In addition to patents, there is a utility model in Germany, which is codified in the Utility Model Act (“Gebrauchsmustergesetz”, GebrMG).
In contrast to patents, which are substantively examined before grant, German utility models are registered after an examination for formal criteria only.
Since a utility model is not substantially examined prior to registration, its validity can directly be challenged as a defence argument in utility model infringement procedures. This is different from nationally granted German patents or German parts of a granted European patent, wherein the validity can exclusively be challenged in a separate nullification procedure.
With respect to patents, Germany applies a first-to-file principle so that generally any disclosure of an invention before the priority date of an application is novelty-destroying. The German utility model by contrast enjoys a six-month grace period (section 3 GebrMG) so that a public disclosure by the inventor himself or his legal successor within the last six months before the priority date is disregarded. Further, a public prior use is generally disregarded, if it occurred outside Germany.
Unlike German patents, German utility models cannot be registered for method claims (section 2 GebrMG). However, claims directed to a data carrier with a program comprising instructions may be admissible. Also, means plus function claims are admissible — for example, for a telecommunication apparatus.
Once the validity of a utility model is challenged, the question of whether the claimed invention is directed to non-statutory subject matter will also be investigated (as well as the standard questions of novelty and inventive step). Apart from the exclusion of methods, the criteria for statutory subject matter to be applied are the same for utility models as for patents.
This is an excerpt of the “Germany” chapter of “Software Patents Worldwide” by Dr. Hans Wegner and Bastian Best. Reprinted from Software Patents Worldwide, Suppl. 22, December 2015, with permission of Kluwer Law International.
Originally published at www.europeansoftwarepatents.com on February 15, 2016.
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