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


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.

China issues plan to develop intellectual property

Source: Xinhua

BEIJING, Jan. 13 (Xinhua) -- China has issued a plan to strengthen the protection and utilization of intellectual property rights.

Issued by the State Council, the plan specifies the goals and major tasks for the development of intellectual property during the 13th Five-Year Plan (2016-2020), and proposes measures for the work.

By 2020, China's invention patent ownership will increase from 6.3 per 10,000 people in 2015 to 12 in 10,000, and international applications will double to 60,000 from 30,000 in 2015, according to the plan.

In the meantime, intellectual property royalties earned abroad will rise from 4.44 billion U.S. dollars in 2015 to 10 billion U.S. dollars in 2020, the plan says.

The plan puts forward seven major tasks for the development of intellectual property, such as improving the legal system for intellectual property rights, strengthening protection of intellectual property rights, improving quality and benefits, promoting industrial upgrading, and promoting international cooperation and exchanges.

It urges governments at all levels and relevant government agencies to attach importance to the issue and promote implementation of the plan.

World Intellectual Property Day – April 26, 2017

Source: wipo

Every April 26, we celebrate World Intellectual Property Day to learn about the role that intellectual property rights (patents, trademarks, industrial designs, copyright) play in encouraging innovation and creativity.

In 2017 we celebrate Innovation – Improving Lives

Every day, ordinary people are producing extraordinary new things to change the world for the better.

Their innovations take myriad forms, from the mundane to the seemingly miraculous: A billboard in Peru that harvests water from the air, supplying the local community with clean drinking water; a 3D-printer at an American university that regenerates damaged human tissue; a mobile money transfer and microfinancing service from Kenya, renewable energy solutions that power fridges in rural India; a graphene battery from China that charges a mobile phone in minutes; cutting-edge assistive technologies from the Russian Federation to help people with disabilities perform everyday tasks.

Problems to progress

From new medicines and materials to improved crop varieties and communications, innovation is making our lives healthier, safer, and more comfortable.

Innovation is a human force that knows no limits. It turns problems into progress. It pushes the boundaries of possibility, creating unprecedented new capabilities.

World Intellectual Property Day 2017 celebrates that creative force. We’ll explore how some of the world’s most extraordinary innovations have improved our lives; and how new ideas are helping tackle shared global challenges, such as climate change, health, poverty and the need to feed an ever-expanding population.

We’ll look at how the intellectual property system supports innovation by attracting investment, rewarding creators, encouraging them to develop their ideas, and ensuring that their new knowledge is freely available so that tomorrow’s innovators can build on today’s new technology.

Your turn

Which innovation has most improved your life? What more can be done to make sure new technologies reach the people who need them?  What do you think should be the priorities for future innovation?

Join the conversation: #worldipday

More about World IP Day

In 2000, WIPO's member states designated April 26 – the day on which the WIPO Convention came into force in 1970 – as World IP Day with the aim of increasing general understanding of IP.

Since then, World IP Day has offered a unique opportunity each year to join with others around the globe to consider how IP contributes to the flourishing of music and the arts and to driving the technological innovation that helps shape our world.

Intellectual Property index: India remains near bottom


Only two countries were ranked below India – Pakistan (44th) and Venezuela (45th).

India remains near the bottom in an international Intellectual Property (IP) index by being ranked 43rd out of 45 countries, according to a report by the U.S. Chamber of Commerce’s Global Intellectual Property Center (GIPC).

The report said it includes 90% of global gross domestic product, and grades countries on patents, trademarks, copyright, trade secrets, enforcement, and international treaties. Only two countries were ranked below India – Pakistan (44th) and Venezuela (45th). The U.S., the U.K., Germany, Japan, Sweden, France, Switzerland, Singapore, South Korea and Italy completed the top 10 ranks. Among the BRICS countries China was ranked 27th, South Africa (33rd), Brazil (32nd) and Russia (23rd).

The report added, “While the Indian government issued the National Intellectual Property Rights (IPR) Policy in 2016, IP-intensive industries continued to face challenges in the Indian market with regard to the scope of patentability for computer-implemented inventions, Section 3(d) of the Indian Patent Act (that prevents ever-greening of patents), and the recent High Court of Delhi decision regarding photocopying copyrighted content.”

The report said, India’s key areas of weakness includes that “overall, National IPR Policy does not address fundamental weaknesses in India’s IP framework, limited framework for protection of life sciences IP, patentability requirements being outside international standards, lengthy pre-grant opposition proceedings in place, and the 2016 High Court ruling on copyright infringement in the University of Delhi copy-shop case continuing to weaken the enforcement environment for rights holders.”

It added that another of India’s weaknesses was also that it had “previously used compulsory licensing for commercial and nonemergency situations, (as well as India’s) limited participation in international IP treaties.”

The report said its key findings included that a number of countries introduced new enforcement mechanisms and specialized IP courts to better combat counterfeiting and piracy. Besides, free trade agreements signed in 2016 helped raise the bar for protection of life sciences IP, copyrighted content online, and enforcement against IP theft, it said.

“Various governments undertook a review of their IP laws, recognizing that IP laws must keep pace with the emerging challenges IP owners face. Economies leveraged international partnerships through Patent Prosecution Highways,” it said, adding that despite these positive developments, some countries took steps to restrict IP rights in 2016. Also, countries introduced new requirements for local production, procurement, and manufacturing.

The report further said, “A number of governments attempted to limit the scope of patentability via both judicial decisions and legislation. Both individual governments and representatives of the multilateral institutions encouraged public officials to utilize compulsory licenses and expand exceptions and limitations in the name of increasing access.”

Firms ignorant of intellectual rights

Source: vietnamnews

HÀ NỘI (VNS) — Many Vietnamese firms are indifferent to intellectual property rights regulated in the Trans Pacific Strategic Partnership (TPP) agreement, despite the fact that Việt Nam is a signatory to the deal, Deputy Minister of Industry and Trade Trần Quốc Khánh said.

Khánh said during a talk show held by the Government’s Portal yesterday in Hà Nội that businesses’ awareness regarding the issue was limited and inadequate.

Without effective measures, it would be very difficult for Vietnamese firms in particular and the country in general to participate in the TPP deal, he said. Once the deals took effect, Vietnamese businesses would have to spend more time on lawsuits.

 “If we do not conduct specific measures and impose stiffer penalties on the violation of intellectual property rights, we will cause severe damage and losses for individuals and organisations that have patented inventions – not to mention we are also showing our disrespect to the inventors and discouraging them to create and invent more,” Khánh said.

Another important thing to note was that Việt Nam currently only imposed administrative punishments on intellectual property rights violations, he said. But the TPP includes criminal penalties for such crimes. Violators may receive warnings and administrative fines or be imprisoned, depending on the severity of the crimes.

Lê Ngọc Lâm, Deputy Director of the Intellectual Property Rights Department under the Ministry of Science and Technology said intellectual property rights issues in the TPP deal were different from other trade agreements.

“There are things stipulated in the TPP that we’ve never thought of, such as the protection of copyrights about scents, flavours and sounds,” Lâm said. “That is obviously a real challenge for the business community.”

He said the wave of foreign investment pouring into Việt Nam was likely to trigger disputes about intellectual property rights issues. It was no coincidence that when investing in Việt Nam, most foreign firms asked the Government to commit to protect their intellectual property rights.

Intellectual property violations hurt all Vietnamese enterprises and the entire economy. They stop Việt Nam from accessing and utilising the world’s technological advancements, Lâm said.

Lâm said enforcement in Việt Nam was still limited. This was one of the weakest aspects of the country’s legal system.

There is no Vietnamese court that specialises in handling intellectual property rights cases. Many trademark and design disputes remain unsolved.

Vũ Thị Thuận, chairman of the board of directors of Traphaco Pharmaceutical JSC, said the TPP deal would also provide Việt Nam with more opportunities to make the business environment transparent and predictable.

In particular, strengthening protection for intellectual property rights will create opportunities to attract more investment in knowledge-based sectors such as pharmaceutical production like vaccines, Thuận said.

Thuận said the domestic businesses must adapt themselves to the TPP’s intellectual property right regulations, adding that the firms must also make changes in accordance with new legal regulations.

Khánh said Vietnamese firms should improve their understanding of international laws to enhance the recognition, application, development and protection of intellectual property rights; promote research and innovation; and apply science and technology for greater quality and productivity.

He added that the Government and law enforcement agencies needed to improve knowledge and experience to be able to handle cases related to intellectual property rights and build a stronger legal framework in line with the regulations of the TPP. — VNS