Monday, May 11, 2015

German Court Grants Preliminary Injunction for Alleged Infringement of a Utility Model

Many countries (not including the U.S., the U.K., or Canada) grant a form of intellectual property protection commonly referred to in English as a "utility model" or "petty patent."  As I discuss in my book (pp. 16-17):
. . . traditionally a major substantive difference between utility patent and utility model protection is that the latter is available for inventions that demonstrate a lesser inventive step than would be required for the former.  In addition, in many countries applications for utility models are not subjected to any substantive examination prior to grant, although some systems require the owner of a registered utility model to request a substantive examination prior to filing suit for infringement; and utility models can be invalidated if an interested third party or infringement defendant succeeds in demonstrating that one or more of the statutory preconditions for protection are lacking.  Like a patent, a valid utility model prohibits the unauthorized manufacture, use, or sale of the protected subject matter, though for a shorter term.
Germany has long been one of the leading countries for granting utility models (known in German as Gebrauchsmuster), and the German law on Gebrauchsmuster has some interesting features.  First, Gebrauchsmuster are available for any type of invention other than a process or a biotechnological invention.  Second, "[f]or purposes of determining novelty and inventive step . . . the relevant state of the art is limited to written descriptions and public uses within Germany, and thus is narrower than the state of the art relevant to determining patentability. In addition, the inventor is accorded a six-month grace period within which she may disclose or use the invention without forfeiting the right to obtain Gebrauchsmuster protection."  Third, in 2006 the German Federal Supreme Court held that the inventive step requirement for Gebrauchsmuster and for patents is the same.  Inventors nevertheless continue to obtain them for a variety of reasons.  For example, an inventor can "branch off" her utility patent application and apply for a Gebrauchsmuster on the identical invention.  The Gebrauchsmuster will typically issue first, since it is not examined, and the inventor can then attempt to enforce it while her utility patent application remains pending (see my book pp. 237-38).

Because Gebrauchsmusters are registered without any substantive examination, you might expect that it would be very difficult to obtain a preliminary injunction for the alleged infringement of one; and you would be right.  But difficult is not impossible; and in one recent case (Judgment of Nov. 27, 2014, 327 O 559/14--Hydraulikschlauchgriffteil, reported at GRUR RR 4.2015 pp. 137-40) the Hamburg District Court granted a preliminary injunction for  the alleged literal infringement of a Gebrauchsmuster covering a grip for a hydraulic hose.  The moving party argued that the Gebrauchsmuster was valid, based on a research report prepared by the German Patent & Trademark Office that disclosed a relevant but nonidentical prior art device; and that the need for an injunction was urgent, because the defendant was exhibiting its model at trade fairs and offering them at significantly lower prices.  The court granted the injunction, stating that while it is a precondition for the granting of a preliminary injunction that there be a high probability of validity, it is not necessary that the patent already have undergone a further examination in an opposition or invalidation proceeding--though when this is not the case, an injunction is appropriate only if, after careful examination, validity can be adequately established.  With respect to Gebrauchsmusters in particular, the court must always engage in its own analysis of validity and permit the opposing party to participate in proceedings.  Here, these conditions were met, as the court could examine the subject matter, which was neither highly complex nor unusual, on the basis of its own expertise.  Based on its analysis, the court concluded that the Gebrauchsmuster was valid and infringed, and granted the injunction.  

No comments:

Post a Comment