As an avid reader of the blog may have guessed, the brief voyage into intricacies of German language made in the previous post is not accidental. Last week Freshfields hosted the JIPLP/GRUR seminar on secondary protection for innovation in Germany. In the centre of scrutiny was the Gebrauchsmuster, or utility model as non-German speakers may call it – a separate patent-like IP right offered for new inventions in Germany.
For an English lawyer the Gebrauchsmuster may seem alien and mysterious – no comparable right existing in English law. However, similar protection is available not only in Germany, but also in other 57 countries.
The idea behind the Gebrauchsmuster and utility models in other jurisdictions, explained by the first speaker Wolrad Prinz zu Waldeck und Pyrmont of Freshfields Bruckhaus Deringer LLP, is that there are ‘small’ inventions which are unlikely to become the centre of a billion lawsuit between two international smartphone manufacturers. The life period of such inventions is shorter than that of ‘normal’ inventions and the legal monopoly in this case is deemed less dangerous. Small and medium enterprises should have easier and cheaper access to the protection of small inventions.
At first sight, a Gebrauchsmuster is in many ways similar to a patent. It can be granted for an invention which is novel, involves an inventive step and is capable of industrial application. An inventor will have to submit an application containing claims, description and drawings. If a Gebrauchsmuster is granted, its owner will acquire a time-limited protection and will be able to claim all remedies which are usually awarded to patent owners (injunctions, damages, destruction and recall of infringing products, etc.).
However, a closer inspection reveals many differences between the Gebrauchsmuster and patents. Substantive requirements for protection are much more easily satisfied in the case of a Gebrauchsmuster. When assessing the novelty of an invention, the German Patent and Trademark Office will only consider written publications and public use in Germany. Possible oral disclosures, secret use or public use outside Germany will not form part of the prior art. Furthermore, the applicants are awarded a 6-month grace period in respect of written disclosures or public use made by them or their predecessors in title. In effect, this means that it is possible to acquire a Gebrauchsmuster for an unpatentable invention (e.g. when there was public use outside Germany). Historically, the Gebrauchsmuster required less inventiveness than the patent. The idea was that there are small inventions which cannot be protected by a patent, but can become a subject matter of a Gebrauchsmuster. However, in 2006 in the case of Demonstrationsschrank the German Federal Court of Justice held that inventions protectable by a Gebrauchsmuster do not deserve special treatment and must show the same level of inventiveness as required in patent law: in some countries, however, utility models are not expected to measure up to the same level of inventiveness. The requirement of industrial applicability for the Gebrauchsmuster is the same, but the list of items excluded from protection is slightly longer. Gebrauchsmuster cannot be granted for biotechnological inventions and processes. Additional exclusions are explained by the difficulty of representing a process in the application.
The registration procedure for a Gebrauchsmuster is also slightly different. The German Patent and Trademark Office will only conduct a formal review of the application, making no examination of its substance. The lack of substantive examination is offset by a shorter length of protection – 10 years from the date of registration (compared to 20 years offered by a patent) and by availability of opposition proceedings which can be started by any person. The application and maintenance fees for a Gebrauchsmuster are smaller than those relating to a patent. In practice, though, this advantage is negated by the fees paid to lawyers and patent attorneys. Despite the fact that applications for a Gebrauchsmuster can be shorter, the claims still need to be drafted with the utmost precision. Should the opposition to a Gebrauchsmuster be successful, the opposing party will usually be able to claim the costs of representation. Even if the court awards only part of the costs, the amount can still be significant. As there is no substantive examination, a Gebrauchsmuster is usually granted faster than a patent (usually within 3 months). Yet again, this may not help the inventor if his or her Gebrauchsmuster is caught in an opposition action started by a watchful competitor.
The scope of protection offered by the Gebrauchsmuster is similar to a patent protection. One rather important difference was highlighted by the second speaker, Karsten Koeniger of Harmsen Utescher – it is very difficult to persuade a court to grant a preliminary injunction when a Gebrauchsmuster is allegedly infringed.
Having considered the main differences between the Gebrauchsmuster and the patent, it would be interesting to see how these two interact with each other. A Gebrauchsmuster can be granted in parallel with a patent. Additionally, if there is a pending patent application, one or more of its claims can be ‘branched off’ and become a subject matter of a separate Gebrauchsmuster. This creates interesting opportunities in protecting inventions. For example, if a patent application is ‘stuck’ at the examination stage or it is necessary to challenge competitors as fast as possible, the inventor can branch off a claim from a patent and apply for a Gebrauchsmuster instead or together with a patent.
So, is a utility model protection a good thing to have? There is no agreement about this. German practitioners would be happy with the Gebrauchsmuster as it allows more flexibility in litigation and increases their revenue. It is difficult to say though that SMEs can substantially benefit from secondary protection. If the same standard of inventiveness is required, the inventor might as well apply for a patent. Smaller costs are often offset by lawyers’ fees. The attitude of English lawyers was aptly summarised by Darren Smyth during the panel discussion. It may be unnecessary and misleading to create special secondary protection, which would be liable to lead to multiplication of patent (Gebrauchsmuster?) trolls and thickets. A better idea may be to try to improve the patent system as a whole with a view to making it more friendly and affordable to SMEs.
Whatever side the reader may feel obliged to take, it should be noted that according to the information provided by Wolrad Prinz zu Waldeck und Pyrmont more than 96,000 Gebrauchsmuster were issued in Germany in 2011 with only 104 cancellation proceedings concluded in the same year. This suggests that the system is working adequately in Germany. On the other hand, it seems unlikely that the countries which do not provide secondary protection will decide to implement it. Further evidence to this view is the negative reaction of the majority of EU member states to the prospect of creating the Community utility model.
More information about the seminar is available on the JIPLP website (here). It also contains insightful presentations made by Wolrad Prinz zu Waldeck und Pyrmont and Karsten Koeniger on which this text is largely based.
The author wants to say a big thank you to Peter Groves for this delightful opportunity to contribute to the blog.