by Dr. Markus Herzog, Patent Attorney and Partner at Weickmann & Weickmann
In former times, the German utility model was considered to be “the patent’s little brother”. Over the years, however, both the Utility Model Law and the jurisprudence of the Federal Court of Justice have changed. Today patents and utility models are protective rights of equal value, both having advantages as well as drawbacks. What are the specifics of the German utility model? How can innovative companies profit from utility models as an alternative to patents? Part 2 of this series looks at the different definitions of prior art and the level of inventiveness required for utility models.
Definition of Prior Art
With respect to the definition of the prior art, the Utility Model Law has some interesting differences to the German Patent Law and the European Patent Convention.
First of all, an oral explanation of an invention, even if made in public, does not constitute prior art for a utility model. So, for example, a presentation held at a conference does not constitute prior art. However, if a copy of the slides of the presentation is distributed to the audience in paper-form, this copy constitutes prior art.
Furthermore, only a prior public use inside Germany is relevant. In other words, a prior public use outside Germany, e.g. in France, China or the United States, does not constitute prior art for a German utility model.
Novelty Grace Period
In contrast to the German Patent Law and the European Patent Convention, the German Utility Model Law provides for a six-month novelty grace period. So, documents published by the applicant within the six months preceding the relevant date of the utility model do not constitute prior art.
It is important to note that if a utility model claims the priority of an earlier application, this grace period is calculated starting from the priority date, not the filing date of the utility model.
Post-Published Prior Art
Moreover, the Utility Model Law is special with respect to the way post-published prior art having an earlier priority date is taken into account when examining the validity requirements.
According to the German Patent Law and the European Patent Convention, post- published documents are taken into account only when examining novelty, but not when examining inventive step (§3 (2) PatG, Art. 54(3) EPC). However, the overall disclosure of the document, i.e. claims, description and drawings, is relevant during this novelty examination. This is called the “whole contents approach”.
The Utility Model Law takes a totally different approach. A utility model is invalid if its subject matter has already been identically protected by an earlier patent or utility model (§15 (1) no. 2 Utility Model Law). As the scope of protection is defined by the claims, it is thus not the overall disclosure which is relevant, but only the claims of the earlier, but post-published document. This is called “prior claim approach”.
Level of Inventiveness
In the past, the level of inventiveness required for a utility model was deemed to be smaller than that of a patent. But in 2006, the Federal Court of Justice made clear that for both, patents and utility models, the required level of inventiveness is identical (BGH X ZB 27/05).
As the Federal Court of Justice explained in its reasoning, this decision was not intended to increase the level of inventiveness required for a utility model, but was rather a consequence of the fact that due to the harmonization between the jurisprudence of the European Patent Office and the national courts in the member states of the European Patent Convention, the level of inventiveness required for a patent had been decreased to that of a utility model.
The “prior art” concept defined in the Utility Model Act is favorable compared to the concept for patents. Only a written prior use in Germany may hamper utility model protection. Hence, in the case that patent protection has become impossible due to prior use, utility model protection may still be available. The level of inventiveness, however, must be as high as for patents, as the threshold for inventiveness has been harmonized in European Patent Law.
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