A4-0096/99

Proposal for a European Parliament and Council Directive approximating the legal arrangements for the protection of inventions by utility model (COM(97)0691 - C4-0676/97 - 97/0356(COD))

The proposal was approved with the following amendments:

(Amendment 1)

Recital 10a (new)

>Original text>

>Text following EP vote>

Whereas in order to facilitate applications for utility models and reduce the time taken to grant these models in more than one Member State, a 'one-stop shopping' procedure should be introduced, without prejudice to the national provisions in force in each of the Member States concerned;

(Amendment 2)

Recital 13

>Original text>

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;

>Text following EP vote>

Whereas it is necessary to exclude from utility model protection not only those inventions which are normally excluded from patentability but also inventions relating to substances or processes;

(Amendment 3)

Recital 14

>Original text>

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;

>Text following EP vote>

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 request

of the applicant or any interested third party;

(Amendment 4)

Recital 18a (new)

>Original text>

>Text following EP vote>

Whereas the application of this Directive should be monitored and it should be adapted in order to safeguard, in the context of utility models, the proper functioning of the internal market and innovation by Community enterprises; whereas the Commission should propose the measures necessary for this purpose, which should include specific steps to facilitate and reduce the cost of registering utility models in more than one Member State,

(Amendment 5)

Article -1 (new)

>Original text>

>Text following EP vote>

Article -1

The provisions of this Directive shall be without prejudice to any legal provisions of the Community or of the Member States concerned relating to design rights, other distinctive signs, copyrights, patents, typefaces, civil liability, or unfair competition.

(Amendments 6 and 35)

Article 1

>Original text>

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:

>Text following EP vote>

1. In accordance with the provisions of this Directive, utility model protection shall be extended to new inventions which, while involving an inventive step and being susceptible of industrial application, consist in giving an object or instrument, or a part thereof, a configuration, structure or mechanism which entails a practical or technical advantage for its use or manufacture or another benefit to the user, for example an educational advantage or an entertainment value.

>Original text>

Germany: Gebrauchsmuster

Austria: Gebrauchsmuster

Belgium: Brevet de courte durée/Octrooi van korte duur

Denmark: Brugsmodel

Spain: Modelo de utilidad

Finland: Hyödyllisyysmalli/

Nyttighetsmodell

France: Certificat d'utilité

Greece: Ðéóôïðïéçôéêü

õðïäåßãìáôïò

÷ñçóéìüôçôáò

Ireland: Short-term patent

Italy: Brevetto per modelli di utilità

Netherlands: Zesjarig octrooi

Portugal: Modelo de utilidade

>Text following EP vote>

2. It is known in Member States by the following names:

Germany: Gebrauchsmuster

Austria: Gebrauchsmuster

Belgium: Brevet de courte durée/Octrooi van korte duur

Denmark: Brugsmodel

Spain: Modelo de utilidad

Finland: Hyödyllisyysmalli/

Nyttighetsmodell

France: Certificat d'utilité

Greece: Ðéóôïðïéçôéêü

õðïäåßãìáôïò

÷ñçóéìüôçôáò

Ireland: Short-term patent

Italy: Brevetto per modelli di utilità

Netherlands: Zesjarig octrooi

Portugal: Modelo de utilidade

>Original text>

>Text following EP vote>

3. 'One-stop shopping¨ procedure means a procedural arrangement facilitating the obtention of utility models in more than one Member State in a coordinated procedure and at a single location, without prejudice to national provisions applicable in each Member State concerned.

(Amendment 34)

Article 3(2)(c)

>Original text>

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

>Text following EP vote>

(c)

schemes, rules and methods for performing mental acts or doing business;

(Amendment 7)

Article 3(2a) (new)

>Original text>

>Text following EP vote>

2a. The provisions of the previous paragraph shall exclude from utility model protection the subject-matter or activities referred to therein only to the extent to which a utility model application or utility model relates to such subject-matter or activities as such.

(Amendment 8)

Article 4

>Original text>

Utility models shall not be granted in respect of:

>Text following EP vote>

Utility models shall not be granted in respect of:

>Original text>

(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;

>Text following EP vote>

(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;

>Original text>

(b) inventions relating to biological material;

>Text following EP vote>

(b)

inventions relating to biological material;

>Original text>

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

>Text following EP vote>

(c)

inventions relating to substances or processes.

>Original text>

(d) inventions involving computer programs.

>Text following EP vote>

Deleted

(Amendment 9)

Article 5(3)

>Original text>

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.

>Text following EP vote>

3.

Additionally, the content of utility model and patent 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.

(Amendment 10)

Article 6

>Original text>

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.

>Text following EP vote>

For the purposes of this Directive, an invention shall be considered as involving an inventive step if,

compared with the state of the art, it is not very obvious to an expert in the field.

(Amendment 11)

Article 8(1), introduction

>Original text>

A utility model application shall contain:

>Text following EP vote>

A utility model application shall contain

only:

(Amendment 12)

Article 8(2)

>Original text>

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

>Text following EP vote>

2.

A utility model application shall be subject to the payment of a filing fee and, where appropriate, a search fee. All fees shall include a reduction of 50% for small and medium-sized firms, individual inventors and universities.

(Amendment 14)

Article 13(2)

>Original text>

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

>Text following EP vote>

Deleted

(Amendment 15)

Article 15(1)

>Original text>

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.

>Text following EP vote>

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, 9 and 10 and shall check whether it contains a description and an abstract. It shall also consider whether any of the protection requirements laid down in Article 4 apply.

(Amendment 16)

Article 15(3)

>Original text>

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.

>Text following EP vote>

3.

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

(Amendment 17)

Article 15a (new)

>Original text>

>Text following EP vote>

Article 15a

'One-stop shopping' procedure

1. When it sees fit, the Commission shall adopt the measures needed to introduce a 'one-stop shopping' procedure for granting utility models in one or more Member States. Information concerning the operation of this 'one-stop shopping' procedure shall be published in the Official Journal of the European Communities.

>Original text>

>Text following EP vote>

2. The 'one-stop shopping' procedure shall comply with the following conditions:

>Original text>

>Text following EP vote>

(a) it shall be open to all inventors who apply for a utility model in one or more Member States of the Community;

>Original text>

>Text following EP vote>

(b) the bodies with which the applications are originally lodged shall forward them to the competent authorities within seven working days of their official receipt;

>Original text>

>Text following EP vote>

(c) the competent authorities shall inform the applicant and the bodies with which the applications were originally lodged of their decision regarding the granting or rejection of the application within seven working days of the date on which the decision was taken;

>Original text>

>Text following EP vote>

(d) Articles 17 and 18 shall apply to applications lodged under the 'one-stop shopping' procedure; the date of receipt to be taken into account for applications lodged under the 'one-stop shopping' procedure shall be the date on which the application was received by the bodies with which the application was originally lodged;

>Original text>

>Text following EP vote>

(e) the bodies with which applications may be lodged shall keep the Commission regularly informed of the operation of the 'one-stop shopping' procedure, including information on applications which have been rejected.

(Amendment 18)

Article 15b (new)

>Original text>

>Text following EP vote>

Article 15b

Opposition procedure

1. Within three months following the publication of the notice granting the utility model, any person with a legitimate interest may give notice to the competent authority of opposition to the utility model. The grounds for opposition may refer to any of the conditions laid down for the granting of the model, including the lack of novelty or inventive step, or the inadequacy of the description. However, the grounds may not include any questioning of the legitimate right of the applicant to request utility model protection, a matter which should be referred to the courts.

>Original text>

>Text following EP vote>

2. The notice of opposition shall be accompanied by the relevant supporting documents. If the opposition is admissible, the competent authority shall set a deadline for the proprietor to remedy the formal defects.

(Amendment 19)

Article 16(1)

>Original text>

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.

>Text following EP vote>

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 request of the applicant or any other interested party and at their own cost, 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.

(Amendment 20)

Article 16(3)

>Original text>

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

>Text following EP vote>

3.

Immediately after it has been drawn up, the search report shall be transmitted to the applicant together with copies of any cited documents. The search report shall be made available to the public as part of the documentation accompanying the granting of the utility model.

(Amendment 21)

Article 16(4)

>Original text>

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.

>Text following EP vote>

4.

In the provisions which they adopt in order to comply with this Directive, Member States shall provide that a search report is compulsory in the event of legal proceedings being brought to enforce the rights conferred by the utility model, unless it has already been the subject of a previous search report.

(Amendment 22)

Article 19(2)

>Original text>

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.

>Text following EP vote>

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. This renewal shall not be granted unless an application for a search report has been made in respect of the invention concerned.

(Amendment 23)

Article 20(2)

>Original text>

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.

>Text following EP vote>

Deleted

(Amendment 24)

Article 20(3), introduction

>Original text>

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

>Text following EP vote>

3.

The rights conferred by a utility model in accordance with paragraph 1 shall not extend to:

(Amendment 25)

Article 20(4)

>Original text>

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

>Text following EP vote>

4.

The proprietor of a utility model shall have the right to transfer the utility model by any legally recognised means and to conclude licensing agreements

(Amendment 26)

Article 20(6a) (new)

>Original text>

>Text following EP vote>

6a. The right conferred by the utility model shall take full effect at the time when the protection is granted.

(Amendment 27)

Article 22(2)

>Original text>

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.

>Text following EP vote>

2.

A utility model which has been granted shall be deemed to be ineffective where a patent relating to the same invention has been granted and published.

(Amendment 28)

Article 22(3)

>Original text>

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.

>Text following EP vote>

3.

Member States 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.

(Amendment 29)

Article 24(1)(a)

>Original text>

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

>Text following EP vote>

(a)

the subject-matter of the utility model is not protectable pursuant to Articles 1(1) and 3 to 7 of this Directive;

(Amendment 30)

Article 24(1)(da) (new)

>Original text>

>Text following EP vote>

(da) the proprietor of the utility model is not entitled to obtain it pursuant to the provisions of Article 20(4).

(Amendment 31)

Article 24(2)

>Original text>

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.

>Text following EP vote>

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. If the national law so allows, the limitation may be effected in the form of an amendment to the claims, the description or the drawings.

(Amendment 32)

Article 24a (new)

>Original text>

>Text following EP vote>

Article 24a

Secondary application

In the absence of specific provisions applicable to utility models, these shall be governed by the provisions laid down for patents for invention provided they are not incompatible with the specialty of utility models.

(Amendment 33)

Article 24b (new)

>Original text>

>Text following EP vote>

Article 24b

Within three years of the date laid down for adoption by the Member States of the provisions necessary to comply with this Directive, the Commission shall inform the European Parliament and the Council of the results of its application and whether it should be adapted in order to safeguard, in the context of utility models, the proper functioning of the internal market and innovation by Community undertakings. It shall also propose any measures it deems necessary to improve it.

Legislative resolution embodying Parliament's opinion on the proposal for a European Parliament and Council Directive approximating the legal arrangements for the protection of inventions by utility model (COM(97)0691 - C4-0676/97 - 97/0356 (COD))(Codecision procedure: first reading)

The European Parliament,

- having regard to the Commission proposal to the European Parliament and the Council, COM(97)0691 - 97/0356 (COD) ((OJ C 36, 3.2.1998, p. 13.)),

- having regard to Articles 189b(2) and 100a of the EC Treaty, pursuant to which the Commission submitted the proposal to Parliament (C4-0676/97),

- having regard to Rule 58 of its Rules of Procedure,

- having regard to the report of the Committee on Legal Affairs and Citizens' Rights and the opinion of the Committee on Economic and Monetary Affairs and Industrial Policy

(A4-0096/99),

1. Approves the Commission proposal, subject to Parliament's amendments;

2. Calls on the Commission to alter its proposal accordingly, pursuant to Article 189a(2) of the EC Treaty;

3. Calls on the Council to incorporate Parliament's amendments in the common position that it adopts in accordance with Article 189b(2) of the EC Treaty;

4. Points out that the Commission is required to submit to Parliament any modification it may intend to make to its proposal as amended by Parliament;

5. Instructs its President to forward this opinion to the Council and Commission.