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11.05.2018

Confirmed: No utility model protection for methods

German Utility models offer, apart from their maximum term of ten years, the same protection for technical inventions as patents. Moreover, the requirements for protection have been largely approximated. However, a major difference exists for method inventions as the law expressly exludes them from utility model protection. The legislator regards IP rights to methods as being more complicated to search, as methods are typically more difficult to represent as compared with devices or substances (e.g. with chemical formulae). Protection for methods should thus be limited to patents, as they are, unlike utility models, examined for novelty and inventive step.

This almost 30 years old view of the legislator appears nowadays somewhat outdated. Moreover, the Federal Court of Justice interpreted the statutory exclusion narrowly in the past. For instance, it was neither applied to data (decision of 17/02/2004 - X ZB 9/03 - Signalfolge [= Sequence of signals]), which are likewise difficult to represent, nor to use claims, although they are formally worded as method claims (decision of 05/10/2005 - X ZB 7/03 - Arzneimittelgebrauchsmuster [= Utility model for pharmaceutical]).

Now an applicant tried to get this exclusion finally vacated for a pure method claim. This required to convince the Federal Court of Justice of its unconstitutionality. However, this attempt failed (decision of 27/03/2018 - X ZB 18/16 - Feldmausbekämpfung [= Field mice control]). The court found that patents offer sufficient protection for method inventions. The exclusion from utility model protection would not be so inappropriate as to question its constitutionality.

The applicant may now challenge this decision with a constitutional complaint before the Federal Constitutional Court. At least until the decision from that court, the exclusion will continue to exist.

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