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? The concluding Part 4 of this series looks amendments to the claims of utility models and how the validity of utility models may be challenged.
Before registration, the applicant is entitled to amend the specification, claims and drawings as long as the amendments do not go beyond the original disclosure of the utility model.
After registration, only amendments to the claims are admissible, and this only if they are limiting the scope of protection of the utility model and do not go beyond the utility model’s original disclosure. Amendments to the claims of a registered utility model may be based on the overall disclosure of the utility model, i.e. not only based on its claims.
Any amendments to a registered utility model have to be accompanied by a legally binding declaration that the utility model owner will not enforce the utility model against third parties on the basis of claims having a broader scope of protection.
The validity of a utility model may be attacked in two different types of proceedings:
First of all, the validity of a utility model may be attacked by a so-called cancellation action (first instance: German Patent and Trademark Office, second instance: Federal Patent Court). Cancellation actions are similar to nullity actions against patents, and as such they are considered to be contradictory proceedings. One consequence is that the costs of the prevailing party have to be reimbursed by the losing party.
In addition, or as an alternative, the validity of a utility model may also be challenged by an invalidity counter-claim raised during utility model infringement proceedings.
So, the defendant in utility model infringement proceedings may first try to challenge the utility model's validity by raising an invalidity counter-claim, and, if contrary to his expectations the infringement court should deem the utility model to be valid, he may then file a cancellation action against the utility model.
It should be noted that raising an invalidity counter-claim is not admissible in patent infringement proceedings. This difference is due to the fact that patents are examined protective rights for which the German Patent and Trademark Office has issued a decision to grant which may not be put into question by the infringement courts.
Grounds for Cancellation
The possible grounds for the cancellation of a utility model are listed in §15 (1) Utility Model Law:
no. 1: The utility model is not valid over the prior art.
no. 2: The utility model has been identically protected by an earlier patent or utility model (cf. section 3.3).
no. 3: The utility model goes beyond the original disclosure.
It should be noted that, although insufficiency of disclosure is not listed as a separate ground for cancellation, the jurisprudence of the infringement courts (invalidity counter-claim) and the Federal Patent Court (cancellation action) deems insufficiency of disclosure to be such a fundamental requirement for the validity of a utility model that it is said to be included in cancellation ground no. 1.
No claim fees have to be paid for a utility model application, while 20 euros per claim have to be paid for the 11th and each further claim of a German patent application. In other words, a utility model may include as many claims as the applicant desires.
A further difference between utility models and patents is that the period of protection of utility models is not extended annually, but rather in blocks, the first and the second block each including three years, and the third and fourth block each including two years. It is to be noted that the overall annuities which have to be paid within the first ten years of a patent’s lifetime amount to only 330 euros more than the overall sum of the extension fees for a utility model.
Obtaining utility model protection may not only be much less time consuming than patent protection, costs are way lower. Competitors may challenge the validity of the utility model by raising an invalidity counter-claim and, when this has failed, by filing a cancellation action against the utility model. So while patents are granted after being examined by the Patent Office and hence invalidity claims are not admissible, counter-claims against merely registered utility models may be one of the drawbacks of patents’ grown-up brother.