Germany

BGH abolishes differential in inventive step between patents and utility models

Utility models may be a useful alternative to patents. Like patent protection, utility model protection is available for technical inventions that are novel and inventive. It features speedy registration (there is no search or examination for novelty and inventive step), a restricted state of the art that excludes public use abroad, and a 6-month grace period. An additional feature was a reduced inventiveness requirement. That was until the German Supreme Court handed down its decision in “Demonstrationsschrank” (GRUR 2006, page 842).

According to the German Utility Model Act, an invention can be protected through a utility model if it is novel and based on an “inventive step” (erfinderischer Schritt). In contrast, for the same invention to be patentable, it must involve an “inventive activity” (“erfinderische Tätigkeit”). According to the German Patents Act, an invention involves an “inventive activity” if it is not obvious to the skilled person in the art. This is in line with the European Patent Convention. The German Utility Model Act contains no such “definition” of “inventive step”.

In coming to its decision, the German Supreme Court BGH observed that the intention to “distinguish” utility models from patents was well provided for, particularly by the above mentioned differences in the state of the art. Thus, the BGH saw no “need” to further distinguish utility model protection from patent protection. In any case, there was no sensible approach to “measuring” inventiveness in different ways. The question of inventiveness was one of “quality” not “quantity” which was the same for utility models and patents.

 

Comment

For the patent practitioner, explaining the inventive step requirement to his clients is not always easy. However, explaining the difference between an “inventive step” and an “inventive activity” was near impossible. Thus, from a purely practical point of view, this decision provides a welcome simplification.

It also provides more certainty. The inventiveness of a utility model can now be assessed taking into account well established case law hitherto only applicable to patents. Utility models will remain useful where the applicant needs to make use of the grace period, or where a rapid grant is required. Applicants can no longer assume, however, that trivia can be protected through the utility model system.