Recent decisions on German utility model registration

Two recent decisions on utility models highlight difficulties in the utility model registration procedure.

Utility model registration in a nutshell

Compared to a patent, the utility model is simple and inexpensive to register, but one should not expect it to be too simple.

When an applicant files a utility model, the German Patent and Trademark Office (DPMA) verifies only the following requirements:

• Completeness of application documents
• In case amendments are filed or it is a divisional: original disclosure
• Unity of invention
• Language/translation
• Excluded subject-matter, in particular methods (exception: therapeutical use of pharmaceuticals)

In most cases, the requirements are immediately met. If not, the DPMA invites the applicant to amend, and if errors are not corrected, refuses the application. The applicant can have the registration delayed by up to 15 months from priority date.

If the requirements are met, the DPMA conducts a three-step process: First, the DPMA issues a decision to register, similar to a decision to grant a patent. In most cases, this decision is titled “Verfügung” (which refers to an internal decision), not appealable, and not even sent to the applicant. Only in exceptional cases, e.g., where an auxiliary request is allowed, is the decision titled "Beschluss", sent to the applicant, and appealable (BPatG 5 W (pat) 8/81). By keeping most decisions internal, the DPMA need not wait until the 1-month appeal deadline before registering the Utility Model, as it does with patents. This is also in line with the wording of the statute ("verfügt … die Eintragung").

Under s. 4 (5) Utility Model Act, amendments to the application are possible only until the decision to register. Current practice of the DPMA is that withdrawal and delay of registration are possible only within the same time frame (communication No 8/11 of the President of the DPMA).

Second, the DPMA executes the decision by registering the Utility Model. The utility model registration is available for public inspection on the register, and anyone can retrieve description, claims and figures from the DPMA by request. Therefore, the Utility Model is considered published and thus prior art to any later application, from that day on. The registration is usually done about 6 weeks after the request (either filing date or branch-off request).

Unlike with patents, it is the registration that legally creates the utility model (and annihilates the application), rather than the decision to grant. Therefore, applying for a utility model means requesting registration, and not grant. From registration, the utility model can be used against an infringer. This is markedly different to a patent, which exists from the earlier moment when the decision to grant becomes final and binding, i.e. at the end of the appeal period or appeal proceedings, but claims for an injunction or damages can only be brought in respect of infringing actions after the publication of the mention of grant.

However, this does not imply that the entry in the register is constitutive for the existence of the utility model. For example, if the DPMA erroneously registers a utility model based on an application that was withdrawn or deemed withdrawn, the registration only leads to a wrong entry in the register.

Third, the DPMA publishes the mention of registration in the Patent Gazette and issues the utility model specification, usually on the same day, and sends a copy to the proprietor together with the registration certificate. The publication of a utility model specification is not required by law, but a long-standing practice that serves the public interest to be informed about the existence of the IP rights.

Recent decisions

The registration of utility models is rarely problematic. The Federal Patent Court has only one, viz. the 35th, Board of Appeal for Utility Models. It has decided 32 cases in 2023, almost all of which are appeals from DPMA decisions on revocation requests. Only two decisions relate to the procedure up to registration.

In a recent decision (BPatG 35 W (pat) 11/22 Schranknivelliervorrichtung), the Federal Patent Court had to decide about an appeal by a third party against a decision to amend a registration. It decided that such a decision is appealable. However, and very unsurprisingly, it rejected the appeal as inadmissible because the appellant was not party to the first instance proceedings. Nonetheless, the judgment contains an interesting obiter dictum. In fact, the utility model applicant / proprietor had included claim-like clauses at the end of the description, and the DPMA mistakenly used and published them as claims instead of the actual claims filed by the applicant. To make matters worse, the DPMA reacted to a request to amend the decision by simply changing the register entry and issuing a corrected utility model specification. The Court found this to be wrong for, inter alia, the following reasons:

First, the register entry was not necessarily erroneous since it could have corresponded to the content of the decision to register. Therefore, to honour the applicant's request, the DPMA would have had to amend both the decision to register and the entry in the register to conform to the application. The court also expressed some reservations against the DPMA's practice not to make the decision to register retrievable by online file inspection.

Second, the request for correction was the wrong type of request in the first place. It only allows correction of clerical mistakes. In this case, the applicant should have appealed the decision to register. This part of the Boards's decision challenges the DPMA’s opinion according to which the decision to register is only an internal procedural step that does not create rights or has any other effect outside the Patent Office. The Board did not see a problem in the fact that the applicant is not informed about the right to appeal. In this case, the appeal deadline is extended to 1 year from the communication of the decision. Since the decision is not sent to the applicant, the period should - according to the board - run from the day the applicant receives the utility model specification, which usually happens shortly after the publication of the mention of registration in the Patent Gazette.

In a more recent decision (BPatG 35 W (pat) 11/23 Antrieb für mobile Gegenstände) the applicant, who was not represented, had filed a utility model with a request to delay registration by 15 months. Within the priority year, the applicant filed a patent claiming the utility model's priority and - erroneously - thought that the application was deemed withdrawn. This is, however, only the consequence of claiming inner priority of the same type of IP right. When the DPMA registered the utility model, the applicant appealed the decision to register. The Court decided that the decision to register is indeed appealable, and in this case the appeal was also admissible. It was unsuccessful because the application had in fact not been withdrawn.

Comment

Despite referring to the actual registration of the utility model as a purely technical act, the decision “Schranknivelliervorrichtung” increases its legal significance by stating that withdrawal of the application is possible until then and not only until the moment when the decision to register is taken, a time the applicant is not informed about. This has now been confirmed by the decision “Antrieb für mobile Gegenstände”. This is beneficial for applicants who want to withdraw the application in the last minute. It is also sensible in that it enables the applicant to withdraw the utility model application during the entire duration of its pendency. Although the Board was not explicit about this, the last day on which the application can be withdrawn is likely the day before registration. Applicants should, however, not rely upon this possibility because a withdrawal filed only after this decision was made is likely to be so late that the publication cannot be prevented anymore.

Another aspect in the decisions is that the decision to register is clearly seen as appealable, confirming an earlier decision (35 W (pat) 1/11). The DPMA's practice of issuing decisions without notice, not informing applicants about their rights, and registering utility models without any prior warning has been criticised in the literature, e.g. GRUR-RS 2024, 2496. It is, however, advantageous for applicants because it accelerates proceedings in proceedings that are unproblematic in the vast majority of cases.

As long as the DPMA does not change its practice, the applicant has a 1-year appeal period in most cases due to the lack of notification. Only in the rare “problematic” cases (e.g. only an auxiliary request is granted), the DPMA serves the decision to enable the applicant to file an appeal. It seems at first glance ironical that this actually shortens the appeal period by more than 11 months. This is, however, somewhat justified because the applicant is aware that there may be problems in this case. By contrast, in the majority of unproblematic cases, it should be justified to rely on the DPMA's capability to register a utility model as requested. Nonetheless, it is always better to check the specification for mistakes to be sure, as is all too well illustrated by the "Schranknivelliervorrichtung" case.