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 1 of this series of articles introduces the basic legal background of utility models.
Allowable Claim Categories
Until the 1980ies, only macroscopic devices and products having a stable three-dimensional structure could be protected by a utility model. But after the so-called “Raumformerfordernis” (requirement of spatial structure) had been deleted from the Utility Model Law in 1986, the jurisprudence of the German Federal Court of Justice became more liberal.
Today, also subject matter having no spatial structure, for example chemical substances, or subject matter having a stable spatial structure only on a microscopic scale, such as molecules, may be protected by a utility model. Moreover, the Federal Court of Justice even confirmed that immaterial subject matter like specific signal sequences may be protected as a utility model (BGH X ZB 9/03).
The main difference between patents and utility models is that methods and processes may not be protected by a utility model. But this is only true if the subject matter of the claim is a method or a process as such.
For example, product-by-process claims, i.e. claims defining a product by its manufacturing process (“product obtainable by the following process: ...”) are admissible (BGH X ZB 19/08).
Moreover, it is also admissible to define features of a claim by their function (BGH X ZB 23/07). These so-called “means-plus-function features” typically have the structure “means for doing something” and are especially useful, as they allow to transform method claim language into product claim language. For example, a claim directed to “a method including step 1 and step 2” cannot not be protected as a utility model, as it refers to a method, whereas a claim directed to “a device including means for carrying out step 1, and means for carrying out step 2” may be protected as a utility model, as it formally refers to a device.
Another important exception are so-called “use claims”. Claims including directions on how to use an object (e.g. “use of a glass for drinking water” or “use of a hammer for knocking a nail into wood”) are considered to be method claims. Therefore, they are excluded from utility model protection.
However, if a use claim refers to the use of an inherent property of a chemical substance for a medical indication, it may be protected as a utility model. For example, the Federal Court of Justice allowed a claim directed to the “use of pharmacologically effective substance for treating cardiovascular diseases” (BGH X ZB 7/03).
As the reasoning of the above-cited decision puts more weight on “inherent property” than on “for a medical indication”, it has been discussed whether utility model protection should be available also for a non-medical use. Unfortunately, the Federal Court of Justice has not yet issued a ruling on this question, but a negative decision is expected in expert discussions.
Due to the jurisdiction of the German Federal Court of Justice, the scope of protection by utility models has been enhanced significantly. Companies may today protect subject matter without spatial structure, immaterial subject matter, claims defining a product by its manufacturing process or by their function and even claims directed to the use of substances in specific circumstances.
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