Editorial - The 125th anniversary of the German utility model – A reason to celebrate?

For our current issue, Editorial Board member Karsten Königer (Harmsen Utescher, Hamburg) has penned a very interesting editorial on utility models in Germany, first introduced in 1891. Karsten calls for a reflection on the role of utility models, highlighting several reasons (e.g. requirements for protection, costs, etc.) that explain why "the German utility model does not meet the apparent expectations of the German legislator."

The 125th anniversary of the German utility model – A reason to celebrate? 

Karsten Königer

On 1 October 1891, the first German Act on Utility Models (“Gebrauchsmuster”) came into force – creating a new industrial property right for technical inventions, in addition to the patent. 
125 years later, there are about 85,000 registered German utility models in force (the maximum term of protection is ten years). Can we be congratulated? Have the legislator’s expectations been met? 
In 1985, in a proposal for a new version of the Act, which was later enacted, the German government gave the following reasons for the utility model: ‘The utility model is mainly [designed] to quickly and inexpensively make available a manageable industrial property right for sole inventors and small and medium-sized enterprises for their everyday life inventions.’ The term ‘everyday life inventions’ was apparently used to describe inventions that involve only a small inventive step. 
The German utility model can indeed be obtained quickly. It is registered without examination within a few months after application and gives rise to injunctive relief. It can also be created by ‘branching off’ from a patent application or from a patent under opposition. In this respect, the utility model meets the expectations of the German legislator. But what about the other goals? 
In the year 2006, the German Federal Court of Justice held that regarding the requirement of inventive step in utility model law the same principles apply as in patent law. The court stated that it could not find a capable criterion for protectability that lies between non-obviousness in terms of patent law and novelty. Thus, apart from a different definition of the state of the art - German utility model law provides a grace period! - only inventions that would also meet the requirements of patentability can be protected by a German utility model. Why then should an inventor file a utility model application instead of a patent application - and waive ten years of protection? 
As mentioned above, the German legislator had the idea that the utility model was, compared to the patent, manageable, i.e. easy to handle, and cheaper. In reality, however, a utility model application is as difficult as a patent application. Moreover, unlike in the patent granting procedure it is not possible to correct certain mistakes. The German utility model application has the same structure as a patent application: claims, description and possibly drawings. The scope of protection is determined by the claims as it is for patents. This structure requires that a utility model application is written by a person who is as competent as an educated patent agent. The idea that a utility model application needs less care and competence than a patent application can have fatal consequences especially for sole inventors. 
As regards costs, the differences between the official fees for the application and maintenance of a utility model and a patent, respectively, are rather symbolic. The significant costs for the utility model application and the patent application are the attorney’s fees anyway. Thus, also from the financial point of view, there should be no reason for an applicant to prefer a German utility model to a German patent application. 
In sum, the German utility model does not meet the apparent expectations of the German legislator. It can be a useful additional tool for the inventor. However, these advantages for the inventor, if wanted, could be reached by small changes to patent law: re-introduction of a grace period and, if desired, injunctive relief based on a published patent application (cf. Article 67 EPC). More problematic than the limited usefulness of the German utility model is, in my view, that it also causes costs that have to be paid by competitors who are confronted with the registration of the unexamined right. Since the utility model is not examined by the Patent Office, the competitors are forced to examine the validity of the claims. These costs can be especially high for small and medium-sized companies (SMEs) which are not used to such examinations and need more advice. Thus, in many cases, SMEs are not the beneficiaries of the fact that the utility model is not examined, but the victims. 
Considering, I hesitate to say “Stay as you are” and to wish for another 125 years. 
© The Author(s) 2016. Published by Oxford University Press. All rights reserved.