German Supreme Court Facilitates Utility Model Enforcement

Many European countries, including Germany, allow registration of utility models, indeed, German law permits a utility model (Gebrauchsmuster) to be split out from a national patent application or a European patent application. (See panel “The German Utility Model – An Introduction”.)

The German legislation does not have any provision for amendment, so to satisfy the need for post-registration amendments, it has become long established practice to allow the restriction of the claims by way of filing of a “declaration” at the Patent Office. This declaration, together with the restricted claims, is put on public file and is regarded as legally binding to the effect that the utility model may only be enforced to the extent of the restricted claims.

In a rare German Supreme Court (Bundesgerichtshof - BGH) decision on utility models (Momentanpol, Mitt 2003, 465), this procedure of introducing amended claims in infringement proceedings was reviewed. The BGH also considered the issue of the effect of subject-matter added to a utility model application at the time of splitting off from an earlier patent application.

The utility model at issue in the infringement proceedings had been split off from an earlier European patent application. In the appeal instance before the Regional Court of Appeal (Oberlandesgericht), the defendant argued that the splitting off was inadmissible because it contained subject-matter extending beyond the disclosure of the original European patent application. In response, the claimant filed an auxiliary request to restrict the claims.

The Court of Appeal dismissed the case and held, inter alia, that an action for infringement of a utility model could not be based on claims presented by way of an auxiliary request. The Court found that because the restricted claims of the auxiliary request were presented during the infringement proceedings and therefore not put on public file, there was no legally binding declaration necessary to effect the restriction.

The BGH overturned this decision and held that there was no legal provision barring a utility model proprietor from enforcing his right on the basis of restricted claims not previously filed at the Patent Office.

Referring to the question of whether this comprised legal certainty, the BGH stated that the defendant’s position was safeguarded by the possibility of challenging the validity of the claims. Also, the public was generally not affected by strategies adopted by the parties to inter partes infringement proceedings. Furthermore, the claimant and defendant were free to provide legal certainty by either restricting the claims on public file or initiating revocation proceedings, respectively.

 

Comment

This decision makes the enforcement of utility models easier. If an infringement action is to be based on new claims, e.g. claims better distinguished from the prior art and/or better covering an infringement, these can be introduced in the proceedings simply by presenting appropriate requests.

The BGH also rejected the defendant’s argument that the splitting off had been inadmissible due to added subject-matter. It found that although claims containing added subject-matter were not enforceable, the admissibility of the splitting off was unaffected. This will in practice reduce the risk of (inadvertently) invalidating a utility model by making amendments at the time of splitting off.