Utility model cancellation proceedings

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The utility model deletion procedure is an official procedure which, under certain conditions (see below), can lead to the deletion of a registered utility model from the register for utility models maintained at the German Patent and Trademark Office (DPMA), the so-called utility model register, Section 17 (1) sentence 2 Utility Model Act (GebrMG). The utility model can also be partially deleted, Section 15 (3) sentence 1 GebrMG.

Procedural principles

Request

The (complete or partial) deletion of the utility model requires a corresponding written, i.e. H. signed by the applicant or his legal representative, application, § 16 sentence 1 GebrMG. "The application must state the facts on which it is based", sentence 2 of the aforementioned provision. The applicant must therefore substantiate the request for cancellation. If the application has formal and / or content deficiencies, this does not automatically lead to the rejection of the requested deletion. Rather, the DPMA will endeavor ex officio to work towards a clear and pertinent application formulation in accordance with Section 139 (1) of the Code of Civil Procedure (ZPO).

Jurisdiction

The DPMA is responsible in the first instance for receiving the cancellation request as well as carrying out and deciding on the utility model cancellation proceedings. This results from § 16 sentence 1 and § 17 GebrMG.

Authority to apply

Deletion Request Eligibility

Anyone is authorized to apply for the deletion of a utility model: According to Section 15 (1) of the GebrMG, “everyone ... against the registered owner” has, under certain conditions (see below), a right to delete the utility model (popular claim). The utility model cancellation procedure is a popular procedure in this respect. No special legal or economic interest is required for the assertion of the cancellation claim.

Exceptions

  1. However, the utility model owner cannot apply for the deletion of his own utility model in accordance with Section 15 (1) of the GebrMG. The only option left is to waive the utility model and any claims arising from the utility model against third parties in the past.
  2. An essential exception to the popular claim to deletion of utility models is standardized in Section 15 (2) of the GebrMG: According to this, “in the case of Section 13 (2) ... only the injured party is entitled to deletion”. This is what is known as unlawful removal (“ theft ” of intellectual property ). Section 13 (2) of the GebrMG reads: "If the essential content of the entry is taken from the descriptions, drawings, models, equipment or facilities of another person without their consent, the protection of the law does not apply to the injured party". The "injured party" is the author ( inventor ) (or his legal successor ) of the invention that has been illegally registered as a utility model by someone else .

Exclusion of the right to apply

Furthermore, the application for the deletion of utility models can be excluded under special circumstances. This is e.g. This is the case, for example, if a non-challenge agreement regarding the challenged utility model had previously been made between the applicant and the utility model owner. An application for cancellation made by the applicant nonetheless must then be rejected by the DPMA as inadmissible due to a breach of good faith ( Section 242 of the German Civil Code (BGB)). The deletion request of the exclusive licensee is also regularly inadmissible .

Implementation of the procedure

The utility model cancellation procedure is carried out by the DPMA on an adversarial basis. Pursuant to Section 17 (1) Sentence 1 of the GebrMG, it "notifies the owner of the utility model of the application and asks him to declare himself within one month. If he does not object in time, it will be deleted", sentence 2 of the aforementioned provision. The (official) utility model cancellation procedure is therefore similar to a legal process. Since it is carried out as a "one-stage" adversarial procedure before the DPMA, which is responsible for all disputes arising in the course of this, there is no need for an upstream court procedure, as is necessary in many cases for design deletion. For those involved, in particular for the deletion applicant, this usually means a reduction in work and costs to an appropriate and justifiable level.

decision

The DPMA decides on the cancellation request on the basis of an oral hearing by resolution, Section 17 (3) sentence 1 of the GebrMG. "The resolution is to be announced in the date in which the oral hearing is closed or in a date to be scheduled immediately", Section 17 (3) sentence 2 of the GebrMG. According to sentence 3 of the aforementioned provision, the resolution "must be justified, made out in writing and served ex officio to the parties involved". The decision can be for the application to be rejected, for complete or partial deletion or for clarification of the utility model. The DPMA also determines "to what extent the costs of the proceedings are borne by the parties involved", Section 17 (4) sentence 1 of the GebrMG. With regard to the details to be observed here, Section 17 (4) sentence 2 of the GebrMG refers to Section 62 (2) and Section 84 (2) sentences 2 and 3 of the Patent Act (PatG). Pursuant to Section 17 Paragraph 3 Clause 4 GebrMG in conjunction with (in conjunction with) Section 47 Paragraph 2 PatG, the decision must be combined with instructions on legal remedies .

Effect of the utility model cancellation

If the DPMA decides to delete the utility model in its decision, the decision has retroactive effect, i. H. the wrongly registered utility model is deemed non-existent from the start ( ex tunc ). The effect of the resolution not only affects those involved in the proceedings (cancellation applicant and utility model holder), but is directed at everyone. At the time of res judicata , a utility model infringement action brought by the cancellation decision pending, it must of the order concerned court of law to be rejected because of the above-mentioned effect of the cancellation decision as unfounded. If the request for cancellation is rejected, this decision also becomes legally binding, although it is only effective between the parties to the cancellation procedure, but not against third parties.

Demarcation, differences

The institute of opposition to a patent is also familiar with German and European patent law . The German patent law also know the institute of the nullity suit against a patent. Substantially, the same questions are discussed in the opposition and the nullity action as in a cancellation request, but relating to a patent, not a utility model. Thus, the application for cancellation is the only formal procedure in which the protectability of a utility model can be expressly checked.

Proper deletion maturity in infringement proceedings : In the utility model , injury process it is - unlike in patent infringement litigation - allowed to make the lack of protection ability of the utility model as a defense against the charge of utility model infringement claims if and was as long as no decision on cancellation proceedings between the parties that the Utility model is maintained (at least in part). The infringement court can then, if necessary, reject the infringement action on the grounds that it does not consider the utility model to be protectable (ready for cancellation). However, this no longer applies if the utility model was obtained in a deletion application procedure between the same parties. Then the infringement court is bound by this decision ( § 19 GbrMG).

Appeal

complaint

An appeal to the Federal Patent Court is admissible against the decision (s) in the utility model cancellation procedure. This results from § 18 Abs. 1 GebrMG i. V. m. Paragraph 2 of this regulation. Because "an appeal to the patent court takes place against the decisions ... of the utility model departments", § 18 Abs. 1 GebrMG. From Section 18 (3) of the GebrMG it emerges that the utility model department is responsible for a resolution that decides on the application for cancellation . According to § 18 Abs. 3 Satz 1GebrMG decides "on complaints ... against decisions of the utility model departments a board of appeal of the patent court", namely "with one legally qualified member and two technical members", sentence 2 of the aforementioned regulation. "If the complaint concerns a resolution that was issued in a cancellation procedure, then Section 84 (2) of the Patent Act shall apply accordingly to the decision on the costs of the proceedings ", Section 18 (2) sentence 2 of the GebrMG.

Legal complaint

According to § 18 Abs. 4 GebrMG "against the decision of the Appeals Board of the Patent Court, through which a decision is made on a complaint according to paragraph 1, ... the appeal on points of law takes place at the Federal Court of Justice if the Appeals Senate has admitted the appeal in the decision". Section 18 (4) sentence 2 refers in this regard to Section 100 (2) and (3) and Section 101 to Section 109 of the Patent Act. "The legal complaint is to be admitted if

  1. a legal question of fundamental importance is to be decided or
  2. the further development of the law or the securing of a uniform jurisprudence requires a decision of the Federal Court of Justice ", § 100 Abs. 2 PatG.

Pursuant to Section 100 (3) of the Patent Act, there is no need for approval to file a legal complaint against the decisions of the Board of Appeal of the Patent Court if one of the procedural deficiencies listed under numbers 1 to 6 of this standard is present and is complained about by the complained party.

Substantive legal foundations

The substantive legal basis for the deletion of the attacked utility model is determined in accordance with Section 15 (1) and (2) GebrMG.

Lack of protection

A popular claim for deletion of the utility model is given in accordance with Section 15 Paragraph 1 No. 1 of the GebrMG if the subject of the utility model is not protectable according to Section 1 , Section 2 and Section 3 of the GebrMG. Section 1 (1) of the GebrMG requires that the utility model object be protected if it is an invention that is new, based on an inventive step ("inventive step") and is commercially applicable. A definition of what is considered "new" can be found under Section 3 (1) of the GebrMG. Paragraph 2 of this regulation defines what is "commercially applicable". The law does not provide a definition of the “inventive step” required beyond this. According to the highest court rulings, a possible inventive step on which the utility model object is based must be measured in a mosaic-like manner against the same state of the art that is to be used as a basis for assessing novelty according to Section 3 GebrMG. A (non-exhaustive) list of creative achievements that are not recognized as a protected utility model object within the meaning of the GebrMG can be found under Section 15 (2) No. 1 to 5. (Further) reasons for exclusion can be found in Section 2 of the GebrMG.

Older rights

According to Section 15 (1) No. 2 GebrMG, everyone is also entitled to the deletion of a utility model if "the subject of the utility model has already been protected on the basis of an earlier patent or utility model application".

Illegal extension

Furthermore, there is a popular claim to the deletion of utility models if "the subject of the utility model goes beyond the content of the application in the version in which it was originally filed", Section 15 (1) No. 3 GebrMG.

Unlawful removal

According to § 15 Abs. 2 i. V. m. Finally, according to Section 13 (2) of the GebrMG, there is a right to cancellation of a utility model "if the essential content of the entry is taken from the descriptions, drawings, models, equipment or facilities of another person without his or her consent". In this particular case, which involves "theft" of intellectual property, it is not a popular claim. Rather, the right to cancellation is only available to the injured party (inventor or his legal successor), Section 13 (2) GebrMG.

costs

The cost issues for a cancellation request are structured similar to those of a conventional civil process via the reference chain § 17 Paragraph 4 GbrMG >> § 84 Paragraph 2 and 3 PatG >> §§ 91 ff. ZPO. Each party bears its own costs during the proceedings. The applicant has to pay the official fee for the cancellation application (2016: 300 €). In accordance with the principle of succumbing, the winner is entitled to a claim for reimbursement of costs against the loser.

See also

literature

  • Georg Benkard, Patent Act, Utility Model Act, 10th edition, Munich 2006 (quoted: Benkard editor)
  • Dietrich Scheffler, Special features in the defense against claims from parallel utility models and designs in the event of unlawful removal of intellectual property, in: Journal "Mitteilungen der Deutschen Patentanwälte" (Mitt.), Cologne, Berlin, Bonn, Munich 2005, p. 216 ff

Individual evidence

  1. ↑ Decisions of the Federal Patent Court (BPatGE), vol. 26, p. 196
  2. ↑ a b Benkard-Rogge, Patent Law Utility Model Law, 10th edition, Munich 2006, Rn 15a to § 15 GebrMG
  3. ^ DPMA, in: Journal "Sheet for Patents, Patterns and Signs" (BlPMZ) 1955, p. 299
  4. ↑ Benkard-Rogge, (individual replies. 6), marginal number 16 to § 15 GebrMG
  5. ↑ DPMA, in the journal "Mitteilungen der deutschen Patentanwälte (Mitt.) 1958, p. 97
  6. ↑ Dietrich Scheffler, Particularities in the defense of claims from parallel utility models and designs in the event of unlawful removal of intellectual property, in: Journal "Mitteilungen der Deutschen Patentanwälte " (Mitt.), Cologne, Berlin, Bonn, Munich 2005, p. 220
  7. ↑ Benkard-Rogge, (individual ref. 6), marginal number 14 to § 17 GebrMG
  8. ↑ Federal Court of Justice (BGH), in: Journal " Commercial legal protection and copyright " (GRUR) 1979, p. 869
  9. ^ BGH, in: GRUR 1968, pp. 86, 91
  10. ↑ BGH, in: GRUR 1963, p. 494
  11. ↑ BGH, in: GRUR 1957, p. 270
  12. ↑ BGH, in: GRUR 1969, p. 271 f
  13. ↑ Fees for utility models ( DPMA )