Proposal for a European Parliament and Council Directive approximating the legal arrangements for the protection of inventions by utility model (98/C 36/05) (Text with EEA relevance) COM(97) 691 final - 97/0356(COD)

(Submitted by the Commission on 12 December 1997)

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community and in particular Article 100a thereof,

Having regard to the proposal from the Commission,

Having regard to the opinion of the Economic and Social Committee,

Acting in accordance with the procedure laid down in Article 189b of the Treaty,

Whereas the Treaty commits the Community and Member States to creating the conditions for Community industry to be competitive and to promoting a better exploitation of the industrial potential of innovation, research and technological development policies;

Whereas technical inventions play an important role in that they make available improved, better quality products which are particularly effective in terms of, for example, ease of application or use, or which confer a practical or industrial advantage compared with the state of the art;

Whereas, because of differences between Member States' utility model laws, an invention may not be protected throughout the Community, at least not in the same way or for the same length of time, a state of affairs which is incompatible with a transparent, obstacle-free single market; whereas it is therefore necessary, with a view to the establishment and proper functioning of the single market, to approximate Member States' laws in this area;

Whereas it is important in this context to employ every possible means of increasing the competitiveness of Community industry in the field of research and development;

Whereas small and medium-sized firms play a strategic role in relation to innovation and rapid response to market requirements;

Whereas there is a need for placing at the disposal of firms, and in particular small and medium-sized firms and researches, an instrument which is cheap, rapid and easy to evaluate and apply;

Whereas utility model protection is better suited than patent protection to technical inventions involving a specific level of inventiveness;

Whereas technical inventions should be suitably protected throughout the Community;

Whereas, in accordance with the principle of proportionality, the approximation may be limited to those national provisions which have the most direct impact on the functioning of the single market;

Whereas, if the objectives of the approximation are to be attained, the conditions for obtaining and retaining the rights conferred by a registered utility model should in principle be the same in all Member States; whereas to that end an exhaustive list of the requirements which a technical invention must satisfy if it is to be protected by a utility model must be drawn up;

Whereas these requirements are for the most part the same as those for patent protection; whereas the level of inventiveness required must nevertheless be different to allow for the specific nature of technical inventions protectable by utility model;

Whereas utility model protection must be available both to products and to processes;

Whereas it is necessary to exclude from utility model protection not only those inventions which are normally excluded from patentability but also, in order to meet the needs of the industries concerned, inventions relating to chemical or pharmaceutical substances or processes and inventions involving computer programs;

Whereas a utility model application must satisfy requirements similar to those for patents; whereas, however, a utility model application gives rise only to a check to ensure that the formal conditions for protectability are satisfied without any preliminary examination to establish novelty or inventive step; whereas it may form the subject-matter of a search report on the state of the art only at the applicant's request;

Whereas it is essential, in order to safeguard the proper functioning of the single market and ensure that competition is not distorted, that registered utility models should henceforth confer on their proprietor the same protection in all Member States and that the period of protection should be identical; whereas this period may not exceed 10 years;

Whereas the nature and scope of rights conferred by a utility model must be spelled out; whereas the principle of Community exhaustion of rights must apply in accordance with the case-law of the Court of Justice of the European Communities, but the principle of international exhaustion must be expressly excluded;

Whereas rules must also be laid down on dual protection by patent and by utility model, and on the lapse and revocation of utility models;

Whereas all Member States of the Community are bound by the Paris Convention for the Protection of Industrial Property; whereas the Community and all Member States are bound by the Agreement on Trade-related. Aspects of Intellectual Property Rights concluded under the auspices of the World Trade Organization; whereas the provisions of this Directive must be in complete harmony with those of the Paris Convention and of the above-mentioned Agreement; whereas Member States' other obligations stemming from the Convention and the Agreement are not affected by this Directive,

HAVE ADOPTED THIS DIRECTIVE:

CHAPTER ONE GENERAL PROVISIONS

Article 1

Definitions

For the purposes of this Directive, 'utility model` means the registered right which confers exclusive protection for technical inventions and which is known in Member States by the following names:

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Article 2

Object

This Directive seeks to approximate Member States' laws, regulations and administrative provisions on the protection of inventions by utility model.

CHAPTER II SCOPE OF THE UTILITY MODEL

Article 3

Protectable inventions

1. Utility models shall be granted for any inventions which are susceptible to industrial application, which are new and which involve an inventive step.

2. The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business;

(d) presentations of information.

Article 4

Exclusions from protectability

Utility models shall not be granted in respect of:

(a) inventions the exploitation of which would be contrary to public policy or morality, provided that the exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all Member States;

(b) inventions relating to biological material;

(c) inventions relating to chemical or pharmaceutical substances or processes;

(d) inventions involving computer programs.

Article 5

Novelty

1. An invention shall be considered to be new if it does not form part of the state of the art.

2. The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the utility model application.

3. Additionally, the content of utility model applications as filed, of which the dates of filing are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

Article 6

Inventive step

For the purposes of this Directive, an invention shall be considered as involving an inventive step if, in the utility model application, the applicant indicates clearly and convincingly that, compared with the state of the art, it exhibits either

(a) particular effectiveness in terms of, for example, ease of application or use; or

(b) a practical or industrial advantage.

Article 7

Industrial application

1. An invention shall be considered as susceptible to industrial application if it can be made or used in any kind of industry, including agriculture.

2. Surgical or therapeutic treatment procedures applicable to the human body or to the bodies of animals and diagnostic procedures which are carried out on the human body or the bodies of animals shall not be considered to be inventions susceptible to industrial application within the meaning of paragraph 1.

CHAPTER III UTILITY MODEL APPLICATIONS

Article 8

Requirements of the application

1. A utility model application shall contain:

(a) a request for the grant of a utility model;

(b) a description of the invention;

(c) one or more claims;

(d) any drawings referred to in the description or the claims;

(e) an abstract.

2. A utility model application shall be subject to the payment of a filing fee and, where appropriate, a search fee.

Article 9

Date of filing

The date of filing of a utility model application shall be the date on which documents filed by the applicant contain:

(a) an indication that a utility model is sought;

(b) information identifying the applicant;

(c) a description and one or more claims.

Article 10

Designation of the inventor

The utility model application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the utility model.

Article 11

Unity of invention

The utility model application shall relate to one invention only, or to a group of inventions so linked as to form a single general inventive concept.

Article 12

Disclosure of the invention

The utility model application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Article 13

The claims

1. The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

2. The number of claims shall be limited to that which is strictly necessary having regard to the nature of the invention.

Article 14

The abstract

The abstract shall merely serve for use as technical information. It may not be taken into account for any other purpose, in particular not for the purpose of interpreting the scope of the protection sought nor for the purpose of applying Article 5 (3).

Article 15

Examination as to formal requirements

1. The competent authority with which a utility model application has been lodged shall examine whether the application satisfies the formal requirements of Articles 8 and 10 and shall check whether it contains a description and an abstract.

2. If a date of filing cannot be accorded, the competent authority shall give the applicant an opportunity to correct the deficiencies in accordance with such conditions and within such period as it may fix. If the deficiencies are not remedied in due time, the application shall not be dealt with as a utility model application.

3. The competent authority referred to in paragraph 1 shall not carry out any examination to establish whether the requirements of Articles 5, 6 and 7 have been met.

Article 16

Search report

1. If a utility model application has been accorded a date of filing and is not deemed to be withdrawn, the competent authority with which the application has been lodged shall, at the applicant's request, draw up on the basis of the claims a search report covering the relevant state of the art, with due regard to the description and any drawings.

2. The competent authority with which the application has been lodged may entrust the task of drawing up the search report to any authority which it considers competent to do so.

3. Immediately after it has been drawn up, the search report shall be transmitted to the applicant together with copies of any cited documents.

4. In the provisions which they adopt in order to comply with this Directive, Member States may provide that a search report is compulsory in the event of legal proceedings being brought to enforce the rights conferred by the utility model.

Article 17

Priority right

1. Any person who has duly filed an application for a utility model or a patent in or for one of the Member States, such State being a party to the Paris Convention for the Protection of Industrial Property, or his successors in title, shall enjoy, for the purpose of filing a utility model application in respect of the same invention in one or more other Member States a right or priority during a period of 12 months from the date of filing of the first application.

2. Any filing that is equivalent to a regular national filing under the domestic law of the Member State where it was made or under bilateral or multilateral agreements shall be recognized as giving rise to a right of priority.

3. By a regular national filing is meant any filing that is sufficient to establish the date on which the application was filed in the Member State concerned, whatever may be the outcome of the application.

Article 18

Internal priority

1. Any person who has duly filed a patent application shall enjoy, for the purpose of filing a utility model application in respect of the same invention, a right of priority during a period of 12 months, unless priority has already been claimed for the patent application.

2. The provisions of Article 17 (2) and (3) shall apply mutatis mutandis.

CHAPTER IV EFFECTS OF THE UTILITY MODEL

Article 19

Duration of protection

1. The duration of the utility model shall be six years from the date of filing of the application.

2. Six months before the period indicated in paragraph 1 elapses, the right-holder may submit to the competent authority an application for renewal of the utility model for a period of two years.

3. Six months before the period indicated in paragraph 2 elapses, the right-holder may submit a second and last application for renewal for a maximum period of two years.

4. In no circumstances may utility model protection last for more than 10 years from the date of filing of the application.

Article 20

Rights conferred

1. Where the subject-matter of a registered utility model is a product, the utility model shall confer on its proprietor the right to prevent third parties not having his consent from making, using, offering for sale, selling, or importing for these purposes that product.

2. Where the subject-matter of a registered utility model is a process, the utility model shall confer on its proprietor the right to prevent third parties not having his consent from using the process and from using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.

3. The rights conferred by a utility model in accordance with paragraphs 1 and 2 shall not extend to:

(a) acts done privately and for non-commercial purposes;

(b) acts done for experimental purposes relating to the subject-matter of the protected invention.

4. The proprietor of a utility model shall have the right to assign or transfer by succession, the utility model and to conclude licensing agreements.

5. Member States may provide limited exceptions to the exclusive rights conferred by a utility model, provided that such exceptions do not unreasonably conflict with a normal exploitation of the utility model and do not unreasonably prejudice the legitimate interests of the proprietor of the utility model, taking account of the interest of third parties.

6. Where the law of a Member State allows for use of the subject-matter of a utility model other than that allowed under paragraph 5 without the authorization of the right-holder, including use by the government or third parties authorized by the government, the provisions applicable to patents for similar use shall be complied with.

Article 21

Community exhaustion of rights

1. The rights conferred by a utility model shall not extend to acts concerning a product covered by that utility model which are done after that product has been put on the market in the Community by the right-holder or with his consent.

2. The rights conferred by a utility model shall, however, extend to acts concerning a product covered by that utility model which are done after that product has been put on the market outside the Community by the right-holder or with his consent.

CHAPTER V DUAL PROTECTION, LAPSE AND REVOCATION

Article 22

Dual protection

1. The same invention may form the subject-matter, simultaneously or successively, of a patent application and a utility model application.

2. Member States may provide that a utility model which has been granted is deemed to be ineffective where a patent relating to the same invention has been granted and published.

3. Member States which do not exercise the option referred to in the preceding paragraph shall take appropriate measures to prevent the proprietor, in the event of his rights being infringed, from instituting successive proceedings under both sets of protection arrangements.

Article 23

Lapse

A utility model shall lapse:

(a) at the end of the period laid down in Article 19;

(b) if its proprietor surrenders it;

(c) if the fees referred to in Article 8 (2) have not been paid in due time.

Article 24

Revocation

1. An application for revocation of a utility model may be filed only on the grounds that:

(a) the subject-matter of the utility model is not protectable pursuant to Articles 3 to 7 of this Directive;

(b) the utility model does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;

(c) the subject-matter of the utility model extends beyond the content of the utility model application as filed;

(d) the protection conferred by the utility model has been extended.

2. If the grounds for revocation affect the utility model only partially, revocation shall be pronounced in the form of a corresponding limitation of the utility model. The limitation may be effected in the form of an amendment to the claims, the description or the drawings.

CHAPTER VI FINAL PROVISIONS

Article 25

Transposal

1. Member States shall bring into force the laws, regulations and administrative provisions necessary to comply with this Directive by 31 December 1999. They shall immediately inform the Commission thereof.

When Member States adopt these provisions, these shall contain a reference to this Directive or shall be accompanied by such reference at the time of their official publication. The procedure for such reference shall be adopted by the Member States.

2. Member States shall inform the Commission of the main provisions of national law which they adopt in the field governed by this Directive.

Article 26

Entry into force

This Directive shall enter into force on the 20th day following its publication in the Official Journal of the European Communities.

Article 27

Addressees

This Directive is addressed to the Member States.