
FR A MMUN% MD SS%M, N NNVA%N AND %H N%%UA !R!R%
SS%M (1996.Boston ollege ntellectual !roperty & %echnology Forum http://www.bciptf.org
13
[i]. !. Ravillard, %owards a uropean Directive on nforcement of ntellectual !roperty Rights, 136 %rademark
World 40-44 (2001.
[ii]. G.B. DNWD, W.. HNNSS, S. !RMU%%R, N%RNA%NA AND M!ARA%V
!A%N% AW (MB (2002.
[iii]. M. Kearn, %owards a uropean Utility Model aw, 25 N%RNA%NA RVW F NDUS%RA
!R!R% AND !RGH% AW ( 62-648 (1994.
[iv]. U. Suthersanen, Utility Models and nnovation in Developing ountries, nternational enter for %rade and
Sustainable Development (%SD, ssue !aper No. 13 (2006, http://www.unctad.org/en/docs/iteipc20066_en.pdf
[v]. M. Boppart, Harmonisierung des rfindungsschutzes durch Gebrauchsmuster in uropa - das nteresse der
ebensmittelindustrie, MAS in ! Diploma !apers, Working !aper 4 (2000, http://
www.bepress.com/ndsip/papers/art4
[vi]. World ntellectual !roperty rganization (W! ollection of aws for lectronic Access (A database,
http://www.wipo.int/clea/en/
[vii]. Gerbrauchsmustergesetz [GebrMG] [Utility Model Act], Aug. 28, 1986 BGB1. at 1455, 1, 2 (F.R.G..
[viii]. !atentgesetz [!atG] [German !atent Act] Dec. 16, 1980 BGB1. at 1, 1, 2 (F.R.G..
[i]. R. Koenig, 2002 V!!-Rundbrief 2, 50.
[]. German !atent Act 3
[i]. German !atent Act 4
[ii]. Utility Model Act
[iii]. German !atent Act 42
[iv]. German !atent Act 43
[v]. German !atent Act 41
[vi]. Utility Model Act 5
[vii]. Utility Model Act 23
[viii]. German !atent Act 16(1
[i]. German !atent Act 20
[]. Utility Model Act 24
[i]. Utility Model Act 16Boston ollege ntellectual !roperty & %echnology Forum http://www.bciptf.org
14
[ii]. Utility Model Act 1
[iii]. Utility Model Act 18
[iv]. German !atent and %rade Mark ffice (D!MA, Annual Report 2006,
http://www.dpma.de/english/service/publications/annualreports/inde.html
[v]. M. Grund, . Richly, S.J. Farmer, Das "kleine !atent fuer biotechnologische rfindungen, 13
Bspektrum 211-212 (200.
[vi]. Bundesgerichtshof [BGH] [Federal ourt of Justice] ct. 5, 2005, 164 ntscheidungen des
Bundesgerichtshofes in Zivilsachen [BGHZ] 220 (F.R.G.,
http://www.jusline.de/pdf/de/entscheidungen/X_ZB_03.pdf
[vii]. M. Moffat, utline of the U.S. conomy, adapted with permissions from . N% AND A. KARR, AN
U%N F %H U.S. NM, U.S. D!%. F S%A%, N%RNA%NA NFRMA%N
!RGRAMS, (2001,
H%%!://NMS.ABU%.M/D/FRNMS%X%BKS/A/US_NM.H%M; S
AS %H UN%D S%A%S SMA BUSNSSS ADMNS%RA%N, FF F ADVA, SMA
BUSNSS !RFS FR %H S%A%S AND %RR%RS (2008,
WWW.SBA.GV/ADV/RSARH/!RFS.
[viii]. A.F. Quecan, Reforming the !atent ndustry from the Small Business !erspective, 11 Journal of
ngineering and !ublic !olicy (200, http://www.wise-intern.org/journal/200/inde.html
[i]. J. Herzlich, Small Business: Get a patent only if you're sure it'll pay, Newsday, March 31, 2009
http://www.newsday.com/columnists/jamie-herzlich/small-business-get-a-patent-only-if-you-re-sure-it-ll-pay-
1.656289
[l]. %he mportance of !atent Reform on Small Businesses: Hearing Before the Subcomm. n Small Business of the
H. omm. on the Judiciary, 110th ong. (200 (statement of Mitchell Gross, hairman and hief ecutive
fficer, Mobius Management Systems, nc.,
http://www.itaa.org/upload/govt/docs/Mitch%20Gross%20%estimony%F inal.pdf
[li]. !atent Reform mpact on Small Venture-Backed ompanies: Hearing Before the Subcomm. n Small Business
of the H. omm. on the Judiciary, 110th ong. (200 (statement of John Neis, FA, Managing Director, Venture
nvestors, http://www.nvca.org/pdf/House-SB-!atent-%estimony.pdf
[lii]. B.. Haas and .V. Beckman, F%Z!A%RK A HAR!R & SN%, UN%D S%A%S !A%N%
NFRMN%: NSNG AND %GA%N NSDRA%NS, BUDNG AND NFRNG
N%%UA !R!R% VAU (2008, H%%!://WWW.BUDNG!VAU.M/08_USA/68-
1F%Z!A%RK.!DFF
[liii]. J.. Bessen & M.J. Meurer, %he !rivate osts of !atent itigation, (B. U. Sch. of aw Working !aper Series,
aw and conomics Working !aper 0-08, available at http://
www.bu.edu/law/faculty/scholarship/workingpapers/Bessen-Meurer-osts.html
[liv]. R.J. Keating, %he Small Business and ntrepreneurship ouncil's ntellectual !roperty and Small Business
!olicy Series, !atent Reform: !rotecting !, nabling nnovation, & Bolstering ntrepreneurship (2008, http://
www.law.berkeley.edu/institutes/bclt/entrepreneurship/resources/studysmallbus.pdf
[lv]. M. Haberman and R. Hill, !atent nforcement for SMs and one nventors--A System Failure, ntellectual Boston
15
!roperty Advisory ommittee (!A. (2003 18.11.2003, retrieved on 30.01.2009, available at
http://www.hmtreasury.gov.uk/d/contra_vision_ltd_336_p_131kb.pdf
[lvi]. Bessen & Meurer, supra note 44
[lvii]. R. Wilder, !resenting for the W! Milan Forum on ntellectual !roperty and Small and Medium-Sized
nterprises: Fostering the nnovation !otential of SMs in the Globalization ra--%he Role of !atents, (Feb. 9-10,
2001 available at http://www.wipo.int/edocs/mdocs/sme/en/wipo_ip_mil_01/wipo_ ip_mil_01_1_b.doc
[lviii]. Danish !atent and %rademark ffice, !atent itigation nsurance, (2009 http://www.dkpto.org/ip-law--
policy/international-patenting/patent-litigation-insurance.asp
[li]. d.

hLLp//www[pogo[p/shlryou_e/Loushln_e/shlnglkal_e/pdf/en_uLlllLy/maLerlal1pdf
uevelopmenL
LsLabllshmenL of Lhe uLlllLy Model SysLem
1rlor Lo enacLmenL of Lhe uLlllLy Model Law
1he aLenL SysLem (Monopoly aLenL Law) was enforced as parL of Lhe pollcy Lo boosL
producLlvlLy and modernlze Lhe naLlon ln 1883
AppllcaLlons from forelgners sLarLed ln 1897 buL slnce Lhe Lechnlcal level of lnvenLlons
by !apanese appllcanLs was low and mosL paLenL appllcaLlons concerned lmprovlng
fundamenLal
Lechnlques lnLroduced from abroad mosL of Lhe lmporLanL paLenLs were held by forelgners
1herefore mosL of Lhe appllcaLlons from !apanese naLlonals wlLh far lower Lechnlcal level
Lhan
Lhe WesLern sLandard were refused and lL was lmposslble Lo proLecL small lnvenLlons wlLh
Lhe
aLenL Law
2LnacLmenL of Lhe uLlllLy Model Law ln 1903
1he uLlllLy Model Law based on Lhe Cerman uLlllLy Model roLecLlon Law was
enacLed ln 1903 because a sysLem Lo proLecL and promoLe malnly small lnvenLlons ln !apan
as
lndusLrlal pollcy was consldered necessary
3AmendmenL of Lhe uLlllLy Model Law ln 1921
AfLer World War l began Lhe dyesLuff and medlcal flelds LhaL had been dependenL on
lmporLs from Cermany were Lhrown lnLo confuslon as lmporLs sLopped exposlng Lhe
fraglllLy of
Lhe foundaLlon of !apanese lndusLry and Lechnologles 1he !apanese governmenL was forced
Lo
reallze Lhe necesslLy of developlng lLs own Lechnology and so began Lo promoLe sclence and
Lechnology 1hls pollcy of promoLlng sclence and Lechnology encouraged lnvenLlons and
Lhere
arose a sLrong demand for amendmenLs Lo Lhe sysLem eLc WlLh Lhls background of changes
ln
Lhe exLernal lndusLrlal properLy sysLem Lhe uLlllLy Model Law was amended ln 1921
4AmendmenL of Lhe uLlllLy Model Law ln 1939
ln Lhe perlod lmmedlaLely afLer World War ll few Lechnologles were developed ln
!apan and Lhe focus was on lowcosL mass producLlon uslng Lechnlques from abroad
1echnlcal
advancemenL of !apan was Lhus supporLed by forelgn Lechnologles ln Lhe laLe '30s
however as
Lhe Lechnlcal level lmproved lL became posslble Lo lmprove Lhe Lechnologles aL Lhe uLlllLy
model
level ln sLandard buslness operaLlons when necessary and so Lhe necesslLy for proLecLlng
small
lnvenLlons began Lo dlmlnlsh gradually
1he four lnLellecLual properLy relaLed laws Lherefore began Lo be revlewed and afLer
Len years of revlews a comprehenslve amendmenL was conducLed ln 1939
3PlghgrowLh era and amendmenL of Lhe uLlllLy Model Law ln 1970
(1)8apld lncrease of appllcaLlons
uurlng Lhe hlghgrowLh perlod LhaL lasLed unLll Lhe 70s !apan closed Lhe gap wlLh Lhe
WesL and sLarLed Lo develop lLs own Lechnologles and so paLenL appllcaLlons began Lo
lncrease
new producLs and model changes accompanylng mlnor lmprovemenLs were developed
successlvely for household appllances auLomoblles eLc as llvlng sLandards rose and
appllcaLlons for uLlllLy model reglsLraLlon also lncreased 1he number of appllcaLlons for
uLlllLy
model reglsLraLlon whlch was abouL 60000 ln 1933 aL Lhe dawn of Lhe hlghgrowLh era
Lrlpled
Lo around 180000 ln 1973
(2)AmendmenL of Lhe uLlllLy Model Law ln 1970
(lnLroducLlon of Lhe LxamlnaLlon 8equesL SysLem)
As Lhe number of appllcaLlons lncreased rapldly Lhe backlog of unprocessed
appllcaLlons grew and Lhe average processlng perlod for a uLlllLy model ln 1969 was as long
as
flve years 1herefore Lhe examlnaLlon requesL sysLem was lnLroduced modeled on Lhe
sysLems
ln Cermany and Lhe neLherlands 1hls sysLem allowed Lhe perlod for [udglng Lhe necesslLy
for
examlnaLlon requesLs Lo be seven years for a paLenL and four years for a uLlllLy model whlch
8eference maLerlal 1reduced Lhe number of unprocessed appllcaLlons
6ulverslflcaLlon and maLurlLy of Lechnologles and amendmenL of Lhe aLenL Law ln
1987
(1)uecllne of appllcaLlons
ln Lhe 80s research and developmenL ln !apan progressed and Lechnology exporLs
lncreased narrowlng Lhe Lechnlcal gap wlLh Lhe WesL ln Lhe 80s and 90s Lhe lnLroducLlon of
Lechnologles from Lhe WesL leveled ouL llvlng sLandards lmproved company managemenL
became more sophlsLlcaLed Lhe compuLer and sofLware markeL grew dramaLlcally Lhe
lnformaLlon Lechnology socleLy was born and new markeLs and lndusLrlal flelds emerged
whlch
led Lo Lhe dlverslflcaLlon and maLurlng of Lechnologles
As Lechnologles advanced and maLured ln !apan and appllcaLlons for paLenLs conLlnued
Lo lncrease Lhe appllcaLlons for uLlllLy model reglsLraLlon whlch used Lo exceed Lhe number
of
paLenL appllcaLlons gradually began Lo decllne and became fewer ln number Lhan paLenL
appllcaLlons from 1981
(2)AmendmenL of Lhe aLenL Law ln 1987 (lmprovemenL of Lhe MulLlple Clalm SysLem)
Whlle Lhe conLenLs of appllcaLlons for paLenLs conLlnued Lo become more compllcaLed
as Lechnlcal developmenL progressed lL became apparenL LhaL Lhe LradlLlonal mulLlple
clalm
sysLem" had llmlLaLlons ln Lhe descrlpLlon formaL eLc Lo provlde Lhorough proLecLlon of
Lhe
frulLs of research and developmenL and so Lhe Law was amended ln 1987 Lo lmprove Lhe
mulLlple clalm sysLem
1hls amendmenL allowed descrlpLlons of mulLlple clalms regardless of Lhe formaL for
one lnvenLlon and [udgmenL on novelLy lnvenLlve sLeps eLc could be glven lndependenLly
for
each clalm lL also allowed a separaLe lnvenLlon Lo be flled uslng Lhe same appllcaLlon form
as a
closely relaLed lnvenLlon
lollowlng Lhls lmprovemenL of Lhe mulLlple clalm sysLem explolLaLlon of Lhe uLlllLy
Model SysLem fell dramaLlcally because devlces for whlch appllcaLlons had been made for
uLlllLy model reglsLraLlon could now be descrlbed ln Lhe clalms ln paLenL appllcaLlons
7AmendmenL of Lhe uLlllLy Model Law ln 1993 (See 8eference maLerlal 2)
As Lhe appllcaLlons for uLlllLy model reglsLraLlon decreased Lhe need for acceleraLed
reglsLraLlon Lo provlde approprlaLe proLecLlon Lo Lechnlques and producLs became apparenL
because Lechnlcal lnnovaLlon was acceleraLlng Lhere were many producLs for whlch Lhe
uLlllLy model rlghL was enforced aL a very early sLage and Lhe llfecycle of producLs was decreaslng
1o respond Lo such needs Lhe nonsubsLanLlve examlnaLlon and ex posL facLo evaluaLlon sLyle new
uLlllLy Model SysLem were adopLed wlLhouL any subsLanLlve requlremenL examlnaLlons ln 1993

hLLp//wwwwuesLhoffde/flleadmln/slLe/documenLs/lpLoplcs/en/wh_20040910_enpdf
WuLS1PCll WuLS1PCll
A1Ln1 unu 8LCP1SAnWL1L
Lu8CLAn A1Ln1 A11C8nL?S
Lu8CLAn 18AuLMA8k
A11C8nL?S
WuesLhoff WuesLhoff 2004
Cerman uLlllLy Models
AddlLlonal Leverage for LlLlgaLlon and Llcenslng negoLlaLlons
When lmplemenLlng a global lnLellecLual properLy sLraLegy uLlllLy models can be a useful
Lool Lo provlde furLher leverage ln a llLlgaLlon seLLlemenL or a llcenslng negoLlaLlon prlor
Lo Lhe lssuance of a correspondlng paLenL lor example Cerman uLlllLy models or
CebrauchsmusLer whlch are sub[ecL Lo llmlLed examlnaLlon can lssue wlLhln as llLLle as one
Lo Lwo monLhs and provlde an enforceable rlghL LhaL can be used Lo supplemenL an exlsLlng
paLenL porLfollo2 1he followlng brlefly descrlbes Lhe process of obLalnlng and enforclng a
CebrauchsmusLer and Lhe beneflLs assoclaLed LherewlLh
CvL8vlLW
A Cerman uLlllLy model ls a separaLe enforceable rlghL havlng a scope of coverage
comparable Lo LhaL of a paLenL unllke paLenL appllcaLlons however Lhe Cerman aLenL and
1rademark Cfflce only makes a llmlLed examlnaLlon Lo deLermlne lf a uLlllLy model has a
prlma facle lndusLrlal relaLlon (as wlll be descrlbed below) ueLalled lnqulrles as Lo novelLy
and lnvenLlve sLep / obvlousness are deferred unLll enforcemenL or cancellaLlon proceedlngs
are broughL
A uLlllLy model may have a prlorlLy daLe as of lLs respecLlve flllng daLe or lL may clalm
prlorlLy from a prevlously flled Cerman or Luropean aLenL Cfflce (LC") paLenL
appllcaLlon
or a aLenL CooperaLlon 1reaLy (C1") paLenL appllcaLlon LhaL deslgnaLes Cermany as one
of
Lhe [urlsdlcLlons ln whlch coverage ls soughL lurLhermore one may apply for a uLlllLy model
clalmlng prlorlLy from such a paLenL appllcaLlon aL any Llme prlor Lo Lwo monLhs from end of
Lhe monLh ln whlch Lhe granL was granLed or explraLlon of Lhe paLenL appllcaLlon
lnuuS18lAL 8LLA1lCn
1he lndusLrlal relaLlon requlremenL can be saLlsfled for Lhe ma[orlLy of Lechnologles wlLh Lhe
excepLlon of meLhods (or processes) AlLhough meLhods and processes are noL ellglble
sub[ecL maLLer for uLlllLy model proLecLlon per se apparaLus or sysLem clalms LhaL are
conflgured Lo perform meLhods may be ellglble for proLecLlon lor example A meLhod for
2
analyzlng a daLa lmage comprlslng Lhe sLep of lnLerferomeLrlcally enhanclng Lhe daLa lmage"
would noL be classlfled as havlng an lndusLrlal relaLlon Powever lf Lhe clalm were redrafLed
as A sysLem for analyzlng a daLa lmage comprlslng a compuLer processor and a memory
coupled Lo Lhe processor where Lhe memory ls encoded wlLh one or more programs LhaL
may lnLerferomeLrlcally enhance Lhe daLa lmage" Lhen Lhe clalm would be ellglble for
proLecLlon Slmllarly lf a chemlcal composlLlon relaLes Lo a medlcal dlagnosls Lhen
proLecLlon
may obLalned by clalmlng a medlal dlagnosls LesL klL conLalnlng Lhe chemlcal composlLlon
Areas LhaL have been speclflcally excluded from coverage by uLlllLy models lnclude clalms
LhaL are solely dlrecLed Lo one or more of Lhe followlng
* dlscoverles sclenLlflc Lheorles and maLhemaLlcal meLhods
* aesLheLlc creaLlons
* schemes rules and meLhods for performlng menLal acLs playlng games or dolng
buslness and programs for compuLers and
* presenLaLlons of lnformaLlon
nCvLL1? / lnvLn1lvL S1L
Slmllar Lo LC paLenLablllLy sLandards wrlLLen publlcaLlons and publlc use worldwlde before
Lhe prlorlLy daLe can desLroy novelLy and can have an affecL on lnvenLlvesLep
deLermlnaLlons Cne lmporLanL dlfference however ls LhaL an appllcanL ls afforded a slx
monLh grace perlod for lLs own publlcaLlons or prlor publlc use of Lhe sub[ecL maLLer
Accordlngly appllcanLs can sLlll obLaln proLecLlon Lhrough a Cerman uLlllLy model ln
slLuaLlons where a novelLy desLroylng publlcaLlon or use bars paLenL proLecLlon wlLhln
Cermany and oLher Luropean counLrles (llke AusLrla) lurLhermore lf a paLenL appllcaLlon
was flled wlLhln Lhe slx monLh perlod an appllcanL may sLlll flle a uLlllLy model clalmlng
prlorlLy from such paLenL appllcaLlon lf Lhey subsequenLly dlscover (wheLher Lhrough Lhe
paLenL examlnaLlon process or oLherwlse) a novelLy desLroylng evenL wlLhln Lhe slx monLh
grace perlod
8Alu lSSuAnCL
As a uLlllLy model appllcaLlon ls only examlned wlLh respecL Lo formal raLher Lhan
subsLanLlve
aspecLs Lhe lssuance of Lhe uLlllLy model cerLlflcaLe can be expecLed wlLhln a maLLer of
weeks (eg as soon as four Lo slx weeks) lf Lhe flled documenLs comply wlLh all Lhe
formallLy requlremenLs and lf one does noL elecL Lo have a search conducLed Cne
3
requlremenL LhaL ls frequenLly overlooked especlally by uS appllcanLs who are accusLomed
Lo mulLlple lndependenL clalms ls LhaL Lhe rule ls Cne uLlllLy Model Cne lnvenLlon 1hls
requlremenL means LhaL when rapld lssuance ls of lmporLance Lhe clalm seL should be
conclse Cne Lechnlque for avoldlng Lhls lssue ls Lo formulaLe a slngle lndependenL clalm
wlLh
a number of clalms dependenL Lhereon
lmporLanLly when a compeLlLlve producL has been ldenLlfled LhaL mlghL fall wlLhln Lhe scope
of Lhe clalms of a paLenL appllcaLlon dlscusslons regardlng llLlgaLlon or llcenslng may be
focused by flllng a uLlllLy model wlLh an lndependenL clalm LhaL ls Lallored" Lo opLlmally
read
on Lhe compeLlLlve producL When drafLlng Lhe lndependenL clalm one mlghL conslder
drafLlng lL so LhaL lL has a relaLlvely narrow scope buL noneLheless covers Lhe compeLlLlve
producLs Lo mlnlmlze Lhe llkellhood LhaL Lhe clalms wlll be cancelled Such precauLlons can
slmpllfy preLrlal dlscusslons wlLh Lhe lnfrlnger and greaLly expedlLe courL proceedlngs (by
focuslng Lhe lnqulry boLh from an lnfrlngemenL sLandpolnL and from a valldlLy sLandpolnL)
Lven Lhough Lhe resulLlng uLlllLy model may have a narrow scope broader clalms may be
pursued ln Lhe underlylng paLenL appllcaLlon ln addlLlon one may flle a dlvlslonal uLlllLy
model or addlLlonal uLlllLy models clalmlng prlorlLy from Lhe same paLenL appllcaLlon havlng
varylng scope lf Lhe need arlses
uLlllLy models can also be useful ln prellcenslng negoLlaLlons where a paLenL has yeL Lo lssue
wlLhln Cermany or elsewhere Slmllar Lo Lhe prellLlgaLlon LacLlcs a uLlllLy model may be
drafLed such LhaL lL llLerally covers one or more producLs of a poLenLlal llcensee
lurLhermore lf a paLenL llcense agreemenL ls drafLed such LhaL royalLles musL be pald on
sales lnfrlnglng clalms of boLh reglsLered uLlllLy models and lssued paLenLs Lhen Lhe lssuance
of a uLlllLy model may resulL ln an earller royalLy sLream from a llcensee
1L8M Cl 8C1LC1lCn Anu ASSCClA1Lu CCS1S
A uLlllLy model ls ln force for Len years from Lhe flllng daLe or lf prlorlLy was clalmed based
on anoLher appllcaLlon Len years from such prlorlLy daLe 1he flllng fees as well as Lhe
malnLenance fees due aL 3 6 and 8 years from Lhe flllng daLe are comparable Lo Lhe cosLs
assoclaLed wlLh Lhe flllng lssuance and malnLenance of a Cerman paLenL appllcaLlon
1he mosL expenslve aspecL of preparlng and flllng a uLlllLy model for mosL appllcanLs ls Lhe
LranslaLlon of Lhe appllcaLlon lnLo Cerman whlch may be flled wlLhln Lhree (3) monLhs afLer
Lhe flllng daLe (lf Lhe appllcaLlon ls flled ln Lngllsh) Assumlng LhaL Lhe underlylng appllcaLlon
4
ls pendlng before Lhe LC or under Lhe C1 and Lhe orlglnal lnLenL was Lo pursue Lhe paLenL
appllcaLlon lnLo SwlLzerland LlechLensLeln Cermany or AusLrla Lhen LranslaLlng Lhe uLlllLy
model appllcaLlon slmply resulLs ln lncurrlng Lhe LranslaLlon fees aL an earller sLage
SCCL Cl 8C1LC1lCn Anu LnlC8CLMLn1
1he scope of proLecLlon of a uLlllLy model ls Lhe same as LhaL of a paLenL namely Lhe rlghL Lo
exclude oLhers from maklng uslng selllng offerlng Lo sell and lmporLlng Lhe clalmed
sub[ecL maLLer lnfrlngemenL of a uLlllLy model may be llLeral or under an analog Lo Lhe uS
docLrlne of equlvalenLs ln addlLlon enLlLles noL falllng under one of Lhese LesLs may also be
llable Lo Lhe uLlllLy model holder for lnduclng lnfrlngemenL
A holder of a uLlllLy model may seek compensaLory damages relaLlng Lo lnfrlngemenL before
one of Lhe speclallzed Cerman aLenL CourLs2 ln addlLlon a uLlllLy model holder may seek
Lo
permanenLly en[oln an lnfrlnger and be provlded wlLh Lhe names of Lhe suppllers and
cusLomers of Lhe lnfrlnger (whlch lnformaLlon can be used Lo pursue separaLe clalms agalnsL
such enLlLles) A uLlllLy model holder however may noL seek acLlon for prlvaLe
noncommerclal acLs and acLs done for experlmenLal purposes (le ln mosL cases uLlllLy models
may noL be used Lo en[oln research and developmenL) lurLher an acLlon for uLlllLy model
lnfrlngemenL musL be broughL wlLhln Lhree years from Lhe daLe when knowledge abouL Lhe
lnfrlnglng acLlvlLy and Lhe ldenLlLy of Lhe lnfrlnger were flrsL known
uLlLnSLS 1C lnl8lnCLMLn1 Cl u1lLl1? MCuLL
1he defenses Lo lnfrlngemenL of a uLlllLy model are slmllar Lo Lhose for paLenLs lncludlng
lnvalldlLy based on nonproLecLable sub[ecL maLLer (le Lhe clalms do noL cover an lnvenLlon
havlng relaLlon Lo Lechnology or lndusLrlal appllcablllLy) novelLy and based on obvlousness /
lnvenLlvesLep lurLher defenses lnclude prlor use by Lhe lnfrlnger before Lhe prlorlLy daLe
exhausLlon of Lhe uLlllLy model rlghL and LhaL Lhe complalned of uses were llcensed
Cne lmporLanL facLor Lo keep ln mlnd ls LhaL ln Cermany a successful parLy on any glven
clalm ls awarded lLs aLLorney fees assoclaLed LherewlLh (based on Lhe value" of Lhe clalm ln
dlspuLe) As a resulL lL ls lmporLanL Lo carefully drafL each and every clalm prlor Lo Lhe flllng
of an acLlon ln addlLlon lf afLer asserLlng a clalm as belng lnfrlnged Lhe accused lnfrlnger
falls Lo respond Lo a defense of lnvalldaLlon Lhen Lhe CourL may choose Lo permanenLly
sLrlke such clalm from Lhe asserLed uLlllLy model (and posslbly award aLLorney fees)
3
CAnCLLLA1lCn 8CCLLulnCS
ln addlLlon Lo uLlllLy model clalms or Lhe enLlre uLlllLy model belng held lnvalld lnLer parLles
ln
an lnfrlngemenL sulL cancellaLlon proceedlngs may be broughL by any person3
before Lhe Cerman aLenL and 1rademark Cfflce (wlLh appeals belng dlrecLed Lo Lhe Cerman
lederal aLenL CourL) based on slmllar grounds as lnvalldaLlon lmporLanLly a defendanL ln
an lnfrlngemenL sulL may durlng Lhe course of Lhe lnfrlngemenL sulL flle a cancellaLlon
proceedlng wlLh Lhe Cerman aLenL and 1rademark Cfflce Slmllar Lo an lnfrlngemenL
proceedlng Lhe prevalllng parLy ls awarded aLLorney fees
SLLLC1lvL uSL Cl u1lLl1? MCuLLS
As can be appreclaLed from Lhe above ln cerLaln clrcumsLances lL may be advanLageous Lo
flle a Cerman uLlllLy model buL Lhls ls usually only beneflclal when Lhere ls an ldenLlfled
need Accordlngly one musL carefully conslder Lhe merlLs of flllng uLlllLy models on a caseby
case basls as nonessenLlal uLlllLy models may resulL ln a reglsLranL parLlclpaLlng ln
cancellaLlon proceedlngs for sub[ecL maLLer LhaL ls noL currenLly belng lnfrlnged Whlle Lhe
asserLlon of a paLenL may have a greaLer effecL on a parLy LhaL ls lnfrlnglng on a worldwlde
basls llLlgaLlon regardlng a uLlllLy model may provlde some lnslghL lnLo Lhe sLrengLh of
cerLaln clalms and defenses LhaL may be valuable for subsequenL paLenL llLlgaLlon aL a
fracLlon of Lhe cosLs of dlscovery ln a Lyplcal uS case
LnunC1LS
1 An Lngllsh LranslaLlon of Lhe Cerman uLlllLy Model Law of AugusL 28 1986 as
amended may be obLalned vla Lhe World lnLellecLual roperLy CollecLlon of Laws for
LlecLronlc Access (see cleawlpolnL)
2 1he courL may also award ln some clrcumsLances ln lleu of compensaLory damages
LhaL Lhe lnfrlnger pays Lhe greaLer of Lhe damages Lo Lhe uLlllLy model holder or Lhe
proflL whlch accrued Lo Lhe lnfrlnger
3 WlLh Lhe excepLlon of cases where Lhe cancellaLlon ls broughL by an enLlLy LhaL clalms
LhaL Lhe essenLlal elemenLs of Lhe uLlllLy model reglsLraLlon were Laken (le copled
eLc) from Lhe enLlLy wlLhouL auLhorlzaLlon

hLLp//wwwdpmade/engllsh/uLlllLy_models/procedure/lndexhLml
rocedure
Procedure
Fast protection for your invention

When you file a utility model application, the German !atent and %rade Mark ffice does not
eamine whether your application complies with all substantive requirements of utility model
protection. %his shortens the procedure and you have your invention protected within a short time
without having to wait for the outcome of the longer patent granting procedure.
at appens after filing?
ou receive an acknowledgement mentioning the date of filing and the file number.
%he utility model unit then checks whether your application comprises all required elements, and
whether the invention is of a technical nature and eligible for utility model protection.
An incomplete utility model application can entail various legal consequences:
O f fundamental requirements are not met, a new application is the only conceivable solution. For
eample, the invention must be disclosed in such a comprehensible and comprehensive manner
that a skilled person is able to carry it out. %his information may not be provided later. n case
of insufficient disclosure, the application must be rejected in an office action unless it is
previously withdrawn.

O %he other requirements can be met subsequently. %he utility model unit will invite you to furnish
missing information or documents, where applicable.
ntry in te Register
f the application does not have any defects, or if the defects have been remedied, the utility
model is entered in theRegister.
Splitting-off

Splitting off a utility model application
A utility model application can be split off from a patent application having the same contents. %his
can be useful if you have published your invention before filing a patent application. n that case,
patent protection is no longer available since your invention is no longer new. However, you can
apply for a utility model within si months from the publication. n this case, the novelty grace
period applies: your publication is not considered to be part of the state of the art within this
period.
ou can use a split-off utility model to supplement a patent application. t provides flanking
protection during the otherwise unprotected patent pendency period. Upon registration of the split-
off utility model your invention enjoys full protection irrespective of the outcome of the patent
grant procedure.
%he split-off application is an independent utility model application. %ick bo 8 on the request form
to indicate that the application is split-off from a previous patent application. Furthermore, you
must indicate the file number and the date of filing of the patent application.
Splitting off is allowable within 10 years from the date of filing of the original patent application.
%he utility model application must be submitted within two months from the rejection or
withdrawal of the patent application at the latest.
ancellation proceedings - te utility model is put to te
test
%he utility model unit registers the utility model without previously eamining if the substantive
requirements are met. n case of a dispute, cancellation proceedings will clarify whether the
registered invention is in fact new and involves an inventive step.
Any person may file a request for cancellation. %he request is subject to a fee and must be filed in
writing together with a statement of reasons.
Before filing a request for cancellation, you should consider the risk of costs. %he losing party has
to bear the costs including the costs incurred by the opponent.

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