ir -it COMMISSION OF THE EUROPEAN COMMUNITIES 
Brussels, 19.07.1995 
COM(95) 370 final 
The Protection of Utility Models in the Single Market 
(presented by the Commission) 

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Contents 
Summary and questions. .* / -b 
I. Introduction 1 
II. The need for action at Community level ? 5 
A. The establishment and functioning of the single market 6 
B. The present situation in the Member States 7 
C. The economic significance of utility model protection 9 
1. The utilization of utility model protection in the European Union 9 
(a) The national applications statistics 10 
(b) Cross-border applications 11 
(c) A change in the behaviour of applicants in the European 
Union 12 
2. The significance of utility models in comparison with patents 13 
3. The significance of utility model protection by reference to the size of the 
firm 14 
4. Significance in particular industries 15 
5. Reasons cited for seeking utility model protection 16 
(a) Quick, simple registration 17 
(b) Limited requirements 18 
(c) Low cost 19 
(d) Temporary protection 22 
6. Economic assessment by users 22 
7. Prospects for the economic significance of utility models 23 
(a) Changes in spending on research and development 23 
(b) Changes in product life cycles, times to market and the 
lifetimes of inventions 24 
(c) Changes in the scale of innovation and the length of 
exploitation of inventions in the European Union 29 
..••(d) Usefulness of Community utility : model protection to 
industrial companies and independent inventors 29 
D. Effects of the discrepancies on the common market 32 
1. Obstacles to the free movement of goods 33 
2. Distortion of competition in the common market 35 
3. Effects on industrial companies and independent inventors 36 
E. European Union policy and economic need 41 
~±~ ce 
III. What measures should be taken? 43 
A. The appropriate form of legislation 44 
1. Aligning the national schemes 44 
(a) Introduction of new rights 45 
(b) Aligning the substance of national utility model law 47 
2. A broader alignment 48 
3. The introduction of a Community right 49 
4. A combination of alignment of laws and 
the introduction of a Community right 50 
5. The views of industrial companies and independent inventors 50 
6. The views of patent attorneys 52 
B. The substance of Community-level protection of utility models: principles 54 
1. Basic design 54 
(a) Protection of form or of invention? 55 
(b) Dispensing with registration 56 
(c) Examination to ensure that 
requirements are met 57 
(d) Principles , 59 
2, More detailed rules 60 
(a) Inventive step 60 
(b) Three-dimensional form requirement 62 
(c) Excluded inventions 64 
(1) Unprotectable inventions 64 
(2) Substances and compositions of substances 65 
(3) Process inventions 66 
(d) Novelty .'.67 
(e) Industrial application 69 
(f) Procedure 70 
(g) Effects and transfer 73 
(h) Duration 73 
(i) Infringement 74 
. (j) Dual protection .'..•..", 75 
(k) Relationship to patent law'. 76 
Bibliography. 
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Summary and questions 
Legal protection of industrial property (patents, trademarks, design rights and utility 
models) in the single market has an important role to play: it has to promote innovative 
activity in the European Union, so as to ease the path from the initial idea to the 
successful translation of that idea into practice. The simpler and clearer such 
arrangements are for the user, the more they will facilitate innovation, providing 
effective protection for inventions. At the same time they ensure that competitors are 
kept informed of new developments by publication of the protected invention. This 
increases the competitiveness of European companies and helps to achieve the objectives 
of free movement of goods and undistorted competition. 
A "utility model" is a registered right which confers exclusive protection for a technical 
invention. It resembles a patent in that the invention must be new - it must possess 
"novelty" - and must display a measure of inventive achievement - it must involve an 
"inventive step", though frequently the level of inventiveness required is not as great as it 
is in the case of patents. Unlike patents, utility models are granted without a prior search 
to establish novelty and inventive step. This means that protection can be obtained more 
rapidly and cheaply, but that the protection conferred is less secure; Utility model 
protection is at" present entirely a matter of domestic law. 
The Commission has been looking into whether the establishment and operation of a 
single market requires measures to be taken in respect of utility models at Community 
level, and if so what measures are needed to harmonize the law on utility models in the 
interests of the single market. 
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The need for action 
Some form of utility model protection exists in France, Belgium, Portugal, Ireland, Italy, 
Spain, Germany, Denmark, Greece, the Netherlands, Finland and Austria. There are no 
comparable rights in the United Kingdom, in Sweden or in Luxembourg. A comparison 
of the national systems shows that there are wide differences between the requirements 
for utility model protection; the differences are such that as things stand it would not be 
practicable to apply those systems in a cross-border context. 
No steps have so far been taken at Community level. This means that for inventions 
involving only a small inventive step no Community-wide protection is available; indeed-
no proper protection at all is available in the countries where utility models have not 
been legislated for. The Commission has accordingly studied the economic significance 
of utility model protection in order to establish whether these differences have a negative 
impact on the objectives of free movement of goods and undistorted competition. 
The economic significance of utility model protection now and in future 
In order to arrive at an estimate of the economic significance of utility model protection 
the Commission has considered the rate of utilization of the existing systems (looking at 
frequency, size of firm, and reasons for applying), and developments in innovative 
activity. 
The first observation to be made is that utility models provide a very popular form of 
protection. There are roughly as many applicants for utility models as there are for 
patents. A comparison of the various national systems shows that greater use is made of 
systems which require only a small inventive step than is made of those where the 
inventive step required is the same as what would be needed for a full-scale patent. As 
the single market is consolidated we can expect an increase in demand for utility models 
and especially in cross-border applications. 
m 
An industry-by-industry breakdown of utility model applications in the European Union 
shows that the industries most often concerned are mechanical engineering, electrical 
engineering, and precision instruments and optics. Interest is even higher among small 
businesses and individual inventors than it is in big industry. 
In a study of applications for utility models the main reasons cited for seeking this form 
of protection were as follows: 
• quick, simple registration; 
• less stringent requirements than for patents; 
• low cost; 
• temporary protection pending the grant of a patent. 
The spectrum of reasons is thus very broad. The utility model is sometimes preferred 
where the applicant is not at all sure he will be able to market the invention, and 
therefore wants to keep his costs as low as possible. But it is also used for inventions 
which are particularly exposed to the danger of imitation and consequently of great 
importance to the performance and competitiveness of the applicant company. And the 
utility model is used where a patent would provide only inadequate protection or no 
protection at all, for example because it would take too long to obtain, or because the 
inventive step is too small. This means that whatever the size of the firm the perceived 
effects of a utility model are very positive: in the first place an improved market position 
and in the second place a direct increase in earnings. 
An analysis of the perceived importance of inventions reveals that small businesses are 
particularly conscious of the need to intensify their innovative activity to stand up to 
increased competition. They feel that inventions involving small inventive steps or short 
periods of exploitation will grow in importance in future; this would bring an expansion 
in demand for protection which can best be met by utility models. Only a small 
proportion- no more than 10%- of those questioned in firms of all sizes and in all 
industries expected a fall in the proportion of such "petty" inventions in future. 
- IV 
In view of the results so far it is not surprising that manufacturers, inventors and patent 
lawyers all see a great economic need for a unified system of utility models in the 
European Union. A breakdown by size of firm shows that there is particularly strong 
interest among smaller businesses with 500 employees or less. 
Effects on the common market 
Member States are basically free to design utility model systems as they will, provided 
the measures they take are not a means of arbitrary discrimination or a disguised 
restriction on trade between Member States. At present, therefore, different rules may be 
enacted in different countries, and Member States may decide to do without utility model-
protection altogether. 
An intellectual property right conferred by the law of a Member State provides 
protection only on the territory of that State. In the absence of any unification of the law, 
therefore, the holder of such a right can prevent third parties from importing protected 
goods which have been produced and marketed without his consent. Thus the intellectual 
property rights conferred by the Member States can of their nature be used to hinder the 
free movement of goods. 
The differences between the systems of protection are outside the control of the 
right-holder- and force him to avoid markets in which he cannot obtain equivalent 
protection for his invention. Given the economic significance of utility models, this 
erects barriers between markets inside the European Union. Thus the differences which 
exist have a direct adverse effect on trade within the Community, and on firms' capacity 
to treat the common market as a single setting in which to do business. The free 
movement of goods is obstructed, with practical disadvantages for those concerned. 
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If firms are to take advantage of the fundamental freedoms laid down in the EC Treaty, 
the intellectual property rules must allow fair competition between them. Given the 
differences which exist at present, companies or individual inventors wanting, to exploit 
an invention in several States have to familiarize themselves with a number of different 
systems or take expensive advice in each of the Member States concerned. 
The situation may be bearable in the case of big companies that can invest large sums of 
money in the promotion and protection of their inventions. For individual inventors and 
for small businesses the differences they have to deal with and the consequent need for 
legal advice are an administrative problem and often an insuperable cost factor. This 
restricts innovative activity on the part of such businesses and consequently distorts 
competition. 
It is not surprising, then, that companies and individual inventors should complain that 
they encounter serious difficulties in the cross-border enforcement of utility model 
protection. The problems are growing with increasing export intensity. 
Community objectives and economic need 
In view of the great economic need the maintenance of the existing situation would not 
be desirable; it would run counter to the idea of a Europe which is drawing closer 
together. It would not allow the achievement of free movement of goods and undistorted 
competition. 
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To ensure that the single market becomes a reality and operates smoothly, the 
Commission must respond to the present and future economic need.1 The development of 
innovative activity in the European Union, which has been marked by a trend towards 
smaller inventive steps, greater cost-sensitivity, shorter production and marketing cycles 
and a shorter lifetime for inventions, is generating increased demand for a form of 
protection that offers fast, simple and inexpensive protection for technical inventions in 
the European Union. 
To remedy these shortcomings, measures are needed at Community level, with the 
following main objectives: 
• protection to be provided for short-lived technical inventions, 
• protection to be provided for technical inventions which involve only a small 
inventive step, 
• protection to be obtainable rapidly, 
• protection to be obtainable simply, 
• protection to be inexpensive, and 
• publication to be rapid, so that the public is informed quickly. 
This approach has already produced measures to protect new technologies, as in the case of 
biotechnology, and to adapt existing systems of protection to changing needs, as in the case of 
pharmaceuticals. 
Vil 
Measures required 
The European Commission is required to put forward those proposals. for the 
approximation of laws which are needed for the establishment of the internal market. 
The Commission has accordingly considered both the form which any legislation might 
take and the substance of any Community-level arrangements in respect of utility model 
protection. 
pq^m ^legislation to harmonize utility model protection 
Several options are open here. 
Firstly* the national systems of protection could be brought into line by means of a 
directive. Harmonization of this kind would not be confined to removing the differences 
between the existing rules, but would also introduce utility model protection in those 
countries where it does not currently exist. This would establish a package of national 
rights. Each of these rights would continue to be confined to the territory of one 
^emjber State. 
The results so far obtained in surveys of patent lawyers acting as advisers and of 
companies and individual inventors show that a majority would like to see a 
user-friendly system whereby protection could be secured in three to five Member States 
by means of a single application. This cannot be achieved simply by aligning national 
law. 
The Commission takes the view, therefore, that harmonization of national systems would 
go some way towards improving the situation, but would not solve all the problems 
which arise. 
The Commission accordingly feels that consideration should be given to measures which 
go beyond straightforward harmonization. 
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One possibility would be to supplement the harmonization of domestic law with mutual 
recognition of the protection granted by Member States. National rights and national 
registration offices would continue in being, but cross-border protection in the 
European Union could now be obtained by means of a single application. 
Another possibility would be to adopt a regulation establishing a new Community 
protection right; as Community law, such a regulation would rank above the national 
systems, but would not replace them. A right obtained under Community law would be 
valid directly in all Member States. Protection throughout a territory comprising all the 
Member States could then be secured by means of one application and one set of 
proceedings at one Community office. 
But it must be borne in mind that the unification of the common market is a process 
which is Still going on, particularly as the European Union has been recently enlarged to 
take in Austria, Sweden and Finland. A combination of different possibilities might be 
the best way of ensuring that a future system was even better tailored to the needs of the 
single, market As with trade marks and designs, then, a directive harmonizing national 
systems of protection might be combined with a regulation establishing a new single 
utility model right. 
Substance of Community-level protection of utility models 
Utility model protection exists in twelve out of fifteen Member States. All these systems 
provide for a registered right for technical inventions without prior search to establish 
novelty and inventive step. The Commission is of the opinion that these common 
features should form the basis of a Community-level scheme. 
In other respects the existing systems differ widely, and the Commission takes the view 
that here all the possibilities will have to be considered. The critical points are the level 
of inventiveness; the three-dimensional form requirement; excluded inventions; novelty; 
industrial applicability; procedure;effect of the protection right; transfer; continuance; 
infringement; and dual protection (where an invention is protected both by a patent and 
by a utility model). 
At this stage in its inquiries the Commission feels it would be reasonable to deal with 
these points as follows : 
- IX 
The level of inventiveness required could be lower than in the case of patents; 
this is the only way of allowing for the changing demands of inventive activity. 
The three-dimensional form requirement could be abolished: the reasons for its 
introduction are historical, and it does not meet any modern need. 
Compositions of substances could be eligible for utility model protection; as 
regards substances proper, and process inventions, the Commission proposes to 
await the reaction of interested parties. 
The novelty of an invention could be determined by reference to the state of the 
art; this should not be restricted to the territory of a particular Member State, as 
that would run counter to the objective of a single market. 
There could be a twelve-month grace period for novelty, along the lines of 
Article 8 in the Community design proposal. 
Industrial applicability could be regulated in accordance with Article 57 of the 
European Patent Convention. 
The procedure for the grant of the right could be based on Articles 78 to 85 of the 
European Patent Convention; there would be no prior search to establish that all 
the requirements are met, but the application would be examined to establish that 
prima facie it may qualify for protection. 
An optional search would be possible, however, in order to increase certainty as 
to the legal position. 
Rights of use and of prohibition and their exhaustion could be regulated in line 
with what is done in patent law in the Member States; a limit to the number of 
claims might be envisaged. 
A registered right could be transferred without restriction. 
The grounds for extinction and nullity could be regulated in line with patent law 
in the Member States. 
The term of protection should be short: the maximum duration could be 10 years, 
which could be reached by renewal in steps of several years. This would be an 
effective way of offsetting the less stringent admissibility requirements. 
Where it is claimed that a utility model has been infringed it should be open to 
the court to order a search report, in order to establish whether the disputed 
invention qualified for protection; this would help to fill the gap left by the 
absence of a prior search. 
In order to avoid placing the right-holder in too strong a position, there could 
either be a prohibition on dual protection by both a patent and a utility model, or 
a ban on invoking the two successively. 
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The scheme being proposed here is intended for inventions where the innovative element 
is fairly modest. The inventive step may be small; or the period of protection needed 
may be short; or the possibility of industrial application may be limited. 
The Commission takes the view that a system of this kind would be a useful complement 
to patent protection, and would help to boost innovative activity and hence the 
competitiveness of European companies doing business on the single market.This would 
further improve the operation of the single market. 
The Commission has not yet reached a definitive view. The results arrived at so far will 
have to be discussed with interested parties before the Commission takes any further 
action at Community leveL 
Questions to interested parties are set out below; full answers to these questions will 
enable the Commission to make a better assessment of whether any action should be 
taken at Community level, and if so what form it should take. 
The Commission therefore asks interested parties to take the trouble to answer the 
questions carefully. 
XI -
following assessment of the economic significance of utility model protection. 
(a) System of protection: Among the existing systems of protection, the one most readily QUESTION 1: On the basis of its inquiries so far the Commission has come to the 
accepted is that which calls for a smaller inventive step than does a patent and which 
largely dispenses with the requirement that the invention be embodied in 
three-dimensional form. 
(b) Economic sector: Utility model protection is most frequently taken advantage of in 
the mechanical engineering, electrical engineering and precision instruments and optics 
industries. 
(c) Size of firm: Interest in utility model protection is somewhat greater among small 
and medium-sized firms and individual inventors than it is among large companies. 
(d) Reasons for applying: Studies have identified the following as the main reasons for 
seeking utility model protection: 
* quick, simple registration 
* less stringent requirements than for patents 
* low cost 
* temporary protection pending the grant of a patent. 
(e) Future developments: In the industries which file most utility model applications, the 
protection of inventions involving only a small inventive step and with a short lifetime 
will grow in importance in future, especially for small and medium-sized businesses, but 
for large companies too. 
The Commission asks interested parties to comment 
QUESTION 2: The Commission asks interested parties to say whether in their view the 
wide discrepancy between the economic significance of utility models in different 
Member States, and the differing rules governing them, obstruct the free movement of 
goods and distort competition in ways which cause them practical disadvantage. 
Xll 
QUESTION 3: In the Commission's view the development of innovative activity in the 
European Union is generating a growing need for a form of protection which would 
complement patent protection by providing a rapid, simple and inexpensive form of 
protection for technical inventions. 
The Commission asks interested parties to comment. 
QUESTION4: If action is in fact needed, there are a number of possibilities open to the 
Commission, 
(a). The first course would be to seek an alignment of the various national systems by 
means of a directive, which would also mean introducing this form of protection in 
countries which do not possess it; this would produce an array of similar national 
systems of utility model protection. 
(b) Such a directive might also provide that Member States were to recognize the rights 
conferred by one another*s systems. National protection rights and national registration 
offices would continue to exist, but dross-border protection valid throughout the 
European Union could be obtained by means of a single application. 
(c) A further possibility would be to enact a regulation creating a new Community 
protection right governed by Community law, which would have precedence over 
national systems of protection but would not replace them. This would allow protection 
which was valid throughout the European Union to be obtained in a single set of 
proceedings at a joint registration office. 
(d) Lastly, as in the case of trade marks and design, the alignment of national law could 
be combined with the creation of a new single protection right, in order to tailor the new 
system even better to the requirements of the internal market. 
The Commission asks interested parties to say which of these systems would best ensure 
the operation of the single market. 
- Xlll -
QUESTION 5: If action is needed at Community level, and if it is to take the form of\ 
European Community legislation, it has to be decided what the substance of utility model 
protection should be. All of the existing systems provide protection for technical 
inventions by means of a registered right which requires no examination of novelty and 
inventive step. 
The Commission asks interested parties to say whether these common features could 
form the basis of a scheme of utility model protection at Community level. 
QUESTION 6: The existing systems of utility model protection differ in their substance. 
The Commission asks interested parties to say whether the following points should be 
included in a Community system of utility model protection: 
The level of inventiveness required should be lower than in the case of patents. 
Three-dimensional form should not be required 
Process inventions and substances should be excluded 
The novelty required should be determined by reference to the state of the art, 
which should be restricted to the territory of the European Union. 
There should be a twelve-month period of grace for novelty. 
There should be an industrial application requirement, based on Article §7 of the 
European Patent Convention. 
The procedure for applications should be based on Articles 78 to 85 of the 
European Patent Convention. 
There should be a formal check on protectability but no general examination of 
compliance with the requirements. 
Optional searches should be possible. 
Rights of use and of prohibition and their exhaustion should be based on the 
existing rules of patent law. -
The term of protection should be renewable in steps of several years, the 
maximum term being ten years. 
A search report would be drawn up in the event of legal proceedings for 
infringement. 
So as to avoid conferring too great a measure of protection, combined use of 
patent and utility model rights for the same invention should be ruled out. 
Kùï- -Ks 
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I. INTRODUCTION 
The achievement of a single market was for a long time the European Community's.main 
aim. The conditions for the functioning of the single market were established over a 
period which ended on 31 December 19922. The internal market can and it must be 
improved further, if we are to have the certainty that goods will be able to move freely, 
and that competition will not be distorted. The date of 1 January 1993 was not the end; it 
was the beginning of a long-term process, in the course of which further changes will be 
needed in the legal structures and administrative practices we are used to in our own 
countries. 
At the end of 1993 the Commission took the decision to publish a Strategic Programme 
for the single market, in order to establish clear priorities for the years to come.3 
Priorities had to be set if the potential offered by the single market was to be properly 
harnessed so as to boost economic growth, competitiveness and employment.4 
Without a common market in goods a "single" market or "internal" market is 
unthinkable.5 A common market in goods requires free movement of goods and fair 
competition. But even today free movement can be obstructed and competition can be 
distorted by the rules which may apply in this or that Member State. Industrial property 
rights, for example, often have to be applied for in the individual country, and confer 
exclusive protection only on that country's territory. Member States are free to decide 
whether they wish to provide such protection, and if so what form it should take. The 
terms of competition may vary as a result, and this can lead to distortion. It can happen, 
too, that holders of industrial property rights will avoid certain markets where no 
adequate protection is available. This has an adverse effect on trade and restricts the free 
movement of goods. 
2 Article 7a of the EC Treaty. 
3 Making the Most of the Internal Market: Strategic Programme, COM(93) 632 final, 22 December 1993. 
European Commission, The Internal Market in 1993 - Summary, Official Publications Office of the 
European Communities, Luxembourg, ISBN 92-826-7644-7. 
5 Judgment of the Court of Justice in Case 78/70 Deutsche GrammophonvMetro [1971] ECR487, 
paragraph 6, last sentence. 
Given the close cross-border cooperation there is between companies in the European 
Union it is particularly important that industrial property rights should be brought more 
closely into line. This is the only way to eliminate the difficulties under which businesses 
have to suffer if there are wide discrepancies between different systems. In almost all 
areas of industrial property, therefore, action has been taken or has at least been initiated 
at Community level .6 Nothing has been done with respect to the "utility model", the 
industrial property right which forms the subject-matter of this Green Paper. 
A "utility model" is a registered right which confers exclusive protection for a technical 
invention.7 It resembles a patent, in that the invention must be new - it must possess 
"novelty" - and must display a measure of inventive achievement- it must involve an 
"inventive step", though frequently the level of inventiveness required is not as great as it 
is in the case of patents. Unlike patents, utility models are granted without a prior search 
to establish novelty and inventive step. This means that protection can be obtained more 
rapidly and cheaply, but that the protection conferred is less secure. Utility model 
protection is at present entirely a matter of domestic law. 
Different Member States have different schemes, which call the rights they confer by a 
variety of names: "utility model", "utility certificate", "six-year patent", "short-term 
patent", "petty patent" or "utility model certificate". As one might imagine from the 
range of terms used, the systems diverge widely, but they all provide protection for 
technical inventions alongside what is available under patent law. All the schemes in 
existence are intended to boost the innovative capacity of companies. 
Legally speaking there is no objection to Member States' operating different systems of 
utility model protection, always provided they are not misused.8 But the present 
situation is not consistent with the objectives of free movement of goods and undistorted 
competition. And it discourages innovative activity in European companies. A high 
E.g. Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ No L 11, 
14.1.1994); amended proposal for a Council Directive on the legal protection of biotechnological 
inventions (COM(92) 589 final; OJNoC44, 16.2.1993); Council Regulation (EEC) No 1768/92 of 
18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products 
(OJ No 182, 2.7.1992); proposal for a European Parliament and Council Regulation on Community design 
(COM(93) 342 final; OJNo C 29, 31.1.1994). 
This distinguishes utility models from design rights, which protect the outward form of an object rather 
than a technical invention embodied in it. 
See the second sentence of Article 36 of the EEC Treaty. 
level of innovative activity gives a business a technological advantage, which is an 
important factor in its competitiveness. 9 Today, the competitiveness of European 
companies is more important than ever before. 
It is important, then, that measures be taken to promote innovative activity, so as to ease 
the path from the initial idea to the successful translation of that idea into practice. The 
legal protection available in the single market has a major role to play.10 The simpler and 
clearer such arrangements are for the user, the more they will facilitate innovation, 
providing effective safeguards for inventors while at the same time ensuring that the 
public is kept informed of new developments. This would increase the competitiveness 
of European companies and help to achieve the objectives of free movement of goods 
and undistorted competition. 
In the last four years five more countries have introduced a system of the kind under 
discussion,11 thus bringing to twelve out of fifteen the number of Member States in 
which such a system exists; and against this background voices have being raised in 
industry and trade associations calling for harmonization of utility model protection.12 In 
the course of 1994 the European Parliament's interest in the matter was reflected in 
written questions asking the Commission to draw up proposals.13 In its Strategic 
Programme14 the Commission accordingly undertook to put forward a Green Paper on 
utility model protection. 
This Green Paper seeks to assess the need for action by the European Union with 
respect to utility models, and to set out a number of options; the Commission will be in 
a position to decide between these possible courses once it has had a chance to study 
the comments of interested parties. 
9 
10 
11 
12 
13 
14 European Industrial Policy for the 1990s, Supplement 3/91 - Bulletin of the European Communities, p.23. 
Alongside such things as the technological development programmes of the European Union and of the 
Member States. 
Ireland, Denmark,Greece, Finland and Austria. 
E.g. Action européenne pour l'Éducation, l'Invention et l'Innovation, petition to the European Parliament, 
No 1012/93; International Federation of Industrial Property Attorneys (FICP1), Resolution No 6, 
September 1994. 
Written Questions Nos 1552/94 and 2536/94, Hearing on the petition to the European Parliament, 
No 1012/93. 
Making the Most of the Internal Market: Strategic Programme, COM(93) 632 final, 22 December 1993. 
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Building on the approach outlined here in Chapter I. Chapter II examines the need for 
action at Community level. Bearing in mind the scope of the powers transferred to the 
European Community, it studies the economic significance of utility model protection 
and the negative impact on the common market of the differences which currently 
exist.15 Chapter III then goes on to discuss the type of legislation which would be 
suitable and the form which a Community scheme might take. 
The results of two studies are drawn upon throughout the Green Paper to provide 
evidence of adverse effects on the free movement of goods and fair competition and an 
empirical foundation for the possible form of any Community action. An initial pilot 
study asked a total of 905 patent attorneys in Germany, France, Spain and the United 
Kingdom for their views on the economic significance of the existing systems and of 
possible developments.16 In the full-scale study which followed, 3 793 industrial 
companies and independent inventors were questioned, and statistics were drawn up and 
evaluated.17 
The Green Paper begins with a summary of the most important findings and a 
questionnaire on the need for Community action and the form any Community action 
might take. 
The Commission asks all interested parties to take an active part in this consultation 
process. 
See the comparative study of the law in Annex 1. 
Weitzel, G., Ifo Institute, Pilotstudie - Die Wirtschqftliche Bedeutung des Gebrauchsmusterschutzes, C.l, 
p.9. 
Wei 
the European Union, 2.1. 17 
Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
-5 
IL THE NEED FOR ACTION AT COMMUNITY LEVEL 
The Commission has to assess the need for action at Community level in terms of the 
establishment and functioning of the single market. It has accordingly considered 
whether the differences between the national systems of utility model protection hinder 
the achievement of these objectives. 
The Commission has likewise studied the economic significance of this type of 
protection. It has to be determined whether the differences in the schemes operating in 
some countries, and the absence of similar schemes in others, have adverse effects on the 
common market; and a finding that utility model protection was of considerable 
economic significance in the single market would support this hypothesis. In the 
Commission's view the degree of economic importance of utility models and the scale of 
any adverse effects on the single market will affect the answer to the question whether 
harmonization is needed and if so to what extent. 
A. The establishment and functioning of the single market 
The Community is required to take measures "with the aim of progressively establishing 
the internal market". This internal market (or "single" market or "common" market) is to 
comprise an area without internal frontiers in which the free movement of goods, 
persons, services and capital is ensured. This definition does not mention undistorted 
competition as an objective, but the concept of an internal market itself means that the 
provision is comprehensive in scope. 
In the field of industrial property the establishment and functioning of a common market 
is primarily a matter of removing any remaining obstacles to the free movement of goods 
and services, and further improving the system of undistorted competition.18 
Systems of utility model protection which differ from one country to another may 
interfere with the free movement of goods and undistorted competition. In that event the 
Community is called upon to take the necessary measures to approximate the provisions 
laid down by law, regulation or administrative action in Member States in order to 
remove the obstacles and further to improve the functioning of the common market. 
18 See Article 7a TUE. 
-7 
B. The present situation in the Member States 
Some form of utility model protection exists in France, Belgium, Portugal, Italy, Spain, 
Germany, Denmark, Ireland, Greece, Austria, Finland and the Netherlands; these 
systems sometimes differ quite widely. The introduction of a similar system is under 
consideration in the United Kingdom, in Luxembourg and in Sweden. 
All of these systems protect technical inventions, so that they can be described as forms 
of "additional protection for technical inventions". All of them permit registration 
without the need for examination to establish novelty and inventive step, which makes 
them quick and inexpensive to obtain. 
There are wide differences in their requirements, which allow them to be divided into 
three groups. 
The first group comprises rights which do complement patent law but whose 
requirements are the same as those for patents. The inventive step required here would 
also qualify the invention for patent protection ("full inventive step requirement"). 
Whether or not the invention possesses novelty is determined by reference to the state of 
the art internationally ("absolute novelty"). Embodiment in three-dimensional form is not 
a fundamental requirement. 
Systems of this kind are the French certificat d'utilité, the Belgian brevet de courte 
durée, the Dutch zesjarig octrooi, and the "second-tier patent" which was at one time 
proposed in the United Kingdom. 
The second group comprises those rights whose requirements are different from those of 
patent law. Here the inventive step required is smaller, allowing protection to be 
extended to minor inventions ("diminished inventive step requirement"). The number of 
inventions qualifying is reduced by a requirement that the invention be embodied in 
three-dimensional form. 
Systems in this group are the Greek utility model certificate, the Spanish modelo de 
utilidad, the Portuguese modelo de utilidade, the Italian brevetto per modelli di utilità 
and the Finnish nyttighetsmodell. These systems can be graded further on the basis of the 
-8-
degree of novelty called for: absolute novelty is required in Italy, Portugal, Finland and 
Greece, while relative novelty is sufficient in Spain. 
The third group likewise has a diminished inventive step requirement. But here the 
three-dimensional form requirement plays only a secondary role, or is absent entirely, so 
that protection is available both for process inventions and for all those inventions where 
the inventive step is only small. 
This group includes the German Gebrauchsmuster, which was subject to a 
three-dimensional form requirement in the past: the legislation has recently been 
amended, and no longer makes any reference to such a requirement, so that the right is 
available for all minor inventions, including process inventions. The Danish brugsmodel, 
the Austrian Gebrauchsmuster and the Irish "short-term patent" fall into the same 
category. Unlike the other systems, the German system requires only relative novelty. 
These are all systems which grant a registered right without prior examination; but the 
differences between them are such that as things stand it would not be practicable to 
allow them to apply on a cross-border basis. 
No steps to improve the situation have so far been taken at Community level. Nothing is 
yet planned in the context of the unification of intellectual property law, nor is there any 
other right which might cover the same area. This means that particularly for inventions 
involving only a small inventive step no Community-wide protection is available; indeed 
no proper protection at all is available in those countries where utility models have not 
been legislated for. 
The Green Paper on the Protection of Industrial Design describes this as a "lacuna 
[which] represents a major problem in establishing a Community system of protection of 
industrial property".19 
19 
Commission staff working paper, point 11.5.2.3, p. 155. 
C. The economic significance of utility model protection 
The study of the economic significance of utility model protection can begin with 
innovative activity among firms in the single market. A high level of innovative activity 
gives a business a technological advantage, which is an important factor in its 
competitiveness.20 Today, the competitiveness of European companies is more important 
than ever before. Innovation as a catalyst of competitiveness has accordingly been made 
a component in European industrial policy for the 90s.21 
The level of innovation among firms in the common market is reflected in the rate of 
utilization of property rights for technical inventions, which are intended to promote and 
reward innovation.22 This investigation first looks at the utilization of utility model 
protection in the individual Member States and across their borders. These figures are 
then compared with those for patents, in order to clarify the importance of utility models 
in the individual countries. 
The study then examines the types of firm and the particular industries which make most 
use of utility model protection, and considers the possible reasons. 
The section ends with an industry-by-industry analysis of the development of innovative 
activity. This allows a forecast to be made of the likely economic significance of utility 
model protection in the future. 
20 
21 
22 European Industrial Policy for the 1990s, Supplement 3/91 - Bulletin of the European Communities, p. 23. 
Industrial Policy in an Open and Competitive Environment: Guidelines for a Community Approach, 
COM(90) 556. 
Promoting the Competitive Environment for the Industrial Activities based on Biotechnology within the 
Community, SEC(91) 629. 
- 10 
1. The utilization of utility model protection in the European Union 
In looking at the rate of utilization a distinction has to be drawn between domestic 
applications and cross-border applications. The latter show the level of interest in utility 
model protection in industry in the common market in general, outside the borders of the 
particular country. 
(a) The national applications statistics 
An important indication of the economic significance of utility models in the individual 
Member States is provided by the national applications statistics. They show which 
systems arouse particular interest among business people. For many countries figures of 
this kind can be found in the annual statistics published by WIPO23 and in the databases 
of the European Patent Office.24 Only for France and Belgium are no such figures 
available.25 This may be due to the different classification in the Paris Convention, in 
accordance with which utility model protection in France and Belgium is governed by 
the rules on patents and is not classed with "utility models" within the meaning of the 
Convention.26 For this study, however, figures for applications for short-term patents 
were been obtained from the Belgian Patent Office. In the case of France the figures for 
applications at least in 1988, 1989 and 1990 were assembled by means of inquiries at the 
annual meeting of the Fédération des Conseils en Propriété Intellectuelle. Ireland and 
Denmark introduced utility model protection only in 1992, and no official figures are yet 
available. According to the Danish Patent Office, however, more than 1 000 applications 
were received between July 1992, when the utility model was introduced, and 
1 June 1993. The following picture emerges:27 
23 
24 
25 The World Intellectual Property Organization, based in Geneva. 
The Epidos and Inpadoc bases. 
According to information supplied on 4 August 1992 by MrLudwig Baeumer, Director of WIPO's 
Industrial Property Division, WIPO's figures for applications in Belgium include patents. France has so far 
supplied no data on utility certificate applications and registrations. It can be assumed that the figures for 
patents include utility certificates. 
See Annex 1, the comparative study, at point A.2(a). 
27 • • 
The Italian statistics include applications from abroad. The Belgian statistics were kindly provided by the 
Belgian Patent Office; the figures for applications in 1990 show the position at 30 November 1990. The 
French INPI was unable to supply any figures for utility certificate applications. The statistics for Greece 
are taken from the annual reports of the Industrial Property Organization, the OBI. 
11-
Statistics for utility model applications in the EU Member States 
(Source: European Patent Office, Epidos/Inpadoc, position at 9.7.1993, and Ifo patent statistics) 
It will be seen that Germany, Spain and Italy are the countries with the highest numbers 
of applications. The systems in these countries have a diminished inventive step 
requirement. Greece also has such a system, but there the figures are less significant, as 
the system was introduced only in 1987. All the newer systems have the diminished 
inventive step requirement,28 so that without going any further into the reasons at this 
stage one can say that systems with a diminished inventive step requirement have greater 
appeal than those where the inventive step requirement is the same as that for a patent.29 
(b) Cross-border applications 
Figures showing the extent to which existing systems are used domestically do not tell us 
whether applications for such rights are being made across borders. As has been 
explained above,30 given the variations between utility model systems in the European 
Union a large number of cross-border applications is not to be expected. 
28 
29 
30 The most recent being those introduced in Ireland, Denmark, Austria and Finland. 
The reasons for this preference are considered in Chapter HI at B.2. 
See Chapter II at D.3, "Effects on industrial companies and independent inventors" 
12-
The following table shows the numbers of utility model applications from residents in 
the home country in comparison with the number of applications from other EC 
countries, from 1987 to 1991: 
Belgium 1(3608 
8000 10000 12000 14000 
I applications from residents Q applications from non residents] 
(Source: Industrial Property Statistics, publication A and B, WIPO, and Belgian Patent Office) 
The fact that the number of registrations is so small is to be attributed to the difficulties 
which stand in the way of cross-border applications. 
(c) A change in the behaviour of applicants in the European 
Union 
When firms engage in innovative product development as a way of improving their 
competitiveness, they will need cross-border protection for their inventions. It can be 
difficult to make a realistic estimate of future, long-term sales potential, and at the same 
time of any additional competition which may emerge. Questions put to firms here are 
for the most part hypothetical. In a survey of patent attorneys, however, questions were 
nevertheless asked about the possible repercussions of the single market on the procedure 
for utility model applications, in an attempt to obtain some indication of future trends.31 
Despite the present situation the results show that at least in Germany and Spain there is 
a majority of patent attorneys which expects the number of utility model applications in 
other EU countries to increase as a result of the single market; both large and small firms 
would be involved, in roughly equal measures. In the United Kingdom the results are not 
quite so clear-cut: 56% of the respondents expected an increase, but 44% said they 
expected no increase. French patent attorneys were distinctly sceptical: given the present 
31 Weitzel, G., Ifo Institute, Pilotstudie - Die wirtschafiliche Bedeutung des Gebrauchsmusterschutzes in der 
Europâischen Union, 2.6, p. 26. 
13 
situation 76% expected no increase in applications, and consequently did not anticipate 
that the firms they advised would be needing greater protection. 
But the patent attorneys expressed very positive expectations in the event that the 
fundamental legal position were to change. A clear majority of the German, Spanish and 
French attorneys questioned, 82% on average, expected an increase in applications if 
protection could be secured in several EC Member States by means of a single 
application. A decisive simplification of the process of obtaining utility model rights 
along these lines, according to the survey results, would lead to greater utilization of the 
utility model, the size of the firm being of little importance. The position was different in 
the United Kingdom, where only 56% of the patent attorneys questioned expected a 
development of this kind. These are plausible figures, given that there are no utility 
models to apply for in the United Kingdom, so that the utility model may be unknown to 
firms. 
2. The significance of utility models in comparison with patents 
The significance of the utility model as compared with the patent is to a great extent 
dependent on the way the system is designed. A comparison of national figures for 
applications for patents and utility models in Germany, France, Italy and Spain gives the 
following picture:32 
No comparable figures were available for other countries. 
14 
Spain 
Italy 
France 
Germany 17654 
(Source: European Patent Office, Epidos/Inpadoc, position at 9.7.1993; Ifo patent statistics; and European Commission calculations) 
It will be seen that in the case of Germany, Spain and Italy, where the inventive step 
required for a utility model is smaller than what is needed for a patent, the utility model 
plays a more important role by comparison with the patent than it does in the case of 
France, where the inventive step requirement is the same as that for a patent. 
The reason is that in the systems where the inventive step looked for is smaller the 
requirements which must be satisfied in order to qualify for protection are lower; each of 
the two types of right then has its own raison d'être. 
Utility model systems with the same requirements as patents have less appeal because 
they are in competition with patents, which many applicants prefer because of their 
greater security. 
3. The significance of utility model protection by reference to the size of the 
firm 
Utility model protection is not equally important to all firms: it depends where the firm's 
interests lie. A study of the relationship between the German patent system and 
- 15 
innovative activity in firms has been carried out in Germany,33 which among other things 
looks at the importance of industrial property rights34 in relation to the size of the firm.35 
The study finds that of these industrial property rights utility model protection is third in 
order of importance after patents and trade marks. When applicants are sorted by type of 
business, utility model protection is second in order of importance, after patents, among 
independent inventors and craft firms. Among industrial and manufacturing companies 
and research institutes it ranks at least third. It is striking that for all categories of 
applicant industrial design protection came in last place.36 When applicants are sorted by 
size of business, it is found that there is higher demand for utility models among firms 
with an annual turnover of ECU 5 million or less, that is to say among small and 
medium-sized enterprises.37 In this category utility model protection comes in second 
place after patents. But even among companies with a turnover up to ECU 1.25 billion 
and over utility models are in third place. In Germany, then, utility models are of 
importance especially to small and medium-sized industry with an annual turnover of up 
to ECU 5 million. The reasons cited are for the most part to do with savings in costs, 
time and administration. These are arguments which hold good for all the existing utility 
model systems, and in the Commission's view it can be concluded that utility model 
protection is useful to big industry, but even more so to small and medium-sized 
industry. 
4. 'Significance in particular industries 
After the rate of utilization and the importance of utility models to firms of. different 
sizes, the Commission has attempted to establish which industries make particularly 
frequent use of utility model protection. The results obtained allow developments in 
individual industries to be studied and inferences to be drawn regarding the behaviour of 
applicants in future. An industry-by-industry analysis of applications for utility model 
33 
34 
35 
36 Tâger, U.C.,with the collaboration of Seyler, H., Problème des deutschen Patentwesens im Hinblick auf 
die Innovationstdtigketen der Wirtschafi, study carried out by the Ifo Institute for the German Federal 
Ministry of Economic Affairs, May 1989. 
Patents, utility models, industrial designs and trade marks. 
Loc. cit., p. 142, at 7.3. 
Loc. cit., p. 144. 
See European Commission, Report from the Commission to the Council on the Definitions of Small and 
Medium-sized Enterprises (SMEs) used in the context of Community Measures, SEC(92) 351 final. 
16 
protection in the European Community, ignoring differences between systems, gives the 
following picture: 
1987-1990 I 
I *f .El 
n 3 3 |^ |:« 
T» 
-O ce­
re1 n • i 
i i • i i i 
:L 1 m •5000 
•4500 
•4000 
3500 
•3000 
1500 
1000 
— o 
(Source: European Patent Office, Vienna Sub-office, position at 8 January 1993) 
The industry which makes most use of utility models is thus mechanical engineering. 
This also bears out the results of a survey of firms in Denmark which was conducted 
with a view to the introduction of such a system.38 That survey found that utility model 
protection would be used mainly in mechanical and electrical engineering. After the 
mechanical engineering industry the main users are electrical engineering, precision 
instruments and optics, and the motor industry. 
5. Reasons cited for seeking utility model protection 
The reasons cited for seeking utility model protection are an important factor in a proper 
assessment of its economic significance.They provide concrete evidence of the features 
of the system which are regarded as particularly useful. In a survey of industrial 
38 "Legal and Economic Significance of Protection by Utility Models', in AIPPI Yearbook 1986, 1-4, Q 83, 
pp. 45-47. 
- 17-
companies, independent inventors39 and patent attorneys40 in Germany, France, Italy, the 
United Kingdom and Spain the main reasons cited for seeking this form of protection 
were: 
• quick, simple registration 
• limited requirements 
• low cost 
• temporary protection pending the grant of a patent. 
(a) Quick, simple registration 
An applicant has to wait an average of four years for a European patent,41 and an average 
of two and a half years for a national patent,42 but the average wait for the registration of 
a utility model is sixth months, as no examination has to be carried out to establish 
novelty and inventive step. Of the reasons given by firms, independent inventors and 
patent attorneys for seeking utility model protection, by far the most frequently cited is 
quick and simple registration and protection against imitation. 
This reason was most often cited by SMEs (67%), and only half as often by larger 
companies (33)%. The result tends to confirm that quick and simple registration is one of 
the main features which patent attorneys and firms demand of a serviceable utility model 
system. If registration is in fact quick and simple, therefore, that will be the main 
perceived advantage over patents. 
Rapid protection against imitation is not an end in itself. Its main purpose is to 
consolidate a competitive position and to safeguard any competitive lead. This enables 
the producers of investment goods and consumer goods to pursue a marketing policy 
based on quality. Protection against imitation plays a particularly important role in 
Germany (where 58% regard it as "very important"). Spain and France follow. In Italy 
39 
40 
41 
42 Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 2.7. 
Weitzel, G., Ifo Institute, Pilotstudie - Die wirtschaftliche Bedeutung des Gebrauchsmusterschutzes in der 
Europàischen Union, D, 2.1, p. 12. 
Annual Report of the European Patent Office 1991, Chapter HI, 1, p. 28. 
Where a prior examination is carried out. 
- 18 
and the United Kingdom only a little over a third of respondents cite this reason. This 
may be partly due to the somewhat limited protection available under their legislation or 
administrative practice. A breakdown by size of firm shows that smaller firms are 
especially inclined to cite protection against imitation as a very important reason for 
applying for utility model protection. 
In the case of large companies protection against imitation is somewhat less important. 
This may be because large companies are more often in a position to make effective use 
of the whole range of available legal weapons to protect their position against 
competitors. 
Rapid registration leading to rapid commercial exploitation - whether under licence or by 
the applicant himself- is rated as "very important" or "important" by about 40% of 
respondents. This is the second most frequently cited reason. The assessment is broadly 
the same for all sizes of firm. 
Utility model protection is thus a competitive weapon in its own right; it is used by firms 
of all sizes primarily as an indirect way of protecting or strengthening a market position, 
but also as a direct way of improving the. commercial exploitation of inventions. 
(b) Limited requirements 
Among the main requirements for patentability are inventive step and absolute novelty. 
Most utility model systems require a smaller inventive step than is needed for 
patentability, and also limit the concept of novelty, so that the requirements are easier to 
satisfy. This is another important reason for seeking utility model protection. 
The survey shows that inventions which involve only a minor inventive step are 
important not only to small firms but to large ones too. This was borne out by the patent 
attorneys questioned: a large majority considered the lower inventive step requirement an 
important reason for seeking utility model protection. The differences in the results here 
are reasonable given that patent attorneys are often confronted with legal problems of 
this kind in the day-to-day work of handling applications. 
In France and the United Kingdom the question on the reasons for applying for utility 
models had to be hypothetical: if such a system existed, why might you apply? It was 
difficult to answer, because firms and independent inventors only very rarely had any 
19-
practical experience of applying for utility models abroad. Nevertheless, the answers do 
reflect the different legal background in the two countries adequately for present 
purposes. 
Thus in the United Kingdom, where the only protection available for technical 
inventions is the patent, which necessitates prior examination, while functional designs 
qualify for the unregistered design right introduced in 1988, 50% of respondents 
regarded the less stringent legal requirements as a "very important" or "important" reason 
for a hypothetical application. 
As an important interim finding, then, we can say that there is clearly an economic need 
for a form of protection with requirements less stringent than those for patentability. 
(c) Low cost 
Unlike patents, utility models are granted without a prior examination to establish 
novelty and inventive step. This makes them cheaper to obtain than patents. The 
following table summarizes the costs which will be incurred under the various national 
utility model schemes. 
20-
Fees for filing, grant and renewal (for ten years, in ECU) 
Qerpumv 
Spain 
Italy 
Portugal 
Qtëfàç 
Belgium 
Denmark 
France Filing 
(-ECUs) 
24.5 
52.21 
13.65 
19.6 
60 
48 
260 
37.5 Grant 
(-ECUs) 
20.9 
319.8 
40 
97.5 Reneyval 
(-ECUs) 
906.5 
586.04 
151.2 
162 
182.4 
650 
136.5 Zoial 
(-ECUsIOvearsy 
931 
659.15 
333.45 
170.8 
262 
230.4 
910 
271.5 
(Based on the national fee regulations43'u'45> 46'47'48'49'50, ECU: 1.5.1993) 
43 
44 
45 Germany: Patent Office and Patent Court Fees Act of 18 August 1976 as amended on 7 March 1990. 
France: Fundamental rules on fees are to be found in various provisions of the Patents Act, an example 
being Section 41. These are clarified by Regulation No 79-822, at Article 94 etseq. The precise amounts 
of fees are determined by on Order of 17 December 1985 on fees charged by the National Industrial 
Property Institute (MPI). 
Spain: Under Sections 454 and 160(1) of the Patents Act, fees are to be regulated in accordance with the 
schedule to the Act. 
46 
47 
48 
49 Italy: under Article 11(1) of the Industrial Models Order, filing and grant fees are to be paid for utility 
models. The amounts of these fees are regulated by schedules A and C to the Order. Act No 60 of 14 
February 1987 increasecLthe fees substantially. Under Article 12 of the Order the grant fee may be paid in 
its entirety or in two instalments, the first providing protection for five years and the second for another 
five. Article 12 states that in other respects utility model fees are to be subject to Article 46 of the Patents 
Order. Article 46(1) of the Patents Order provides that the filing fee, at least the first half of the grant fee, 
and the printing fee are to be paid before the application is filed. 
In Portugal the fees for the registration of a utility model are set afresh each year in a special order (Section 
255 of the Industrial Property Code). Section 257 of the Code lays down the rule that periodic fees for the 
renewal of the registration of a utility model are to be paid every five years. 
Greece: Fees Order, DS/A/2/89 of 26 January 1989. 
Belgium: Sections 71 and 72 of the Patents Act are supplemented by a Royal Order of 18 December 1986, 
amended in 1990. 
50 Denmark: Osterburg, Tindlich ein Gebrauchsmuster- modellgesetz in Danemark', in GRUR Int. 6/1993, p. 
453. 
-21 
Low cost is the third most frequently cited reason for seeking utility model protection. 
Particularly those firms which attempt to protect themselves as comprehensively as 
possible against the danger of imitation can find that a large number of applications 
generates problems of cost. From patent statistics it is well known that the policy of 
submitting large numbers of applications is especially important in the patent field. 
Large companies in particular may apply for over a hundred patents in one year at home 
and abroad. In Germany, for example, these big applicants account for over 20% of all 
patent applications, even though in the nature of things there are not very many of them -
about 30 German and foreign firms. Utility models are completely different in this 
respect. With a few exceptions, even large companies apply for no more than thirty 
utility models a year.51 
However, uncertainty as to the commercial value of inventions tends to increase the 
number of utility model applications, because of the low cost of applying. Putting an 
invention to use can involve a considerable commercial risk, because the new product or 
process will often fail to establish itself on the market. Where the success of an 
invention is very uncertain, therefore, the low cost of applying for a utility model will be 
a decisive factor in the choice of this form of protection. 
SMEs have particular difficulty in determining the sales prospects of new products, and 
thus the value of inventions, because they have inadequate information from market 
observation and market research. Big companies can make use of tried and tested 
planning and forecasting machinery; this does not mean that they never have product 
failures, but they can limit their risk to some extent at least. 
The distinctions are clearly reflected in the survey results. Among large companies only 
11% of respondents cited the uncertain commercial value of an invention as a "very 
important" reason applying for utility model protection, while in small firms with 100 
employees or less the figure was 26%. 
Because utility model applications are inexpensive, therefore, this form of protection can 
serve to reduce the risk of launching an invention, and thus lead to increased innovative 
activity. 
Weitzel,G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 3.1. 
22-
(d) Temporary protection 
Rapid registration means that a utility model can be used to bridge the relatively long 
period which passes before a patent is granted, always supposing that the invention 
qualifies for both forms of protection. In answers to the survey this reason for applying is 
given roughly the same measure of importance as the low cost of application where the 
applicant is uncertain of the invention's commercial value. 
Temporary protection is useful mainly in countries where a comprehensive examination 
is carried out in order to establish novelty and inventive step before a patent is granted. 
In countries where there is no automatic examination temporary protection is largely 
unnecessary, as it does not usually take long to process a patent application, and a patent 
can be obtained almost as quickly as a utility model. 
6. Economic assessment by users 
In Germany, Italy and Spain, where utility model protection already exists, industrial 
companies and independent inventors were asked to assess the this form of protection 
from an economic point of view.52 The question specifically asked respondents to 
consider both costs and benefits. 
The overwhelming majority of both companies and inventors confirm that the effects of 
utility model protection are seen as positive; this applies across the board, with little 
variation between firms of different sizes (from 87% to 96%), or between the three 
countries (from 73% to 89%). 
The main positive effect cited is an improvement in market position. Once again there 
are no great differences between firms of different sizes or between countries. An 
average 60% of respondents marked the statement outlining this effect "true", 24% as 
"partly true", and only 2% "false". 
According to the survey results companies and inventors are already aware that they can 
hold on to a competitive lead only by invoking legal measures to keep their competitors 
Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 2.7. 
23 
from imitating their innovations for a certain time, for example by applying to register 
their inventions as utility models. Through their innovations in products and processes 
they seek to display originality and to distance themselves from the competition, so that 
customers develop a positive image of their technological capability. In addition, 40%» of 
respondents believe that utility model protection improves earnings directly, which 
allows the cost of innovation to be recovered more quickly and makes research and 
development more profitable. 
7. Prospects for the economic significance of utility models 
On the basis of the analysis of the existing situation the Commission has considered 
changes and developments in innovative activity in order to arrive at a forecast of the 
economic need for utility models in future. 
Inferences regarding the further development of innovative activity can be drawn from 
changes in spending on research and development, the nature of new inventions, 
production cycles, the time when a protected product is marketed, and the lifetime of 
inventions. 
(a) Changes in spending on research and development 
Beginning in the United States in the 1950s, research and development ("R&D") in the 
individual firm and in the economy as a whole has become a focus of economic research. 
It was realized that there was a chain of causality which started with R&D and which 
largely determined how much and what sort of innovation would take place; this in turn 
to a great extent decided the pace of technological progress and ultimately of economic 
growth.One section of this chain stretches between R&D at one end and innovation at the 
other. 
24-
The survey of companies firms and independent inventors53,54 suggests that R&D 
spending will tend to hold firm in future, which is in line with the answers to questions 
on the future significance of minor inventions; this firmness is particularly clear in the 
case of high-technology industries and big companies. Thus in mechanical engineering, 
vehicles and accessories, electrical/electronics and precision mechanics, optics and 
medical engineering, between 50% and 58% of respondents felt that the level of R&D 
spending would remain the same in future. Given the intensive efforts to cut costs 
currently being made in all branches of industry, a stable level of R&D is to be 
welcomed. 
Scope for increasing R&D spending is discernible in the packaging and materials 
handling industry, in the wood and furniture products industry, and among' 
manufacturers of domestic appliances. The last two in particular are rather "low-tech" 
industries, which according to the respondents have fallen behind in R&D and have some 
catching up to do. When the figures are broken down by size of firm a similar pattern 
emerges for smaller firms. About one third of respondents in this category expect an 
increase in R&D spending in future; the figure for large companies is 17%». 
This clear trend suggests that utility model protection will indeed grow more important 
in future. 
(b) Changes in product life cycles, times to market and the 
lifetimes of inventions 
A Japanese study has found that product life cycles are shrinking worldwide. Leaving 
aside the possible reasons, time-lags between invention, marketing and the next 
generation of products are growing shorter. A comparison of product life cycles between 
1981 and 1991 gives the following picture:55 
53 
54 
55 Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 2.4. 
The Ifo Institute has been carrying out a regular innovation survey since 1979; since the mid-80s this 
proportion has remained within narrow bands "around the 5.5% mark" in all the industries studied. In the 
other EU countries studied in the survey this average is probably somewhat lower: Schmalholz and 
Penzkofer (1993), p. 88. 
Questionnaire relating to Legal Protection of the Fruits of R&D, Japan Institute of Intellectual Property, 
1991. 
-25-
Chanses in product life cycles between 1981 and 1991 
Getting shorter No change Getting longer] 
(Source : Japan Institute of Intellectual Property, 1991) 
This shortening of product life cycles creates a need for rapidly obtainable protection; it 
is less important that the protection obtained should last for a long time. In Japan, 
therefore, the marketing of articles protected by utility models usually begins in the 
interval between application and publication.56 
Marketing of utility-model protected goods, in % 
Between publication for grant and 
registration 
Between publication of application 
and publication for grant 
Between filing and publication of 
application 
Before filing] 
(Source: Questionnaire relating to Legal Protection of the Fruits of R&D, Japan Institute of Intellectual Property, 1991) 57 
56 
57 Questionnaire relating to Legal Protection of the Fruits of R&D, Japan Institute of Intellectual Property, 
1991. 
The total exceeds 100%, as more than one answer was possible. 
26 
Searches to establish novelty are accordingly to be done away with in Japan in the near 
future. This is the only way to meet the need for quick protection of short-lived 
* SX 
inventions. 
In the United States the US Patent Office has carried out a study of changes in the 
lifetimes of inventions. The figures are broken down industry by industry, and show 
percentage changes in the time in which a firm will replace a generation of inventions by 
new inventions. The greater the value shown for the change the more the industry is 
tending to shorten the generation replacement time.59 
58 
Subcommittee Report on Patent and Utility Models Laws and their Practices leading to International 
Harmonization, Industrial Property Council of MITI, 1991. 
59 
Business Week, Science and Technology, 3 August 1992, McGraw-Hill Inc. 
27 
Trend towards shorter lifetimes for inventions. 1987-91. in % 60 
(Source: Business Week, Science and Technology, 3 August 1992, CHI Research Inc.) 
These figures show that in all industries with the exception of fuel, food and chemicals 
there is a tendency for new inventions to be developed more rapidly. 
The result is that the average lifetime of an invention today is not more than six years.61 
A study of innovation among the world's largest companies confirms these figures:62 
60 
61 
62 The lifetime of an invention ends with a new invention which technically supersedes the old one. Thus the 
lifetime of an invention is frequently shorter than the duration of the patent, which can be maintained for 
longer. 
Business Week, Science and Technology, 3 August 1992, CHI Research Inc. 
Business Week, Science and Technology, 3 August 1992, CHI Research Inc. 
Lifetime of inventions, in years -28 
mniiiimiBinnnriiinr 
gggSWKJWW 
O W 
u .a ë 5 
a i 
1 a « E( 
.3 H w 
I 2 * 
I < g 03 g CO « B0 
I s I ô ô ë 5 ^ -g "* 
eu •I s 
s, a. i 3 
o 
I 1 
(Source: Business Week, Science and Technology, 3 August 1992, CHI Research Inc.) 
If one tries to bring these shorter product life cycles and invention lifetimes into relation 
with the industries which make most use of utility model protection, one finds a striking 
degree of correlation. Not only do mechanical engineering, electrical engineering and the 
automotive, industry account for the most utility model applications: they are also the 
industries in which there is the strongest trend towards further reduction of product life 
cycles and the lifetimes of inventions. 
In 1991 the time which elapsed between submission of a patent application to the 
European Patent Office and the grant or refusal of a patent after examination was 44 
months in half of all cases.63 If we compare this figure with the average lifetime of 
inventions,we can conclude that innovation cycles will shorten still further in future, and 
that this will increase demand for a form of protection which can be obtained quickly for 
short-lived inventions, separately from patent protection. The utility model provides the 
best way of meeting this demand. 
63 Annual Report of the European Patent Office, 1991, p. 28. 
-29 
(c) Changes in the scale of innovation and the length of 
exploitation of inventions in the European Union 
In order to obtain a clearer picture of the protection needed by industrial companies and 
independent inventors, they were asked how they graded the inventive step involved in 
their inventions - high, medium or low - and whether short-term protection and short-life 
products were involved.64 
Large companies in particular (over 1 000 employees: 6% of those surveyed) expect the 
proportion of inventions involving a small inventive step or a short period of exploitation 
to remain the same. Thus these companies do not for the most part expect innovative 
activity to increase substantially, over and above the regular renewal of their product 
ranges, or product lifetimes to fall any further. 
Smaller firms take a different view: they accept that they need to do more in this area if 
they want to hold their own in competition. A majority consequently expects an increase 
in the proportion of "small" inventions and inventions with a short period of exploitation. 
SMEs often express the view that given the tougher competition they must intensify their 
innovative activities. They therefore feel that inventions involving a small inventive step 
or having a short period of exploitation will play a greater role in future, so that the need 
will grow for an appropriate form of protection, which can best be provided by the utility 
model. 
For an assessment of future needs it must be noted that only a small proportion of 
respondents in all sizes of firm and all industries (not more than 10%) expected the 
proportion of "small" inventions to fall. 
(d) Usefulness of Community utility model protection to 
industrial companies and independent inventors 
Against the background of developments in innovative activity, industrial companies and 
independent inventors in France, Spain, Germany, the United Kingdom and Italy were 
asked whether they would be interested in a specific form of protection to facilitate 
64 Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 2.3. 
-30-
marketing their "minor" inventions which compared with patents would make less 
stringent requirements for protection, which would not involve examination and would 
consequently be cheaper, but which would afford protection for a shorter time.65 
The survey results leave no doubt that there is fairly strong demand for such a form of 
protection. An average 39% said they would be "very much" interested, 32% said they 
would be "moderately" interested and only 20% said they would have "little" interest. 
"Don't knows" amounted to 9%, which is a small proportion. 
A breakdown by size of firm shows that interest is greatest among smaller firms with up 
to 500 employees. Here almost every second firm questioned would be very interested. 
Interest is somewhat lower among big companies with over 1 000 employees. 
Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 2.10. 
31 
Interest in utility model protection in the European Union (%) 
Broken down by selected Member State 
B very much • moderately • little Qdontkno 
i i 1 i 1 r——i 1 
0% 10% 20% 30% 40% 60% 60% 70% 80% 90% 100% 
Broken down by size of firm 
All classes 
Overl 000 
601-1000 
101-600 
Up to 100 
By export ratio 
Total 
Export ratio <10%] I very much m moderately • little • don't know 
80% 100% 
(Source: Ifo Institute survey in selected EU countries in 1993; European Commission calculations, 1994) 
(7) 
32 
The country-by-country breakdown shows that interest in a special right additional to 
patent protection is particularly strong in Germany. Of German firms and independent 
inventors 46% said they would be very interested, and a further 30% would be 
moderately interested. The results in Spain are similar. Such a form of protection would 
be fairly well received in both countries. One contributory factor is no doubt the fact that 
in these countries utility model systems already have long traditions behind them, and 
are intensively used. Respondents already have practical experience, and are better able 
to imagine an extension of protection to other EU countries and to evaluate its usefulness 
in their marketing activities abroad. 
In the other selected EU countries respondents who said they would be "very much" 
interested in utility model protection are somewhat less well represented. But if we add 
the figures for "very much" interested and "moderately" interested together, there is no 
appreciable difference between the results for different countries. 
Only in the United Kingdom is there a noticeable polarization in views offered. About 
one third of industrial companies and independent inventors would be "very much" 
interested, and about the same proportion would have "little" interest. This may be due to 
the fact that utility models do not at present exist in the United Kingdom. Firms can see 
the economic advantages, but are sceptical at the idea of a European arrangement 
because they have no experience in the area. 
A breakdown by the proportion of exports to the firm's total sales shows that firms with a 
ratio of between 10% and 50% are only slightly more likely to be very interested than 
firms which export less and have an export ratio of less than 10%. Thus interest in EU 
utility model protection is largely independent of export ratio. 
This uniform response suggests that regardless of what sales they may have at present in 
the single market, industrial companies and independent inventors want at least to keep 
open the option of expanding their market in the future, and are interested in EU-wide 
utility model protection for that reason. 
D. Effects of the discrepancies on the common market 
The economic significance of utility model protection means that the discrepancies 
between the existing national schemes have practical repercussions; the Commission has 
-33-
accordingly considered whether this causes obstacles to the free movement of goods and 
distortions of competition which stand in the way of the establishment of the internal 
market called for in Article 7a of the EC Treaty. 
1. Obstacles to the free movement of goods 
Free movement of goods and a customs union are the basis of the Community. They are 
intended to facilitate the achievement of the objectives set out in Article 2 of the EC 
Treaty by establishing a single market66 in which the markets of the separate countries 
are fused and the economic policies of the Member States are gradually aligned. A 
common market is inconceivable without a single market in goods. The Treaty 
provisions on the free movement of goods seek to promote integration by freeing private 
parties to move goods across borders as they see fit, with as little hindrance as possible. 
The EEC Treaty therefore listed the free movement of goods among the "foundations of 
the Community". The Court of Justice has spoken of "the essential purpose of the Treaty, 
which is to unite national markets into a single market".67 
A national intellectual property right registered under the law of a Member State 
provides protection only on the territory of that State. In the absence of any unification 
of the law, therefore, the holder of such a right can prevent third parties from importing 
protected goods which have been produced and marketed without his consent. Thus the 
intellectual property rights conferred by the Member States can of their nature be used to 
hinder the free movement of goods. 
This conflict between industrial property rights and the principle of the free movement of 
goods has been resolved by the Court of Justice in its interpretation of Articles 30 and 36 
of the EC Treaty. The central finding in this interpretation is that the Treaty does not 
affect the existence of the industrial and commercial property rights conferred by 
national law, but that their exercise can be restricted by the prohibitions imposed by the 
Treaty: the free movement of goods may be restricted only where this is "justified for the 
See Article 7a of the EC Treaty. 
Case 78/70 Deutsche Grammophon vMetro [1971] ECR 487. paragraph 6, last sentence. 
34 
purpose of safeguarding rights that constitute the specific subject-matter" of the property 
right.68 
Utility model protection confers additional protection for technical inventions, and by 
analogy with patent protection69 it can be included in the "industrial and commercial 
property" referred to in Article 36 of the EC Treaty. Given the differences which exist 
between the protection conferred by the various national schemes, however, there are a 
number of special features in the way the free movement principles apply. 
Member States are basically free to design utility model systems as they will, provided 
the measures they take are not a means of arbitrary discrimination or a disguised 
restriction on trade between Member States.70 A country may do without utility models 
altogether, as the United Kingdom, Sweden and Luxembourg have done, and where it 
does provide a system of utility model protection it may lay down requirements different 
from those of its neighbours. An invention involving a small inventive step is protectable 
only in those countries where utility model protection exists. The relative novelty which 
suffices in Spain means that inventions which have already been published in other 
Member States will nevertheless qualify for utility model protection in Spain. Even a 
right acquired under these circumstances falls within the scope of the exceptions to the 
free movement principle in Article 30 which are allowed by Article 36 .71 The 
differences between the systems of protection are outside the control of the right-holder, 
and force him to avoid markets where he cannot obtain equivalent protection for his 
invention. Since the new design right was introduced in the United Kingdom72 -it has not 
been possible to register a right in goods whose form is determined solely by their 
technical function.73 This creates a barrier between the UK and other markets. 
Thus the differences which exist have a direct adverse effect on trade within the 
Community, and on firms' capacity to treat the common market as a single setting in 
68 See e.g. Case 192/73 Van ZuylenvHag [1974] ECR 731, and Case 15/74 Centrafarm v Sterling Drug 
[1974] ECR 1147. 
E.g. Centrafarm, supra. 
70 
71 
72 
73 Case 53/87 Consorzio Italiano v Renault [1988] ECR 6039, paragraph 12. 
Case 35/87 Thetford v Fiamma [1988] ECR 3585. 
Copyright, Designs and Patents Act 1988. 
Cornish, Intellectual Property, 1989, Chapter 14, 14-106. 
-35 
which to do business.74 The free movement of goods is obstructed and, as the Court of 
Justice has repeatedly remarked, this is an unavoidable consequence of the lack of 
harmonization of the law.75 
2. Distortion of competition in the common market 
Article 3(g) of the EC Treaty calls for the establishment of a system ensuring that 
competition in the internal market is not distorted. This objective is related to the phrase 
in Article 2 which requires "a harmonious and balanced development of economic 
activities" throughout the Community.76 If firms are to take advantage of the 
fundamental freedoms laid down in the EC Treaty, the intellectual property rules must 
allow fair competition between them.77 
Given the differences which exist at present, companies or individual inventors wanting 
to exploit an invention in several Member States have to familiarize themselves with a 
number of different systems or take expensive advice in each of the Member States 
concerned. The situation may be bearable in the case of big companies that can invest 
large sums of money in the promotion and protection of their inventions. For individual 
inventors and for SMEs the differences they have to deal with and the consequent need 
for legal advice are a source of administrative difficulty and often an insuperable cost 
factor. This restricts innovative activity on the part of such businesses and consequently 
distorts competition. 
In those countries which demand the same level of inventiveness for utility models as 
they do for inventions, there is no proper protection for inventions whose level of 
inventiveness is small. In the United Kingdom, Sweden and Luxembourg there is no 
utility model protection at all. In countries without adequate protection goods can be 
imitated, and no redress is available. 
74 
75 
76 
77 From the Commission's White Paper on Completing the Internal Market, June 1985, paragraph 145: 
"Differences in intellectual property laws have a direct and negative impact on intra-Community trade and 
on the ability of enterprises to treat the common market as a single environment for their economic 
activities." 
E.g. Case 53/87 Consorzio Italiano v Renault, supra, paragraph 10, with further references. 
Manfred Zuleeg in Groeben, Kommentar zum EWG-Vertrag, fourth edition, Rdnr. 9 zu Artikel 3. 
Langheine in Grabitz, Art. 100a, Rdnr. 20; Pipkom in Groeben, Art. 100a, Rdnr. 17. 
36 
Copies can usually be manufactured more cheaply than the originals,because the 
manufacturer does not need to cover the innovation costs, and they can consequently be 
sold more cheaply than the originals too.78 There is thus a danger that in countries with 
low levels of protection the imitation may secure a larger share of the market than the 
original. And as the single market grows more integrated it may well become easier to 
import the imitation into Member States where the level of protection is high. Indeed the 
importer may be acting quite innocently, and be unaware of the differences between the 
two systems of protection. The right-holder's only remedy is then to bring legal 
proceedings against parties who will often have been acting in good faith. 
This runs counter to European Union policy, which seeks to prevent the 
misappropriation of rights resulting from the creative effort of European inventors and 
substantial investments on the part of European business,79 and constitutes a distortion of 
competition. To prevent it the terms of competition must be the same for all enterprises 
doing business in the common market.80 
3. Effects on industrial companies and independent inventors 
The national patent systems in Europe have generally been aligned on European patent 
law. The European Patent Convention was specifically designed to leave the national 
systems unaffected, but there followed a process of voluntary harmonization81 which has 
greatly simplified the practical requirements for cross-border applications. 
The position with regard to utility models is very different. There is a wide variety of 
utility model systems in the European Union..They are used primarily by domestic 
applicants, less often by applicants from other countries in the single market, and still 
less often by applicants from non-member countries. 
78 
Green Paper on the Legal Protection of Industrial Design, June 1991, 3.3.4, p. 31. 
79 
Green Paper on the Legal Protection of Industrial Design, June 1991, point 3.5, p. 33. 
80 
Green Paper on the Legal Protection of Industrial Design, June 1991, point 3.3.1, p. 31. 
81 
See van Benthem in Grur Int., 1993. 
-37-
Given that international trade in goods is increasing, as the international division of 
labour grows stronger, this is not what one might have expected". There ought to be an 
increase in the number of applications for patents and other forms of protection for 
technical inventions, not just in the applicants' own countries but on foreign markets as 
well. Information is also being exchanged more and more rapidly, with international 
fairs providing an important platform for the presentation of innovations, and this creates 
an even greater need for protection against competitors who are prepared to imitate a 
manufacturer's product. 
But in fact European Union applicants rarely seek utility model protection on markets 
outside the Union, and the same applies in the opposite direction. An analysis of 
applications in Asiatic countries which have provision for utility model protection shows 
that European firms make no use of it. Asian firms likewise make only very limited use 
of the possibilities offered by European utility model schemes. Even on markets in which 
they are very interested, such as the German market for example, they account for very 
few utility model applications. 
Comparison of domestic and foreign utility model applications in 1991 
From residents From non-residents 
Germany 13920 1633 
Korea 25125 770 
China 33157 125 
Japan 113340 1334 
(Source: Intellectual Property Statistics 1991, publication A, WIPO, Geneva) 
38 
Country-by-country breakdown of applications made abroad 
Applications by German Applications by Japanese 
firms in firms in ' 
Germany - 64 
Japan 145 -
Spain j48 5 
Portugal 20 -
Brazil 1 5 
China 4 14 
Mexico 2 -
Poland 3 -
(Source: Industrial Property Statistics 1991, publication A, WIPO, Geneva) 
In the Commission's view, therefore, utility model protection has to be looked at in terms 
of the domestic market. In the European Union the domestic market is fast becoming a 
Union-wide single market rather than the market of the particular Member State. 
But even in the single market cross-border applications are fairly exceptional. In order to 
investigate the causes of the small number of cross-border applications, industrial 
companies -and independent inventors in selected EU countries were asked whether the 
differences between the national utility model systems gave rise to practical difficulties 
when seeking protection.82 
82 Weitzel, G., Jib Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 2.7. 
39 
Difficulties with the protection of innovation caused by varying utility model laws in the 
European Union (%) 
By selected EU country 
| Bserlo u s, so m e Elfew Id o n't k no w 
0% 2 0 % 4 0 % 60% 8 0 % 1 0 0 % 
By size of firm 
| Bstrious, some Ofew Id o n't know 
0% 20% 40% 60% 80% 100% 
By export ratio of firm 
Less than 10%] 
2 0 % 4 0% 8 0 % 1 0 0 % 
(Source: Ifo Institute survey in selected EU countries, 1993; European Commission calculations, 1994) 
An average 50% of all firms questioned reported "serious" or "some" difficulties with 
cross-border applications for utility models in the single market. 
-40-
It is striking that the number of "don't knows" is fairly high. This is due to the fact that 
the different systems vary so widely in their effects that companies and independent 
inventors are unable to form an opinion. The number of don't knows is accordingly 
highest in the United Kingdom and France. In the United Kingdom the only protection 
available is the patent, which necessitates a prior examination, or the registered design 
right for functional designs, and in France the certificat d'utilité takes a form largely 
identical to that of the patent; firms in those countries often have no very clear idea of a 
scheme of protection which stands alongside the patent system and can be used either 
alone or in addition to a patent to protect technical inventions involving a small step in 
development or a short period of exploitation. 
Despite this there is still a substantial proportion of respondents in the United Kingdom 
and France who consider that the current situation causes difficulty (United Kingdom 
35%, France 41%). 
The breakdown by size of firm shows that there are difficulties with the protection of 
innovation in the opinion of something over 50% of firms with up to 1 000 employees, 
but only 34% of very large companies with more than 1 000 employees. The smaller the 
enterprise the more frequently it considers that the present, situation is causing it 
difficulty. The reason may be that small businesses do not have the necessary expertise 
inside the firm, and for reasons of cost can have recourse to outside consultants only in 
special cases. The patent departments of large companies clearly have less difficulty in 
applying for utility models wherever the system exists and the market position makes it 
necessary. 
It is also true that small businesses are more likely to express no opinion, while large 
companies have already formed a view of the question.This suggests that small firms 
and independent inventors in the European single market have not yet developed any 
great need for protection, because they continue to sell primarily to established local 
markets. 
This view of the matter is borne out when the answers to the question are broken down 
by the export ratio of the firm questioned. As the export ratio rises, the firm will more 
and more frequently report difficulties with the protection of innovations. There is a very 
strong correlation between export ratio and size of firm, so that it is mainly large 
companies which are affected. Nevertheless, even in the category with a low export ratio 
(proportion of exports to total sales below 10%), 41% of respondents reported 
difficulties. 
41 
In the view of the respondents, therefore, the variations between utility model schemes 
make it more difficult to protect innovation in the single market. These difficulties also 
go a long way towards explaining why the use of the systems which already exist remains 
confined to domestic markets. 
E. European Union policy and economic need 
It has become clear, then, that the Member States have different systems of utility model 
protection, and that utility model protection is of considerable economic significance 
now and will continue to be so in future. The differences between the national systems 
are an obstacle to the free movement of goods and undistorted competition. The present 
situation is undesirable, and to maintain it would run counter to the concept of a Europe 
which is drawing closer together. 
The European Community has a duty to take steps to remedy a situation which is 
detrimental to the single market, and thus to improve the operation of the market. 
In the Commission's view, however, any harmonization undertaken in order to establish 
a single market and ensure that it functions properly must respond to present and future 
economic need. The development of innovative activity in the European Union, which 
has been marked by a trend towards smaller inventive steps, greater cost-sensitivity, 
shorter product and marketing cycles and a shorter lifetime for inventions, is generating 
increased demand for a form of protection that offers fast, simple and inexpensive 
protection for technical inventions in the common market. 
The national schemes of utility model protection do not achieve this. The Member States 
are in no way to blame: first, they are free to design their systems as they will; and 
second, the difficulties noted here do not emerge clearly inside the confines of the 
individual Member State, but rather in cross-border dealings in the single market. 
In order to ensure that the single market becomes a reality and operates smoothly, 
therefore, steps should be taken to remedy these shortcomings at Community level, with 
the following main objectives: 
42 
protection to be provided for technical inventions which involve only a small 
inventive step, 
protection to be provided for short-lived technical inventions, 
protection to be obtainable rapidly, 
protection to be obtainable simply, 
protection to be inexpensive, and 
publication to be rapid, so that the public is informed quickly. 
-43-
III. WHAT MEASURES SHOULD BE TAKEN? 
This investigation has found, therefore, that the variety of the forms taken by utility 
model protection has an adverse effect on the establishment and the functioning of the 
single market. The conclusion was that only a harmonization of the different systems of 
protection would adequately meet the needs of the economy and satisfy the requirements 
of a common market. If it is accepted that Community action is needed, it has then to be 
considered what options are open; there are two aspects to be looked at here: 
• what form any legislation should take, and 
• the substance of the arrangements to be introduced. 
44 
A. The appropriate form of legislation 
Harmonization must aim not only at removing the disadvantages caused by the 
differences between the rights of protection available which we have noted: it must also 
seek to improve the general level of protection of industrial property. Various kinds of 
harmonization are possible here. 
The Commission is required to bring forward the "measures" needed for the realization 
of a single market. The "approximation of laws" is not confined to removing 
discrepancies between existing laws: it is concerned with the removal of conflicts 
between regulatory systems in general.83 This may mean introducing a right of protection 
in a Member State where no such right existed before, if that will help to achieve a single 
market. A harmonization "measure" may take the form of any of the acts listed in the EC 
Treaty, especially the regulation and the directive. 
In the case of utility models the first option to be considered is a directive aligning the 
national schemes of protection, and thereby introducing utility model protection in those 
countries where it does not as yet exist. If companies and independent inventors were 
interested in being able to secure protection in several Member States at once by means 
of a single application, measures would have to be taken which went beyond a 
straightforward harmonization of national systems of protection. One possibility would 
be to broaden the scope of the alignment by providing for mutual recognition of the 
protection granted by other Member States. Another possibility would be to create a 
uniform European protection right, which as a Community right would rank above the 
national systems of protection but would not replace them. Lastly, a combination of 
different options might be envisaged if that would produce an arrangement better tailored 
to the needs of the single market. 
1. Aligning the national schemes 
In the European single market most industries now operate on markets which stretch 
beyond national borders. There is no need to consider the factors at work in detail here. 
Since the single market was established and customs borders disappeared in 1993 the 
geographic markets for many products have grown larger than ever. This tendency will 
83 
Pipkorn in Groeben, Art. 100a, Rdnr. 25,41. 
45-
intensify in future. The borders which still exist at present will no longer be an obstacle 
in the way of the market. For the time being, however, unnatural borders still exist 
between compartments demarcated by intellectual property law. Before one can say that 
a single market has genuinely been achieved, it is not enough that physical border 
controls should have been abolished; it must be possible to recognize the single market 
as such. That is difficult to do when there are differences in respect of particular 
intellectual property rights which are so wide that an applicant in one country will see no 
point in applying for corresponding rights in other Member States.84 Differences between 
entitlements create administrative problems which all applicants, but especially SMEs 
and independent inventors, have difficulty in overcoming. This acts as a curb not only on 
the innovative capacity of industry but also on the achievement of a single market. 
Harmonization of the existing schemes of protection by means of a directive, so as to 
arrive at fifteen similar but separate systems of protection, requires two things: the 
introduction of utility model protection in countries where nothing of the sort yet exists, 
and the alignment of the substance of the rules which do already exist. 
(a) Introduction of new rights 
At present there is no utility model protection in the United Kingdom, in Sweden or in 
Luxembourg. Harmonization in the European Union would require the introduction of 
utility model rights in these countries. In Luxembourg there is no experience with this so 
far, but in the United Kingdom a proposal for a "second-tier patent" was abandoned in 
1986.85 
In a recent survey , however, UK companies and independent inventors expressed a clear 
view that the introduction of such a right would be a valuable addition to patent 
protection granted after prior examination.86 
84 
85 
86 From the Commission's White Paper on Completing the Internal Market, June 1985, paragraph 145: 
"Differences in intellectual property laws have a direct and negative impact on intra-Community trade and 
on the ability of enterprises to treat the common market as a single environment for their economic 
activities." 
White paper on Intellectual Property and Innovation, April 1986, 3.6. 
Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, English version May 1994, 2.9.3, Innovation protection in the United Kingdom 
-46 
Interest in a utility model in the United Kingdom 
Interest, by size of firm (% 
All sizes 
Over 1 000 
601-1000 
101-600 
0-100 
10% 20% 40% 50% 60% 70% 80% 90% 100% 
Future use of utility models, by size of firm (%) 
All sizes 
Over 1 000 
501-1000 
101-600 
1-100 B all or almost all Q most I a small proportion G must wait and see 
0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% 
(Source: Ifo Institute survey in selected EU countries, 1993; European Commission calculations, 1994) 
An average 53% of the United Kingdom industrial companies and independent 
inventors questioned said they would be "very interested"; the distribution between large 
and small companies is typical. Small firms (up to 100 employees), at 76%, are a great 
deal more interested than very big companies (over 1000 employees), of whom 31% 
nevertheless say they are very interested. Only a few of the small businesses questioned -
3% - were "not very interested", while this figure rose to 34% in the case of big 
companies. 
47 
Respondents in the United Kingdom also made it clear that utility model protection, if it 
existed, would have an appreciable role to play even now . The group which could see it 
taking on importance only in the future, at 21%, is relatively small. 
Not only did the respondents see a relatively strong economic interest in utility model 
protection, they would also make frequent use of the system for their inventions. Here 
too there are considerable differences in the proportion of applications depending on the 
size of the firm. Small firms were much more disposed to apply than big companies. Of 
small firms 24% would actually apply in respect of "all or almost all" their inventions, 
while in other categories the number of firms who would seek such intensive protection 
amounted to only 3% to 9%. 
It is worth noting that in the United Kingdom big companies were more inclined to take 
a wait-and-see attitude than small firms were. Of big companies 30% said they would 
have to wait and see; the figure for small firms was 18%. This positive reaction among 
United Kingdom industrial companies and independent inventors needs to be 
complemented by information on Luxembourg and Sweden before a final decision is 
taken on the economic interest in the introduction of a system of this kind. 
(b) Aligning the substance of national utility model law 
If utility model protection is introduced in those countries which do not at present 
possess it, and the existing systems in other Member States are aligned, there will then be 
fifteen similar national protection rights in existence alongside one another. 
A right-holder can be sure that he will find an equivalent right in all Member States, and 
will no longer have to concern himself with a multiplicity of different rights. Whether he 
applies for protection in one country only or throughout Europe, he will know the main 
requirements and the scope of the protection granted. This will reduce costs and simplify 
applications in other Member States. Once systems of protection have been harmonized 
by directive, so that a portfolio of similar national rights can be obtained, the advantage 
to be secured from cross-border applications will be much greater. This should produce a 
further increase in innovation. 
Such an alignment will doubtless include substantive provisions concerning what is 
protected, the requirements to be met, the scope and duration of protection, grounds of 
refusal or nullity, and the exhaustion of rights. This should reduce the number of 
conflicts in the way of a single market; but it will not remove the cause. 
48-
2. A broader alignment 
Such a directive would align the substantive national law to establish a set of parallel 
national rights; it would not remove those restrictions on free trade and competition 
which derive from the independent nature of the national rights, and from the way the 
territorial principle is consequently understood in the Member States. Even after a 
harmonization of this sort borders would continue to exist, as would the possibility of 
conflicting rights granted under separate systems. 
A more far-reaching directive might go beyond the alignment of substantive law to 
provide that the Member States were to amend their own legislation to allow the 
applicant to request that the effects of his domestic utility model should be valid in other 
Member States - with special reference to creation, application, registration, transfer and 
protection - and to give similar effect to utility models granted in other Member States. 
Legal steps taken by an authority in any one country would then be given effect in other 
Member States on the basis of the harmonized legislation in force there. They would be 
mutually recognized. Procedures for application and registration would have to be 
aligned completely. 
De jure, then, utility models and rights arising out of them would continue to be a matter 
of national law. But they would have effect across borders. 
Of course the individual Member States have no power to make law with extra-territorial 
force in other Member States. But they have got power to provide in the law applicable 
on their own territory that as far as that law is concerned utility models granted and legal 
acts done under that law are to have extra-territorial effect in the other Member States; 
this would amount to a claim that the rights arising out of utility models granted and 
legal acts done by their own authority should be recognized in other Member States too. 
For these extra-territorial effects to be valid in the law of those other Member States, the 
separate Member States would have to recognize them as far as their own territories were 
concerned. In practice a directive would be needed to ensure that all Member States 
introduced the same system. It would have to provide for far-reaching alignment of 
substantive and procedural law. 
49 
For the practical implementation of mutual recognition of this kind there would have to 
be coordination of the work of the relevant authorities in each country, perhaps through 
the medium of an advisory committee 87. There might then be a simplified administrative 
procedure under which an application could be made to the domestic office responsible 
to have a utility model registered in other Member States too. 
3. The introduction of a Community right 
There are a number of difficult problems which would arise as a result of the very 
comprehensive alignment of the substantive and procedural law of utility models, and 
consequently also of the work of the responsible offices in each Member State, which 
would be required in order to ensure that the offices' utility models and legal acts could 
have Community-wide effect. 
The responsible offices would not readily be able to administer their Europeanized utility 
model laws uniformly, effectively and without additional staff and administrative 
resources. Both for individual inventors and for industrial companies such a 
Europeanized but still nationally administered system might well be a great deal less 
attractive than a full-blown Community right. The vital considerations for users are 
simplicity, clarity and legal certainty. 
Consideration could also be given, therefore, to the possibility of adopting a regulation 
introducing a Community utility model right. A right obtained under Community law 
would be valid directly in all Member States. Protection throughout a territory 
comprising all the Member States could then be secured 
• by means of one application to one Community office 
• in one set of proceedings 
• under one body of law. 
This course could secure a steady reduction in the obstruction and distortion which afflict 
Community cross-border trade and competition in articles which are the fruit of human 
invention, as compared with domestic trade and competition in the same goods. 
For a similar view see the legal opinion by Ivo Schwartz, Special Adviser on the Approximation of Laws, 
Can the Draft Council Regulation on the Community Design Be Based on Article 100a of the EEC 
Treaty?, m/5327/91-EN, August 1991. 
-50 
4. A combination of alignment of laws and the introduction of a 
Community right 
The integration of the single market is not yet complete. There will continue to be 
companies which need utility model protection but whose business is confined to 
regional market. Harmonization is especially important to smaller businesses, but in the 
first place the advantage they can gain from covering the entire common market will be 
small. 
But it must be borne in mind that the unification of the common market is a process 
which is still going on. A combination of different possibilities might be the best way of 
ensuring that a future system was even better tailored to the needs of the single market: 
As with trade marks and designs, a directive harmonizing national systems of protection 
might be combined with a regulation introducing a new single utility model right. 
There would then be fifteen harmonized national systems of utility models, capped by a 
Community system. Applicants could choose between one or more purely national rights 
and a Community right covering the whole of the territory of the European Union. 
5. The views of industrial companies and independent inventors 
That there is commercial interest among companies and inventors in obtaining protection 
simultaneously in several Member States of the European Union can be clearly seen 
from the study covering France, Spain, Germany, the United Kingdom and Italy, in the 
answers given to a question asking in how many EU countries they would file utility 
model applications at the same time if that were possible.88 
Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 2.10. 
51 -
Number of countries designated if there were a Community utility model in the EU 
By selected EU country (%) 
EM to 2 13 to S Q 6 or more CB must wait and see 
United Kingdom 
France 
Spain 
Italy 
Germany 
0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% 
By size of firm (%) 
01 to 2 I3to5 • 6 or more I must wait and 
All sizes 
Up to 100 employees] 
0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% 
(Source: Ifo Institute survey in selected EU countries, 1993; European Commission calculations, 1994) 
Only a very small proportion (5%) would not apply in respect of any EU country. 
Answers most often fall in the three-to-five range (42% of respondents); a further 25% 
would apply in respect of six or more countries, while 22% are undecided and say they 
must wait and see. 
52 
6. The views of patent attorneys 
The following picture emerges from the survey of patent attorneys in Germany, France, 
the United Kingdom and Spain, in which they were asked about the shape to be taken by 
utility model protection in the European Union in future.89 
Assessment of legislative options (selected EU countries*) 
Germany j Spain 
& W I «) *L France j United Kingdom 
a) b) 1 a) b) 
Single European 
utility model 
systems * important 
not so important 
No. of 
respondents 77 69 100 67 
23 31 33 
17 16 3 3 50 
50 75 
25 50 
50 50 
50 
Harmonization 
of national rules important 
not so important 
No. of 
respondents 78 71 100 100 50 50 
22 29 50 50 100 100 
Harmonization 
and single 
$ystems Important 
not so important 
No, of 
respondents 79 
21 
98 74 
26 87 
13 
68 31 88 
12 
24 85 
15 
20 69 
31 
16 71 
29 
34 83 
17 
29 
No sueh 
measures important 
not so important 
No, of 
respondents 
*} More than oneanswer was allowed here 
a) Small and medium-sized, enterprises (SMEs} 
b) targe companies 100 • 100 
16 33 
67 25 
75 17 
83 25 
75 40 
60 14 
86 
Source: Ifo Institute survey of patent attorneys in selected EC countries, 1992. 
There was obviously considerable interest in hearing the views of patent attorneys in the 
four Member States surveyed on the question which of the legislative options was most 
urgent in terms of the needs of the firms they advised. The answers "important" and "not 
so important" were offered rather than "yes" and "no" in order to establish priorities. But 
in the event a large majority of the respondents favoured a single European utility model 
law and the harmonization of national rules at the same time. 
89 Weitzel, G., Ifo Institute, Pilotstudie - Die wirtschqftliche Bedeutung des Gebrauchsmusterschutzes in der 
Europdischen Union, D, 2.7, p.30. 
53 
According to these results only very few patent attorneys in the four EU countries 
surveyed are of the opinion that either a single European system of utility model law or a 
harmonization of national rules would be sufficient. Clearly a large number of them 
could not or would not commit themselves to a single strategy because that might be to 
the advantage of only certain categories of applicant. The results do not show any 
difference in choice depending on size of firm, so that one cannot say for example that a 
Community utility model system is more desirable for large companies and a 
harmonization is more desirable for smaller businesses. According to the patent attorneys 
questioned both options should clearly be available; there was a very broad consensus on 
this point in the four countries surveyed. 
Among patent attorneys and among industrial companies and independent inventors', 
then, there is agreement on the need for utility model protection in the European Union. 
There is a clear interest in the possibility of a single application which would secure 
protection in at least three to five countries, alongside the protection available 
domestically under harmonized national rules. 
In the Commission's view, therefore, an alignment of the national systems would be a 
sensible first step towards improving the present situation, but it would not overcome all 
the problems which currently exist. As the Commission understands the matter at 
present, consideration should also be given to the question whether 
• mutual recognition of harmonized national rights, 
• the introduction of a Community right, or 
• a combination of the alignment of laws and the introduction of a Community 
utility model 
are measures which could help to ensure a steady reduction in the obstruction and 
distortion of cross-border Community trade and competition in goods incorporating 
inventions. 
-54 
B. The substance of Community-level protection of utility models: principles 
On the basis that there is a need for harmonization of utility model protection if the 
single market is to work properly, then, a two-tier system could be created consisting of 
an array of national utility model rights and a Community utility model right, forming an 
effective combination of the instruments available. 
Given the economic importance of the existing systems, the changing character of 
innovative activity in the single market, and the economic need for such systems, a 
system of protection which aimed at ensuring that the single market became a reality and 
operated smoothly should have the following features: 
• protection to be provided for technical inventions which involve only a small 
inventive step, 
protection to be provided for short-lived technical inventions, 
protection to be obtainable rapidly, 
protection to be obtainable simply, 
protection to be inexpensive, and 
publication to be rapid, so that the public is informed quickly. 
The substance of a utility model system introduced in order to make a reality of the 
single market must meet genuine needs, without going beyond them. The Commission 
has therefore begun by examining the existing arrangements to establish how suitable 
they might be for a future Community-level system. 
1. Basic design 
Utility model protection exists in twelve out of fifteen Member States; alongside very 
wide discrepancies these systems also display similarities which might serve as a basis 
for a Community-level utility model. 
The core of the various systems is a right of protection for technical inventions, 
additional to patent protection, which is registered without an examination to establish 
novelty and inventive step. Before studying the differences between the individual 
national schemes, therefore, the Commission has considered whether these common 
features can provide the basis for a Community-level system or whether new 
arrangements are needed which would differ from the existing ones. 
-55-
The points looked at here are whether the right should protect the technical form rather 
than the invention; whether registration can be dispensed with; and whether before the 
right is granted there should be a prior examination in order to establish that the 
requirements are met. 
(a) Protection of form or of invention? 
Bearing the objective in mind, the Commission has considered whether a 
Community-level system of utility model law should protect the technical form or the 
technical invention. This is more than just a matter of determining exactly what is 
protected: the answer will be a fundamental option for the entire system. 
A comparison of the national arrangements shows that in some countries it can be 
difficult to determine precisely what is protected.90 In Italy and Portugal, for example, 
the three-dimensional form requirement is so strong that careful interpretation is needed 
before it can be decided that it is the invention which is protected. It is fair to ask, 
therefore, whether the functional product itself should be protected under a future 
system. In the course of the development of utility model protection there have in fact 
been periods in some countries when it was not the invention but the resulting object 
which was protected.91 
Whatever view is taken of the need for embodiment in a three-dimensional form, it is 
always the functional character of an object which is protected under the schemes 
discussed here, rather than its appearance, which may of course be protected by 
legislation on designs or copyright. This functional character is something intangible, 
like directions for a technical process, or the solution to a technical problem. Copyright 
protection is not usually available for functional objects because of the level of 
originality or creativity it requires. 
Utility model protection may subsequently be restricted by a three-dimensional form 
requirement, but this is a further requirement that must be satisfied in order to qualify for 
protection rather than the actual subject-matter of protection. It is difficult to see how 
90 
See Annex 1, comparative study, A.2. 
91 In Germany, for example, the legislature at one stage took a step backwards by declaring that protection 
was available for the three-dimensional concept incorporated into tools and utensils (Bl. 36, 116); but in 
Germany too it is now the technical invention itself which is protected. 
-56 
that subject-matter could be protected by copyright, or integrated into legislation on 
industrial design. The concept of invention is the only way of doing justice to this 
functional character. 
It would appear, therefore, that it is the technical invention which should be protected by 
a Community-level utility model system. 
(b) Dispensing with registration 
All the Member States which have a utility model system have made provision for 
registration. The introduction of a similar system was suggested but rejected in the 
United Kingdom: industry in particular feared that it would leave firms unsure of their 
legal position, since it would produce large numbers of registered but untested rights 
which conferred no definitive entitlement on the holder or anyone else.92 The 
Government took the view that merely limiting the maximum duration to ten years 
would not be enough to mitigate this legal uncertainty. 
One might ask whether these difficulties might be overcome by dispensing with 
registration. But this would leave inventors even less certain of their legal position than 
does the registration of untested rights. It would be very difficult to establish who had 
secured protection, when, and for what. Enforceability would suffer enormously. 
However, there is no reason to expect a flood of untested rights in a system of 
registration. In Member States which already possess such a system there is an 
equilibrium between utility models and patents: the absence of prior examination means 
that the legal certainty conferred by a utility model is limited, so that a patent will often 
provide more effective protection. In most Member States, too, a cursory examination is 
made at the time of registration to ensure that the invention is prima facie protectable; 
this acts as some sort of filter and avoids the necessity of registering all inventions. 
Registration also enables the holder to invoke his rights more effectively. Very often a 
protected invention will not be directly recognizable by outsiders, unlike an object which 
is protected on the basis of its external form, and the fact that there is a registration to 
point to increases the attractiveness of utility model protection. The publication 
97 
White paper on Intellectual Property and Innovation, Presented to Parliament by the Secretary for Trade 
and Industry by Command of Her Majesty, April 1986, 3.6. 
-57 
associated with registration helps to ensure that the public is informed quickly, and 
facilitates further innovation. 
// would appear that a Community-level utility model system ought to provide for 
registration. 
(c) Examination to ensure that requirements are met 
The absence of any examination for novelty and inventive step was one of the main 
objections which led to the rejection of this form of protection in the United Kingdom.93 
It cannot be denied that a prior examination clarifies the legal position considerably. 
Indeed Japan, which has a very intensively used utility model system, departed from the 
German model when it introduced that system by providing for examination before 
registration in order to establish that the requirements were met.94 
But the fees charged for such an examination substantially increase the cost, and prolong 
the time taken to register the right. As became clear in the study of the economic 
importance of the utility model, there is strong demand in the European Union for a right 
which can be obtained quickly and inexpensively.95 Speed and cost were the reasons 
most often cited for applying for a utility model. 
A survey of innovative activity on the part of firms in Germany has found that 
applications for patents are falling.96 About 55% of the firms surveyed say that a major 
cause of the fall is the time taken for processing applications, which they feel is 
excessively long. Small businesses are generally more inclined to criticize the time taken 
before the final grant, and consequently do not apply even in respect of inventions which 
have a strong chance of obtaining a patent. 
93 
94 
95 
96 White paper on Intellectual Property and Innovation, Presented to Parliament by the Secretary for Trade 
and Industry by Command of Her Majesty, April 1986, 3.6. 
Guide to Patents and Utility Models in Japan, Chapter I, p. 12, at (4)(ii). 
See above, Chapter II, "The need for action at Community level". 
Tàger and Seyler, Ifo Institute, Problème des deutschen Patentwesens im Hinblick auf die 
Innovations tâtigkei ten der Wirtschaft (insbesondere kleiner und mittlerer Unternehmen) und Vorschlâge 
zu deren Lôsung, Schlufibericht, May 1989. 
-58-
The low cost of registering a utility model can be particularly attractive where the 
commercial value of the invention cannot be determined with precision. Putting an 
invention to use can involve a considerable commercial risk, because the new product or 
process will often fail to establish itself on the market. Where the success of an 
invention is very uncertain, therefore, the low cost of applying for a utility model will be 
a decisive factor in the choice of this form of protection. 
SMEs have particular difficulty in determining the sales prospects of new products, and 
thus the value of inventions, because they have inadequate information from market 
observation and market research. Big companies can make use of tried and tested 
planning and forecasting machinery; this does not mean that they never have product 
failures, but they can limit their risk to some extent at least. If a patent attorney 
represents an applicant for a utility model his fees may be much the same as they would 
be for a patent, but the services of patent attorneys are less often engaged here than they 
are in the case of complicated patent applications. And because there is no prior 
examination the fees payable to the office registering the utility model are substantially 
lower. 
Introducing a prior examination would bring a gain in terms of legal certainty, but it 
would mean giving up the objective of speed and low cost. The many years of positive 
experience built up in the countries which possess this form of protection show that the 
lower degree of legal certainty has no great practical repercussions.97 
Furthermore, the utility model would now be distinguished from the patent only 
provided the inventive step required was lower.Utility model protection would be less 
important by comparison with patent protection: it would simply be an extension of the 
patent, covering largely the same ground, and could be integrated fully into patent law.98 
The cost and slowness associated with the patent system would be unavoidable. 
Lastly, the need for legal certainty can also be provided for by limiting the lifetime of the 
utility model in comparison with that of the patent99 and by providing that in the event of 
infringement there would be an examination in order to establish whether or not the 
97 
Union of European Practitioners in Industrial Property, Bulletin No 21, March 1992, p. 9. 
98 
This argument led the Japanese Government to put an end to prior examination. 
99 
This is done in all Member States which operate a utility model system. 
-59 
requirements were met. Prior examination would run counter to the objective of quick 
and inexpensive utility model protection, and would tend to reduce innovative activity 
particularly among small businesses. 
// would not appear desirable, therefore, to provide for an examination to ensure that the 
requirements are met before registration. 
(d) Principles 
The system which has been outlined here provides a form of protection for technical 
inventions which is additional to patent protection, and which is registered without prior 
examination for inventive step and novelty; these principles should form the basis for 
action at Community level. 
All of the systems introduced in recent years follow this scheme, which confirms its 
effectiveness.100 The United Kingdom has no such system at present; patent attorneys 
there have been asked what would be the attitude of the firms they advise to the 
introduction (at domestic level) of a form of utility model protection for technical 
inventions which would involve registration without prior examination for novelty and 
inventive step.101 
100 
In Ireland, Denmark, Greece, Austria and the Netherlands. 
Weitzel, G., Ifo Institute, Pilotstudie - Die wirtschafiliche Bedeutung des Gebrauchsmusterschutzes in der 
Europdischen Union,D,2.7.1,p.32. 
-60 
United Kingdom: economic need for the introduction of a registered utility model system 
for technical inventions without prior examination for novelty and inventive step 
by size of firm (%) 
Large companies 
Small and medium sized 
enterprises (SMEs) • very important s not so important • unimportant 
Source: Ifo Institute survey of patent attorneys in selected EC countries, 1992. 
Just under 60% of the UK patent attorneys questioned felt the introduction of such a 
right would be "very important" for SMEs (the figure for large companies was 32%), and 
only 16% felt that as far as SMEs were concerned a "new" right of this kind would be 
"unimportant", that is to say unnecessary. Thus there was a majority in favour of 
introducing a utility model, primarily in the interests of small businesses. 
2. More detailed rules 
There are substantial differences between the existing utility model systems with regard 
to inventive step, three-dimensional form, excluded inventions, novelty, industrial 
application, procedure, effects, transfer, duration, infringement, and dual protection. The 
Commission has accordingly considered the various arrangements adopted in order to see 
which would be most suitable for a Community-level system. 
(a) Inventive step 
One of the main differences between the existing utility model schemes is the size of the 
inventive step they require. 
-61 
Sometimes the same inventive step is required as for a patent, but in the majority of 
cases a smaller inventive step is sufficient. Protection is thus available for inventions 
incorporating an inventive step which would not qualify them for a patent.102 This means 
that the vertical spread of inventions for which protection is available is greater than in 
the case of patents.103 Experience in countries with systems of this kind shows that a 
sizeable proportion of technical progress is attributable to small inventions. 
In Germany and Japan, countries with high volumes of patent and utility model 
registrations, the fall in patent applications is partly due to a fall in the number of 
patentable inventions.104 As competition in innovation grows more intense, there is 
greater development in the field of continuous improvement.105 
Inventions involving only a small inventive step are frequently very useful and of 
considerable commercial importance too: "small" inventions are not necessarily less 
important commercially than those involving an inventive step which would qualify 
them for patent protection.106 The innovation these inventions represent can sometimes 
be just as great as that of a patentable invention even if they do not qualify for 
protection. As we saw when we considered the economic significance of utility model 
protection, the importance of "ordinary" technological development can be expected to 
grow in future by comparison with "extraordinary" development.107 
In the systems which protect inventions with only a small inventive step, inventions are 
publicized which would otherwise have been kept from the public for re'asons of 
102 
103 
104 
105 
106 See Annex 1, comparative study, A(3)(b), "Inventive step". 
As opposed to the horizontal spread, which may be more restricted, as a result of a three-dimensional form 
requirement for example. 
Germany: Tâger and Seyler, Ifo Institute, Problème des deutschen Patentwesens im Hinblick auf die 
Innovationstàtigkeiten der Wirtschqft (insbesondere kleiner und mittlerer Unternehmen) und Vorschlàge 
zu deren Losung, Schlufibericht, May 1989, p. 127; 
Japan: discussion with specialists in Japanese utility model law, Tokyo, March 1992. 
Weitzel, G., Ifo Institute, Pilotstudie - Die wirtschaftliche Bedeutung des Gebrauchsmusterschutzes in der 
Europdischen Union, 2.3. 
Tàger and Seyler, op. cit., p. 55,1. 
'Importance juridique et é 
Q 83, Allemagne, p. 6,1.1. 107 
'Importance juridique et économique de la protection des modèles d'utilité', in AIPPI Yearbook 1986, 
62 
confidentiality. This enables other inventors to build on the initial invention. They in 
their turn have an effective way of protecting their own developments. 
Thus a lower inventive step requirement promotes "ordinary" technical development.108 
This is in line with the needs of the changing pattern of inventive activity. It is not 
surprising, then, that as long ago as 1986 interest groups109 in France and Belgium, the 
very countries where a smaller inventive step is not acceptable, called for the 
introduction of a utility model with an inventive step requirement lower than that of a 
patent.110 And to judge by numbers of applications, the systems which have a lower 
inventive step requirement are a great deal more popular than those which demand the 
same inventive step as for patents.111 Surveys of industrial companies, independent 
inventors and patent attorneys confirm this picture.112 
// would appear, therefore, that Community-level measures regarding utility models 
ought to allow a smaller inventive step than is required for patents. The demarcation line 
between patent and utility model would have to be formulated in a way which meets the 
needs of users, competitors and the lawcourts in equal measure. 
(b) Three-dimensional form requirement 
From the comparison of the different utility model schemes in the Member States it 
emerges that in a number of systems the invention must be embodied in 
three-dimensional form. Systems in this group are the Greek utility model certificate, the 
Spanish modelo de utilidad, the Portuguese modelo de utilidade, and the Italian brevetto 
per modelli di utilità. 
108 r ., 
Loc. ctt. 
109 
Representatives of the French and Belgian branches of the AJPPI. 
1 'Importance juridique et économique de la protection des modèles d'utilité', in AIPPI Yearbook 1986, 
Q 83, France, p. 81: "Le modèle d'utilité n'a pas à être soumis au même degré d'activité inventive que le 
brevet, mais il doit remplir d'autres conditions que celle d'activité inventive". 
See above, Chapter fl\C.l(a) and (b), national and cross-border applications. 
112 
Weitzel, G., Ifo Institute, The Economie Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 2.6; Weitzel, G., Ifo Institute, Pilotstudie - Die wirtschaftliche Bedeutung des 
Gebrauchsmusterschutzes in der Europûischen Union, D, 2.7.2. 
63-
The three-dimensional form requirement derives from the history of utility model 
protection, which was originally confined to tools and utensils.113 The intention was to 
provide an easily obtainable form of protection appropriate to the technical and 
commercial importance of the many innovations developed by independent inventors, 
craft firms and small businesses.This was an area which was not covered by industrial 
design law or by patent law, so that as well as easing the load on the patent office the 
new right was intended to close a gap.114 Even at that time the possibility of extending 
utility model protection to all inventions was discussed, as a more drastic way of 
relieving the burden on the patent office.115 But it was decided to require a 
three-dimensional form nevertheless, on the ground that the overwhelming majority of 
the small inventions of that time were artefacts: the invention was embodied in an object. 
Furthermore, only simple inventions were to qualify for utility model protection.11.6 
Complicated inventions which could not readily be understood by the layman or by the 
lawcourts had to be subject to prior examination, and would consequently be protectable 
by patent alone.117 
This situation no longer obtains today. An invention which is embodied in an object need 
not nowadays be a simple one. In Germany the courts have accepted since the end of the 
1930s that complex devices may be protected by utility models.118 On the other hand, 
although the utility model was intended for small and short-lived inventions, to serve as 
a back-up to patent protection, for a long time now many such inventions have in fact 
been excluded as a rule by the three-dimensional form requirement;119 these include: 
113 
114 
115 
116 
117 
118 
119 Beier, 'Gebrauchsmusterreform auf halbem Wege: die uberholte Raumform', in GRUR 1986, Heft 1, p. 1, 
p. 3, left-hand column. 
Beier, loc. cit.; Asendorf, 'Herkunft und Entwicklung des Raumformerfordernisses im 
Gebrauchsmusterrecht', in GRUR 1988, Heft 2, p. 83, p. 84 at point 3. 
Shorthand reports of the proceedings of the inquiry into the revision of the Patent Act of 25 May 1887, 
footnote 15 in Beier, loc. cit., p. 4, left-hand column. 
Beier, loc. cit., p. 4, right-hand column. 
Asendorf, loc. cit., p. 88 at VI. Asendorf argues that the three-dimensional form requirement owes its 
existence to Kohler's criticism of the division between design and utility model law. Kohler maintained 
that patent law had to do with the use of motive power, while design and utility model law were concerned 
with physical form. 
Beier, loc. cit., p. 5, left-hand column, with further references in footnote 22. 
Beier, loc. cit., p. 6, left-hand column. 
64 
chemicals and other substances without a solid form; 
foodstuffs, drink and tobacco, and medicines; 
electrical circuits where the invention lies in a purely functional aspect; and 
working methods and methods of use, including new uses for articles which are 
already known. 
Thus the grounds for introducing the three-dimensional form requirement do not 
correspond to present needs.120 
// would not appear desirable, therefore, to include a three-dimensional form 
requirement in a future utility model scheme. 
(c) Excluded inventions 
The changed situation may justify doing away with the three-dimensional form 
requirement on the grounds that it is anachronistic;121 but it does not automatically follow 
that all inventions should be eligible for utility model protection. The Commission has 
accordingly studied present needs for utility model protection, in order to establish 
whether some inventions should not ..continue to be excluded from utility model 
protection. 
(1) Unprotectable inventions 
In all the existing utility model systems there are exclusion clauses which are based on 
the European Patent Convention and borrowed from patent law. 
Under Article 52(2) of the Convention, for example, the following are not considered 
protectable inventions: 
120 
121 Beier's view is shared by Olbricht, 'Raumerfordernis', in GRUR 1986, p. 435 at 3, and Buhling, 
'Gebrauchsmusterreform auf halbem Wege: die tiberholte Raumform', in GRUR 1986, p. 434; for a 
different view see Fischer and Pietzcker, 'Gebrauchsmusterreform auf halbem Weg - eine Erwiderung', 
GRUR 1986, Heft 3, p. 208, p. 210, right-hand column. 
Fischer, '25 Jahre Patent- und Gebrauchsmusterreform - ein Ruckblick', in GRUR Int. 1989, Heft 9, p. 717, 
p. 722, left-hand column. 
-65-
discoveries, scientific theories and mathematical methods; 
aesthetic creations; 
schemes, rules and methods for performing mental acts, playing games or doing 
business, and programs for computers; 
presentations of information. 
And under Article 53 the following are not protectable either: 
Inventions the publication or exploitation of which would be contrary to ordre 
public 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 of the 
Contracting States; 
plant or animal varieties or essentially biological processes for the production of 
plants or animals; this provision does not apply to microbiological processes or 
the products thereof 
These exclusion clauses should be taken over in a Community-level system of utility 
model protection. 
(2) Substances and compositions of substances 
Alongside these international exclusion clauses, the exclusion of substances and process 
inventions has often been discussed. 
Examples of compositions of substances are the sealing compounds, adhesives, 
compounds of polymer binding agents, sizing agents, emulsions and dispersions which 
are widely used in the foodstuffs, pharmaceutical and cosmetics industries,122 and 
additives used with textiles, leather and paper.123 Such products can be manufactured 
quickly and marketed quickly. They need a form of protection which can be obtained 
quickly.124 
122 Buhling, 'Zum Raumerfordernis bei Gebrauchsmustern', in GRUR 1988, Heft 1, p. 15, p. 16, right-hand 
column. 
123 
Domes, 'Zum Raumerfordernis beim Gebrauchsmuster', in GRUR 1987, Heft 9, p. 584, p. 589, left-hand 
column. 
Domes, loc. cit., p. 589 at 2.3. 
66 
The same applies to substances in general, with the exception of substances which need 
long preparation before they can be marketed. Examples of these are plant protection 
products, medicinal products, and active pharmaceutical ingredients.125 But to limit 
utility model protection in these cases would be to introduce an unnecessary distinction. 
A measure which allows the protection of substances may serve no purpose in some 
cases; but that does not mean that protection should be refused in other cases where it 
would be necessary and reasonable.126 There is a further argument against the inclusion 
of substances and compositions of substances, which is concerned with verifiability in 
the lawcourts. Given the complexity of these inventions and the lack of any prior 
examination, it is said, it might be asking too much of the courts to expect them properly 
to assess whether the requirements were met. But the difficulty is not specific to this type 
of invention: with the rapid rate of technical development it is encountered across all 
forms of innovative activity. One can hardly pretend nowadays that a judge should be 
able himself to evaluate novelty and inventive step in all classes of invention. The 
problem cannot be resolved by refusing protection to particular classes of invention; it 
has to be tackled by improving the methods of verification available in the event of 
litigation, for example by requiring that a search be carried out in such cases or that the 
opinions of specialists or of patent offices be taken. 
// would appear necessary, therefore, to include compositions of substances in the scope 
of utility model protection. It is difficult to say whether all substances should be covered 
But there should not be a blanket exclusion of substances in general on the sole ground 
that utility model protection would serve no useful purpose here. 
(3) Process inventions 
The question of "process inventions" is more difficult. "Big" process inventions, those 
which are patentable, have already demonstrated their value. In countries which have the 
full inventive step requirement, so that utility model protection is available only for 
patentable inventions,127 the protection of process inventions is not in dispute.In 
Germany and more recently in Denmark, however, there has been extensive discussion 
of this point in connection with the amendment or indeed the introduction of the utility 
Domes, loc. cit., p. 588 at 2.2. 
For a different view see Domes, loc. cit., p. 588, right-hand column. 
127 France, the Netherlands and Belgium. 
67 
> 
model system, because there a lower inventive step requirement means that "small" 
process inventions can be protected too. Small process inventions belong to the technical 
expertise usually termed "know-how".The improvement of the efficiency of production 
cycles until the optimal process is achieved is often the result of a succession of process 
inventions.128 Very often it cannot be seen from the product ultimately marketed whether 
a particular process invention was used in its manufacture. Registered rights in such 
processes can lose their practical relevance as a result, because the holder will have great 
difficulty in proving any infringement; and process inventions are often kept secret as a 
result, in order to avoid direct imitation by competitors.129 But it is conceivable that small 
businesses or independent inventors might nevertheless have a substantial interest in 
protecting such inventions. And even in big companies the prospect of reward for 
employees' inventions can encourage a greater readiness to innovate. The argument that 
applications might be made in blind reliance on the utility model right, and that this 
would be followed by an increase in imitation, is unconvincing. Ireland is so far the only 
country in which process inventions involving only a small inventive step are 
protectable. The possibility has existed only since 1992, so that there is no practical 
experience available as yet. Anyone considering an application for an invention of this 
kind will tend to be sceptical, and if in doubt will adopt the course taken in the past, 
namely that of secrecy. This lack of experience also makes it difficult to judge how 
important such protection might be in practice. The behaviour of applicants in Ireland 
will doubtless help to clarify the question in time. 
Thus no final judgement can be made on the question whether process inventions should 
be excluded from utility model protection. 
(d) Novelty 
Novelty is a requirement in all Member States with a utility model system. In most of 
them novelty is to be determined by reference to the "state of the art", a concept 
borrowed from patent law.130 There are differences, however, in what is understood by 
the state of the art. According to the patent-law definition in Article 54(2) of the 
European Patent Convention, the state of the art comprises "everything made available to 
Dôrries, loc. cit., p. 586, right-hand column. 
129 AIPPI Yearbook 1986, Q 83, France, p. 82. 
130 
Portugal is an exception: see Annex 1, comparative study, Chapter A.3(a), "Novelty". 
-68 
the public by means of a written or oral description, by use or in any other way, before 
the date of filing of the European patent application". It is this international state of the 
art which is referred to in nine Member States. In Spain disclosure131 will destroy novelty 
only if it takes place on Spanish territory.132 Only the domestic state of the art will be 
looked at. In Germany only a written description will destroy novelty.133 By contrast with 
patent law, merely oral publication is no obstacle. Written descriptions from anywhere in 
the world will be considered in determining novelty, whereas an instance of use must be 
within the area of application of the German Act. In Portugal the state of the art is 
international in geographical terms, but its substance is restricted, in that reference will 
be made only to knowledge and use among specialists.134 In Portugal and Germany, 
therefore, the state of the art is international but restricted in different ways. 
In a European system, based on the establishment and operation of a single market and 
consequently on the unification of separate markets, it would not be desirable to restrict 
the novelty criterion to the territory of one Member State. But because the utility model 
right is registered without prior examination, there might be difficulties with an absolute 
novelty requirement, a requirement referring to the state of the art worldwide.135 
Right-holders and others would have great difficulty in determining whether or not the 
invention formed part of the state of the art. 
Traditionally utility model protection has been confined to domestic markets, arid thus to 
the territory of the individual Member States. As the single market develops into a unity, 
markets have-expanded over national borders. The concept of novelty might-therefore 
refer to the state of the art in the territory of the European Union. 
Disclosure of the invention before a utility model is applied for should not destroy 
novelty if the invention is disclosed by the inventor or his successor in title, or in 
consequence of an abuse in relation to the inventor or his successor in title. This period 
131 
"Disclosure" here means making an invention available to the public, publication. 
132 Section 145(1) of the Patents Act. 
133 Section 3(1) of the Utility Models Act. 
Section 37 in conjunction with Section 51 of the Industrial Property Code. 
135 
Such a requirement had majority support at the round table conference held by the Union of European 
Practitioners in Industrial Property in March 1992: BulletinNo 21, March 1992, at 3. 
-69-
of grace, borrowed from Article 8 of the proposal on Community design, should last for 
12 months. 
// would accordingly be reasonable to apply a concept of novelty which refers to the state 
of the art, and which is not confined to the territory of a single Member State. A grace 
period of twelve months should be allowed for novelty, along the lines of Article 8 of the 
proposal on Community design. 
(e) Industrial application 
Industrial application is currently a requirement everywhere but in Italy, Spain and 
Portugal.136 In its place these countries have a requirement of "usefulness". The main 
reason is that the three-dimensional form requirement is a very important one in their 
systems. The usefulness requirement then serves to distinguish the protected matter from 
the mere form of the object as such.137 Industrial applicability is no longer a necessary 
requirement, because it must in the nature of things be a feature of an invention which is 
embodied in a three-dimensional form.138 The position is different in countries where 
utility model protection is available for all inventions, and a three-dimensional form is 
not needed. There is then no need to distinguish the utility model from a right which 
protects just the form. But such an invention might not have an industrial application: 
inventions without a three-dimensional form, such as electrical circuits for example, may 
well need to be converted in some way before they can be marketed. In the 
Commission's- view, therefore, the industrial application requirement is necessary in 
order to establish a link between the abstract protection of inventions and practical 
usability. 
Community-level action on utility models should consequently dispense with any 
usefulness criterion, and instead require industrial applicability inline with Article 57 of 
the European Patent Convention. 
See Annex 1, comparative study, Chapter A.3(d), "Industrial application". 
137 Segade in GRUR Int. 1988, Heft 2, p. 99, p. 113. 
138 
The German case may be cited in support of this view. When the three-dimensional form requirement was 
relaxed there, industrial applicability was made a requirement at the same time. 
-70 
(T) Procedure 
Procedure for the granting of utility models can be broken down into filing, examination 
and decision stages. In the existing systems it tends to follow the pattern of the domestic 
patent rules, and these in their turn correspond to Articles 78 to 85 of the European 
Patent Convention. The same procedure should be adopted in a future utility model 
scheme. 
As far as the examination and decision stages are concerned, it has to be borne in mind 
that none of the existing systems provides for any examination to ensure that the 
requirements are met. In the scheme outlined here there would be no examination for 
novelty and inventive step. But a check should at least be made to ensure that the formal 
conditions for protectability are satisfied.139 This would also eliminate inventions which 
are excluded from protectability by the wording of the law.140' 141 The absence of prior 
examination for novelty and inventive step means that utility models do not confer the 
same legal certainty as patents, which are granted after a comprehensive official 
examination has established that the invention is patentable.142 
Between a right conferred after examination and a right conferred without examination, 
the Commission feels that a compromise in terms of legal certainty can be achieved by 
allowing patent offices to carry out searches on request. Applicants - and if the law so 
provides others too - would then be able to have a search carried out to establish the state 
of the art; they could then form a better opinion of whether the requirements were met, 
and the right obtained would be more secure. 
The survey of industrial companies and independent inventors in Italy, Spain, Germany, 
France and the United Kingdom shows that weighing the advantage of greater security 
against the disadvantage of extra cost only a small proportion (an average 12%) feel that 
139 
140 
141 
142 This would correspond to the examination for patentability. 
Where the law specifically excludes the class of invention from patentability, for example, or where the 
law itself declares that that class of invention does not satisfy one of the substantive requirements, see 
Article 52 § 4 EPC. 
Such an examination for protectability is at present carried out in all Member States but Belgium. 
Despite this prior examination, after the patent has been granted an objector may file an opposition against 
it or apply to have it revoked, so that here too the fact that the right has been granted does not mean that it 
can be relied upon absolutely. 
-71 
optional searches would not be useful.143 One third feel that such protection would 
generally be useful, and just under half feel it would be useful in certain cases. This 
largely positive assessment is shared roughly equally by large and small firms. 
Opinion of optional searches, bearing in mind advantages and disadvantages 
By selected EU country (%) 
I very useful • only in certain cases • no, because of cost G don't know 
10% 20% 30% 40% 50% 60% 70% 80% 90% 100% 
(Source: Ifo Institute survey in selected EU countries, 1993; European Commission calculations) 
By size of firm (%) 
I very useful G only in certain cases • no, because of cost Q don't know 
All sizes 
Up to 100 employees] 
10% 20% 30% 40% 50% 60% 70% 80% 90% 100% 
(Source: Ifo Institute survey in selected EU countries, 1993; European Commission calculations) 
143 Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in 
the European Union, 2.8. 
-72-
The country-by-country analysis agrees very well with the results of the survey of patent 
attorneys in Spain (attorneys 63% "very important"/ firms 55% "very useful"), France 
(45%/ 39%), and the United Kingdom (43%/ 38%). In these countries official searches 
will not at present be carried out on demand,144 so that there is no experience available on 
this point, and yet in the opinion of the respondents there is an appreciable need for an 
optional search system. The widest differences are to observed in Germany. There 78% 
of patent attorneys think optional searches are "very important": only 34% of firms 
regard them as "very useful", though 50% say they are useful in certain cases. The 
opinion of the German companies and inventors surveyed corresponds closely to current 
practice. The German Patent Office has been carrying out searches since 1987, when the 
Utility Models Act was amended to allow this. The number of requests for searches rose 
without interruption from 1 002 in the first year (6.4% of applications) to 1 468 in 199Q 
and 2 288 in 1992 (13.5% of applications).145 Thus the facility offered by the legislature, 
allowing the legal security of utility models to be protected to some extent at least, has 
been well received by applicants for utility models. 
On the question of priority, utility model law can follow the provision in the Paris 
Convention. Under Article 4. A and Article 4.C of that Convention, any person who has 
duly filed an application for the registration of a utility model in one of the countries of 
the Union established by the Convention is to enjoy a right of priority for the purpose of 
filing in the other countries; this right is to last twelve months.146 Article 4.E(2) allows a 
utility model to be filed in a country by virtue of a right of priority based on the filing of 
a patent application, and vice versa. Here too Article 4.C(1) sets the duration of the 
priority at twelve months. 
It would appear necessary, therefore, to base the procedure on the patent-law rules in 
Articles 78 to 85 of the European Patent Convention. At the examination and decision 
stage there should be no general vetting to ensure that the requirements are met. But 
there should be at least a formal check for protectability, and provision for optional 
searches. 
With the exception of France, where a search automatically leads to a patent. 
See BlattJUr Patent-, Muster und Zeichenwesen, March 1993. 
Article 4.C(1) of the Convention. 
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(g) Effects and transfer 
All the utility model schemes borrowed their provisions on rights of use and prohibition 
and on exhaustion from patent law; they correspond to Articles 29, 30, 31 and 32 of the 
Community Patent Convention.147 
Under Article 69(1) of that Convention the extent of the protection conferred by a patent 
is to be determined by the terms of the claims made in the application. In the case of 
utility models it might be advisable to restrict the number of claims in order to limit the 
extent of protection.148 This could be an effective way of offsetting the absence of prior 
examination. 
All the national schemes allow the unconditional transfer of rights. There is no reason to 
depart from this principle in a Community scheme. 
Thus it would appear reasonable to design the rights of use and prohibition and the rules 
governing exhaustion along the lines of the existing provisions of patent law. As regards 
the extent of protection, it might be appropriate to restrict the number of claims. 
(h) Duration 
The grounds for extinction and revocation have been taken over from patent law and are 
largely uniform in the Member States,149 so that they can be regulated in the same way 
here; alongside them there is the question of duration, which is particularly important in 
utility model protection, because it can serve as a corrective to the lighter admissibility 
requirements. 
A patent confers protection for 20 years; the term should be substantially shorter for a 
utility model. If small inventions are also to be protected, as they would be in the 
147 
148 
149 Germany, Section 12a of the Utility Models Act; Belgium, Section 26 of the Patents Act; Greece, no 
explicit provision, but accepted; Italy, application of the patent-law rules; France, Section 28(1) of the 
Patents Act; Denmark, information supplied by Mrs Joergensen of the Danish Patent Office; Ireland, 
Part m, Section 63(6), and Part II of the Patents Act 1992; Spain, Section 60(1) of the Patents Act. 
As is done in Australia, for example. 
See Annex 1, comparative study, Chapter A.8(b) "Other grounds of extinction" and (c) "Nullity". 
74 
European scheme proposed here, the term of protection must reflect the short lifetime of 
the invention and the small inventive step required. A period of eight to ten years would 
be reasonable: it would maintain a sufficient distance from the patent system, and would 
keep the utility model system within reasonable limits, without robbing it of its proper 
role. 
Six Member States already have a term of ten years;150 we can accordingly rule out the 
possibility of a shorter period, in order to keep to a minimum the legal uncertainty 
caused to applicants by a change in the present domestic arrangement. Shorter terms 
should be renewable up to ten years in steps of several years at a time. 
// would appear reasonable, therefore, that the duration of the right conferred by a 
future utility model system should be renewable up to ten years. 
(ï) Infringement 
The European utility model system outlined here would protect technical inventions, as 
the patent system does. The types of infringement and the conflicts of interest which may 
arise can for the most part be handled in the same way. 
There is one feature of utility model protection which has to be borne in mind, however. 
The scheme here proposed makes no provision for prior examination to ensure that a 
utility model meets all the requirements. This may cause difficulty where a complaint of 
infringement is made; a search could be carried out in those cases. As a preliminary step 
in such proceedings, then, the protectability of the disputed invention would have to be 
clarified. In the Commission's view it should be a matter for the court to determine 
whether such a search should be carried out; it should not be an obligation automatically 
imposed on the plaintiff or the defendant. In the survey of patent attorneys a majority 
was in favour of calling for a search report as a condition for a complaint of 
infringement.151 
Spain, Germany, Italy, Ireland, Austria and Denmark. 
Weitzel, G., Ifo Institute, Pilotstudie - Die wirtschaftliche Bedeutung des Gebrauchsmusterschutzes in der 
Europdischen Union, D, 2.7.2, p. 41. 
75-
In a Community-level utility model scheme, therefore, it is the Commission's view that it 
should be open to the court to order a search report, in order to establish whether the 
disputed invention qualified for protection. 
(]) Dual protection 
The system proposed here would stand alongside the patent system, and would not 
replace it. With two parallel systems in operation it might be possible to obtain both 
forms of protection in respect of the same invention ("dual protection"). 
This question of dual protection will arise only where an application is made to register a 
utility model for an invention which would also be patentable. 
There might be an advantage in securing dual protection if the applicant 
• wants temporary protection pending the grant of a patent; 
• is not sure whether his invention will qualify for a patent; or 
• hopes to secure particularly strong protection for his invention by obtaining two 
different kinds of right over it. 
In all three case it may happen that a combination of patent and utility model protection 
for the same invention will place the right-holder in a disproportionately strong position. 
One way of avoiding the difficulty this would cause to aggrieved parties, who might find 
themselves having to proceed against two separate rights, would be to lay down the rule 
that there may not be simultaneous patent and utility model protection for the same 
invention. An applicant might perhaps be permitted to convert a pending patent 
application into a utility model application, and vice versa. 
But if dual protection is allowed, there would have to be a ban on invoking the two rights 
successively. Otherwise a right-holder who failed in an action on the basis of one right 
would be free to bring fresh proceedings on the basis of the other. 
The same ban on invoking two rights successively might also apply as between national 
and Community utility models. 
76 
In order to avoid placing the right-holder in too strong a position, therefore, a 
Community-level utility model scheme should either prohibit dual protection by a patent 
and a utility model or impose a ban on invoking the two successively. 
(k) Relationship to patent law 
Patent law and utility model law both set out to protect technical inventions, so that 
friction between the two systems cannot be ruled out. The Commission has tried to 
design the principles of the European utility model scheme which it has proposed here in 
such a way as to ensure a proper balance between the two systems. 
A comparison between the proposed utility model system and the existing patent system 
will show that the scheme proposed is intended for inventions where the innovative 
element is fairly modest. The inventive step may be small; or the period of protection 
needed may be short; or the possibility of industrial application may be limited. 
The system of patent law and its operation in practice mean that there is no equivalent 
protection available for such inventions at Community level. Patent protection demands 
a greater inventive step, and the prior examination of applications to ensure that all the 
requirements are met increases costs and lengthens the time taken before the patent is 
granted. 
On the other hand a patent provides greater legal certainty than utility model protection 
does, and the term of protection is longer. Where the invention is a major one, or where 
development will take some time, the patent remains the most important form of 
protection. 
The scheme proposed here would complement patent protection and should help further 
to improve the operation of the common market and to boost innovative activity. 
- 1 -
Bibliography 
A. Legislation, handbooks, proposals and explanatory memoranda 
1. Europe 
Gewerblicher Rechtsschutz, Wettbewerbsrecht, Urheberrecht, Textsammlung, Verlag C.H. Beck, Stand 1993. 
Satorius II, Internationale Vertràge - Europarecht, Verlag C.H. Beck, Stand 1993. 
Paris Convention for the Protection of Industrial Property, WIPO, Geneva 1991. 
The Hague Agreement concerning the International Deposit of Industrial Designs, WIPO, Geneva 1986. 
The European Patent Convention, European Patent Office, Munich 1985. 
Patent Cooperation Treaty (PCT) and Regulations under the PCT, WIPO, Geneva 1992. 
Strasbourg Agreement concerning the International Patent Classification, WIPO, Geneva 1989. 
Treaties establishing the European Communities, Office for Official Publications of the European 
Communities, 1987. 
Rules relating to Fees, European Patent Orgaiuzatioii.Gebtihrenordnung der europdischen Patentorganisation, 
printed in Beck'sche Textausgaben, Gewerblicher Rechtsschutz und Urheberrecht, No 522. 
Convention for the European patent for the common market (Community Patent Convention): signed in 1975, 
this was amended in 1989, and may enter into force in 1993. 
Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Invention, 
27.11.63. 
Schedule of Fees referred to in the Regulations under the PCT. 
Rules relating to Fees, European Patent Organization. 
Proposal for a Council Regulation on the Community trade mark: COM(80) 635/11 final. 
Proposal for a Council Regulation implementing Regulation (EEC) No ... of... on the Community trade mark: 
COM(85) 844 final. 
First Council Directive to approximate the laws of the Member States relating to trade marks: 
COM(80) 635 final; OJ No L 40, 11.2.1989. 
Proposal for a Council Regulation on fees payable to the Community trade mark office: COM(86) 742 final. 
Proposal for a Council Regulation on the rules of procedure of the Boards of Appeal instituted by 
Regulation (EEC) ... on the Community trade mark: COM(86) 731 final. 
Council Directive on the legal protection of semiconductor products: COM(85) 775 final; OJ No L 24, 
27.1.1987, p. 36. 
Proposal for a Council Directive on the legal protection of biotechnological inventions: COM(90) 586 final. 
Council Directive on the legal protection of computer programs: COM(88) 816 final; OJNo L 122, 17.5.1991. 
Council Directive on rental right and lending right and on certain rights related to copyright in the field of 
intellectual property: COM(90) 586 final. 
Proposal for a Council Directive on the coordination of certain rules concerning copyright and neighbouring 
rights applicable to satellite broadcasting and cable retransmission: COM(91) 276 final. 
Proposal for a Council Regulation on Community plant variety rights: COM(90) 347 final. 
Council Regulation on the protection of geographical indications and designations of origin for agricultural 
products and foodstuffs: SEC(90) 2415 final, 21.1.1991; OJNo L 208, 24.7.1992, p. 1. 
Council Directive harmonizing the term of protection of copyright and certain related rights: COM(92) 33 final. 
Proposal for a Council Directive on the legal protection of databases: COM(92) 24. 
Proposal for a Council Regulation concerning the creation of a supplementary protection certificate for 
medicinal products: COM(90) 101 final - SYN 255, 11.4.90; OJ No L 182, 2.7.1992. 
Proposal for a Council Directive concerning the protection of individuals in relation to the processing of 
personal data: COM(90) 314 final. 
Proposal for a Council Directive concerning the protection of personal data and privacy in the context of pulic 
digital telecommunications networks, in particular the integrated services digital network (ISDN) and public 
digital mobile networks: COM(90) 314 final. 
Green Paper on the Legal Protection of Industrial Design, European Commission. 
Preliminary draft of a Council Directive on Community utility model rights, unpublished, version of 
12 July 1993. 
2. Germany 
Patents Act: Gewerblicher Rechtsschutz, Wettbewerbsrecht, Urheberrecht, Textsammlung, Verlag C.H. Beck, 
Stand 1993. 
Utility Models Act: A consolidated version of the Utility Models Act was enacted on 28 August 1986, entering 
into force on 4 September 1986 (BGBl. I 1455); this was subsequently amended by an Act of 7 March 1990 
(Bl.f.PMZ 1990, 161). 
Applications: An Order of 12 November 1986 introduced new regulations governing utility model applications 
submitted from 1 January 1987 on (BGBl. 11739); these were amended by an Order of 4 May 1990 (Bl.f.PMZ 
1990,215). 
Fees: Patent Office and Patent Court Fees Act of 18 August 1986 as amended on 7 March 1990. 
Zur Wahl des Begriffes "Gebrauchsmuster" in Deutschland, Bericht der XI. Kommission, 
RT-Drucksache 1890/91, No 398, p. 2447. 
Order No 540 of 30 June 1972 on the simplification of administrative procedures for the handling of industrial 
inventions, industrial models and trade marks. 
3. France 
Patents Act: Act No 68-1 of 2 January 1968 (since amended in particular by Act No 78-742 of 13 July 1978 
and more recently by Act No 90-510 of 25 June 1990 and Act No 90-1052 of 26 November 1990): Journal 
officiel de la République française, 3.1.1968. 
Applications: Regulation No 79-822 of 19 September 1979 on the filing of utility certificates and the granting 
and continuance of this entitlement; Order of 23 September 1979 making detailed arrangements for applications 
for the filing of utility certificates. 
Fees: Order of 17 December 1985 on fees charged by the National Industrial Property Institute (INPI). 
Legislative history: Documents relating to the debates on the introduction of the utility certificate assembled by 
Dreier, 9 October 1986. 
4. Belgium 
Patents Act: Revised Patents Act of 28 March 1984. 
Applications: Royal Order of 2 December 1986 on the filing, granting and continuance of patents. 
Explanatory memorandum to the Patents Bill, lower house of Parliament, 4 September 1981. 
5. Spain 
Patents Act: In Spain, protection of technical innovations additional to that of patent law was provided in the 
form of a utility model as long ago as Royal Order No 1789 of 26 July 1929 on industrial property, at 
Articles 171 etseq. The new Patents Act, Act Noll/1986 of 20 March 1986, entered into force on 
26 June 1986; utility models are dealt with in Title XIV Sections 143-154: 1986 fl#£No 73, 11188. 
Implementation Order: The new Act is complemented by Title II, Sections 41-48, of the Patent Act 
Implementation Order. 
Fees: Under Sections 154 and 160(1) of the Patents Act, fees are to be regulated in accordance with the 
schedule to the Act. 
6. Portugal 
Patents: Industrial Property Code, published in Boletim da Propriedade Industrial. 
Ill 
Utility models: Industrial Property Code, Chapter II, utility models and industrial models and designs (in 
Portuguese; a German translation can be found in Blatt fur Patent-, Muster- und Zeichenwesen, 47. Jahrgang, 
Heft 6, p. 56, and Heft 7/8, p. 101). 
Fees: The fees for the registration of a utility model are set afresh each year in a special order (Section 255 of 
the Industrial Property Code). 
7. Italy 
Patents and utility models: Title II on industrial models, Gazzetta Ufficiale de lia Repubblica Italiana, 1987, 
No 53. 
Act No 60, Gazzetta Ufficiale della Repubblica Italiana, 1987, No 53. 
Lower house bill submitted to the president's office on 16 April 1926, opinion of the minister. 
8. Greece 
Patents Act: Act on technology transfer, inventions and technological innovation. 
Fees: Fees Order, DS/A/2/89 of 26 January 1989. 
Explanatory memorandum to the Bill on technology transfer, inventions and technological innovation laid 
before Parliament. 
9. Netherlands 
Patents: New Patents Bill, draft of 8 January 1991, Chapter 1. 
Explanatory memorandum to the Patents Act 1992. 
10. United Kingdom 
White paper on Intellectual Property and Innovation, April 1986. 
White paper on Intellectual Property Rights and Innovation, December 1983. 
Designs: Registered Designs Act 1949, Section 1(3); unregistered design right. 
11. Ireland 
Patents : Patents Act 1992. 
Utility models: short-term patents, Part III of the Patents Act. 
12. Denmark 
Utility Models Act; Order on the treatment of utility model applications and registered utility models, Patent 
Directorate Order No 517 of 18 June 1992. 
Legislative history: Patent Office document 89-243-1, Notât om baggrunden for og konsekvenserne af visse 
œndringer i den tyske brugsmodellov, 21 August 1990. 
Report on the economic need for utility model protection in Denmark, PA Consulting group, 21 August 1990. 
13. Luxembourg 
Patents: Patents Bill submitted to Parliament. 
B. Judgments 
1. Court of Justice of the European Communities 
Case 78/70 Deutsche Grammophon v Metro [1971] ECR 487. 
Case 192/73 Van Zuylen v Hag [ 1974] ECR 731. 
Case 15/74 Centrafarm v Sterling Drug [1974] ECR 1147. 
Case 144/81 Keurkoop v Nancy Kean Gifts [1982] ECR 2853. 
Joined Cases 55 and 57/80 Membran v GEMA [1981] ECR 147. 
Case 12/74 Commission v Germany [1975] ECR 181. 
Case 258/78 Nungesser v Commission [1982] ECR 2015. 
IV 
Case 53/87 Consorzio Italiano v Renault [1988] ECR 6039. 
Case 119/75 Terrapin v Terranova [1976] ECR 1039. 
Case 35/87 ThetfordvFiamma[\9SS] ECR 3585. 
Case 45/86 Commission v Council (customs preferences) [1987] ECR 1493. 
Case 242/87 Commission v Council (Erasmus) [1989] ECR 1425. 
Case 15/81 Gaston Schul I[ 1982] ECR 1409. 
Case 270/80 Polydor v Harlequin {1982] ECR 329. 
Case C-202/88 France v Commission [1991] ECR 1-1223. 
2. National 
Germany, analogy in utility model law, BGHZ 86, 264. 
Germany, the Chemical balance (Analysenwaage) case, RGZ 120, 224. 
Germany, RGZ 99, 211, 212. 
Italy, Court of Cassation, 22 October 1979, Giur. Ann. Dir. Ind. 1979, 1009/1. 
Germany, BGHZ 1992, 188. 
Germany, ROHG 24, 109. 
Germany, BGHZ 86, 264. 
C. Commentaries 
Benkard, G., Patentgesetz, Gebrauchsmustergesetz, eighth edition, Bruchhausen, Rogge, Schàfers and 
Ullmann éd., Verlag C.H. Beck. 
Mascareiias, Modelos e desenhos, vol. 2, Portugal 1986. 
Bodenhausen, G.H.C., Pariser Verb andsubereinkunft zum Schutz des gewerblichen Eigentums, 1971. 
Beier, Haertel and Schricker, Europaisches Patentiibereinkommen: Mtinchner Gemeinschaftskommentar, 
appearing in instalments since 1984. 
Bodenhausen, G.H.C., Guide to the Application of the Paris Convention for the Protection of Industrial 
Property 1967, WJJPO 1991. 
Grabitz, Kommentar zum EWG-Vertrag, fourth edition, 1992. 
PCT, Guide du déposant, vol. 1, Phase internationale, WIPO 1991. 
Guide to the International Deposit of Industrial Designs, WIPO Geneva 1986. 
Groeben, Boeckh, Thiesing and Ehlermann, Kommentar zum EWG-Vertrag, fourth edition, Baden-Baden 1989. 
Monya, Guide to Patents and Utility Models in Japan, Tokyo 1986. 
Ladas, S.P.,Modelos de utilidade, Portugal 1986. 
Geiger, Rudolf, EG-Vertrag, Kommentar zu dem Vertrag der Europàischen Gemeinschaft, Verlag C.H. Beck, 
1993. 
D. Books 
Bernhardt and Krafter, Lehrbuch des Patentrechts, fourth edition. 
Bruchhausen, K., Patent-, Sortenschutz- und Gebrauchsmusterrecht (Teilband 1 von R. Nirk/K. Bruchhausen, 
Gewerblicher rechtsschutz und Urheberrecht), 1985. 
Tetzner, V., Leitfaden des Patent-, Gebrauchsmuster- und Arbeitnehmererfindungsrecht der Bundesrepublik 
Deutschland, third edition, 1983. 
Cornish, W.R., Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, second edition, 1989. 
- v 
Flint, Thorne and Williams, Intellectual Property- the New Law, a Guide to the Copyright, Designs and 
Patents Act 1988. 
Boucourechliev and Mousseron, Les brevets d'invention, rédaction et interprétation, Paris 1973. 
Glaesner, Cahier de droit européen, 1989. 
Ricketson, S., The Law of Intellectual Property, the Book Co. Ltd, 1984. 
Hoomann, Dossier, La nouvelle loi sur les brevets d'invention. 
European Commission, Green Paper on the Legal Protection of Industrial Design, working document of the 
services of the Commission, III/F/5131/91-EN, Brussels, June 1991. 
European Commission, European Industrial Policy for the 1990s, Bulletin of the European Communities, 
Supplement 3/91. 
European Commission, Industrial Policy in an Open and Competitive Environment: Guidelines for a 
Community Approach, COM(90) 556. 
European Commission, Promoting the Competitive Environment for the Industrial Activities based on 
Biotechnology within the Community, SEC(91) 629. 
European Commission, White Paper on Completing the Internal Market, 14 June 1985. 
European Commission, Nutzung der Ergebnisse aus offentlicher Forschung und Entwicklung, EUR 11243 de. 
Miège and Mahieux, Training in Innovation Management, EUR 11868 en. 
European Commission, Transfer and Exploitation of Scientific and Technical Information, EUR 7716 de, en, fr, 
it. 
Koktvedgaard and Osterburg, Patentloven, second edition, Copenhagen 1979. 
Delcorde, La protection des inventions, Ghent 1986. 
Sena, G.,I diritti sulle invenzioni e sui modelli industriali, second edition, Milan 1984. 
Fernandez-Nôvoa and Gomez Segade, La modernizaciôn del derecho espahol de patentes, 1984. 
Stauder, D., Patent- und Gebrauchsmusterverletzungsverfahren in der Bundesrepublik Deutschland, 
Grofibritannien, Frankreich und Italien, 1989. 
Eck, M., Neue Wege zum Schutz der Formgebung, 1993. 
Tâger and von Witzleben, Strategies for the Protection of Innovation, Deutscher Wirtschaftsdienst, 1990. 
Hummel, M., Die volkswirtschaftliche Bedeutung des Urheberrechts, Ifo Institute, 1989. 
E. Articles 
Sinanioti, K., 'Die Angleichung des griechischen Patentrechts an das europàische Patentiibereinkommen und 
das neue griechische Patentgesetz Nr. 1733 von 1987', in Mitteilungen der deutschen Patentanwdlte, Heft 2, 
p. 23. 
Fromme, 'Schutzumfang und Erfindungshohe im Gebrauchsmusterrecht', in GRUR 1958, 261. 
Osterburg and Lise Dybdahl, presseausschnitte des Europâischen Patentants, February 1992, 'New Legislation 
on "Mini-patents'"; and 'Endlich ein danisches Gebrauchsmodellgesetz', in GRUR Int. 6/1993, p. 453. 
Haertel, K., 'Gebrauchsmusterschutz und Straflburger Patentiibereinkommen von 1963', in GRUR Int. 1987, 
Heft 6, p. 373. 
Pescatore,P., in Europarecht 1986, 153. 
Schricker , 'Die europaische Angleichung des Rechts des unlauteren Wettbewerbs - ein aussichtsloses 
Unterfangen?', in GRUR Int. 1990, p. 771. 
Bruchhausen, 'Methodik der Auslegung und Anwendung des europâischen Patentrechts und der harmonisierten 
nationalen Patentrechte', in GRUR Int. 1983, p. 205, 
Pfanner, 'Vereinheitlichung des materiellen Patentrechts im Rahmen des Europarates', in GRUR Int. 1962, 
p. 545. 
Forwood and Clough, in European Law Review, 11,1986, p. 385. 
VI 
Beier, F-K., 'Gebrauchsmusterreform auf halbem Wege: Die uberholte Raumform', in GRUR 1986, Heft 1 
p.l. 
Asendorf, 'Herkunft und Entwicklung des Rauinformerfordernisses im Gebrauchsmusterrecht', in GRUR 1988, 
Heft 2, p. 83. 
Armitage, E., 'Updating the European Patent Convention', in GRUR Int. 1990, Heft 9, p. 662. 
Schwartz, I., 'Subsidiaritât und EG-Kompetenzen - Der neuen Titel "Kultur" - Medienvielfalt und 
Binnenmarkt', ixxAfp, Heft 1, 1993, p. 409. 
Eichmann, H., 'Geschmacksmusterrecht und EWG-Vertrag', in GRUR Int., 1990, Heft 2, p. 122. 
Ullrich, H., 'Patentschutz im europâischen Binnenmarkt', in GRUR Int. 1991, Heft 1, p. 1. 
Ullrich, H., 'Patents and Know-how and Common Market Competition Policy', in International Review of 
Industrial Property and Copyright Law, No 5, 1992, p. 600. 
Van Benthem, J.B., 'Europaisches Patentsystem und Weltpatentsystem', in GRUR Int. 1990, Heft 9, p. 685. 
Olbricht, 'Raumformerfordernis', in GRUR 1986, p. 435. 
Btihling, 'Gebrauchsmusterreform auf halbem Wege: Die uberholte Raumform', in GRUR 1986, p. 434. 
Fischer and Pietzcker, ' Gebrauchsmusterreform auf halbem Weg - Eine Erwiderung', in GRUR 1986, Heft 3, 
p. 208. 
Fischer, '25 Jahre Patent- und Gebrauchsmusterreform - Ein Ruckblick', in GRUR Int. 1989, Heft 9, p. 717. 
Btihling, 'Zum Raumformerfordernis beim Gebrauchsmuster - Braucht die Chemie ein Gebrauchszertifikat?', 
in GRUR 1988, Heft 1, p. 15. 
Beier, 'Europaisches Patentsystem und die Harmonisierung des griechischen Patentrechts', in GRUR Int. 1987, 
Heft 11. 
Scherer, F., 'Research on Patents and the Economy: The State of the Art', in Ifo Digest, Volume 15, June 1992, 
p. 3. 
Riehle,G., 'EG-Geschmacksmuster und Kraftfahrzeugersatzteile', in GRUR Int. 1993, Heft 1, p. 50. 
Segade, 'Grundziige und Einzelheiten des spanischen Patentgesetzes', in GRUR Int. 1988, Heft 2, p. 99. 
Beier, F-K., 'Die Zukunft des geistigen Eigentums in Europa', in GRUR Int. 1990, Heft 9,-p. 675. 
Tronser, U., 'Auswirkungen des Produktpirateriegesetzes vom 7. Màrz 1990 auf das Gebrauchsmustergesetz', 
in GRUR 1991, Heft 1, p. 10. 
Braendli, P., 'Die Dynamik des Europâischen Patentsystems', in GRUR Int. 1990, Heft 9, p. 699. 
Fischer, E., '25 Jahre Patent- und Gebrauchsmusterreform - Ein Ruckblick', in GRUR Int. 1990, Heft 9, p. 717. 
Steup, E., 'Unorthodoxe Gedanken zum Gebrauchsmusterrecht', in GRUR Int. 1990, Heft 9, p. 800. 
Schmidhuber and Hitzler, 'Binnenmarkt und Subsidiaritâtsprinzip', in EuZW 1993, p. 8. 
Domes H., 'Zum Raumformerfordernis beim Gebrauchsmuster - braucht die Chemie ein Gebrauchszertifikat?', 
in GRUR 1987, Heft 9, p. 585. 
Beier, F-K., 'Gewerblicher Rechtsschutz, Soziale Marktwirtschaft und Europaischer Binnenmarkt', in 
GRUR 1992, Heft 4, p. 228. 
F. Studies, reports and statistics 
Margellou, C, The New Greek Legislation on Technology Transfer, Inventions and Technical Innovations, 
1987. 
Schwartz, Ivo, Can the draft Council Regulation on the Community Design be based on Article 100a of the 
EEC Treaty?, III/5327/91-EN, August 1991. 
Pedersen, T. and Petersen, B., Business and Economic Studies on European Integration - The Boundaries of the 
Firm and the European Market integration, WP 2-93, Copenhagen Business School. 
Pedersen, T. and Petersen, B., Business and Economic Studies on European Integration - Patterns of 
Technological Specialization in an Integrated Europe. WP 1-93, Copenhagen Business School. 
- Vil -
Pedersen, T. and Petersen, B., Business and Economie Studies on European Integration - The End of Special 
Interests? The Political Economy of EC Trade Policy - Changes in the 1990s, WP 1-93, Copenhagen Business 
School. 
Booz, Allen and Hamilton, The Competitiveness of Europe and its Enterprises, UPEFE, December 1992. 
Vohland,L., Italien - Gebrauchsmustergesetz, unpublished paper, Max Planck Institute. 
Osterburg, Notât om baggrunden for og konsekvenserne af visse cendringer i den tyske brugsmodellov, 
unpublished, Danish Patent Office document 89-243-1. 
Tâger, U.C., with the collaboration of Seyler, H., Problème des deutschen Patentwesens im Hinblick auf die 
Innovâtionstatigkeiten der Wirtschaft, Ifo Institute study for the German Federal Ministry of Economic Affairs, 
May 1989. 
Trâger and Seyler, Problème des deutschen Patentwesens im Hinblick auf die Innovationstatigkeiten der 
Wirtschaft (insbesondere kleiner und mittlerer Unternehmen) und Vorschldge zu deren Lôsung, Schlufibericht, 
Ifo Institute, May 1989. 
Grefermann, Oppenlânder, Peffgen, Rothlingshofer and Scholz, Patentwesen und technischer Fortschritt, Teil 
1: Die Wirkung des Patentwesens im Innovationsprozefi, Ifo Institute, 1974. 
Grefermann and Rothlingshofer, Patentwesen und technischer Fortschritt, Teil 2: Patent- und Lizenzpolitik der 
Unternehmen, Ifo Institute, 1974. 
Lees, C, General Meeting, CJPA, May 1993, p. 150. 
Siwek and Furchtgott-Roth, Copyright Industries in the US Economy 1977-90, prepared for the International 
Intellectual Property Alliance, 1992 . 
Womack, J.P., The MIT Japan Program: Competing with Japan in Intellectual Property: a Strategic 
Overview, 1992. 
Pieper, S., Das Subsidiaritatsprinzip - Strukturprinzip des Gemeinschafisrechts, unpublished thesis. 
European Commission, Zustandigkeit der Gemeinschaft zur Schaffung eines Europâischen Markensystems und 
der Notwendigkeit ihres Tàtigwerdens, first part in GRUR Int. 1980, Heft 1, p. 33, second part in GRUR 
Int. 1980, Heft 2, p. 96. 
Ifo Institute, Entwicklungstendenzen im Patentverhalten deutscher Erfinder und Unternehmen, Ifo-
Schnelldienst 23/89. 
Ifo Institute, Empirische Patentforschung: Mehr Information tiber ôkonomische Wirkungen des Patents 
erforderlich, Ifo-Schnelldienst 3/90. 
Weitzel, G., Ifo Institute, The Economic Impact of the Legal Protection of Utility Models on Enterprises in the 
European Union, 1994. 
Weitzel G., Ifo Institute, Pilotstudie - Die wirtschaftliche Bedeutung des Gebrauchsmusterschutzes, 1993 
National Consumer Council, International Trade and the Consumer: Working Paper 6: Intellectual Property -
the Consumer View of Patents, Copyright, Trade Marks and Allied Rights, 1991. 
'Introduction of new and harmonization of the existing utility model protection systems',in AIPPI Yearbook 
1993/1, Q 117. 
'Legal and economic significance of protection by utility models', in AIPPI Yearbook 1986 1-4, Q 83. 
WIPO, Traité, Situation au 1er Janvier 1991, p. 6 - 8. 
IPC Union, States Party to the Convention establishing the World Intellectual Property Organization (WIPO) 
and the Treaties Administered by WIPO and States Members of Governing Bodies and Committees, Status on 
January 1, 1991. 
Business Week: Science & Technology, August 3, 1992, McGraw-Hill, Inc. 
Business Week: Science & Technology, August 3, 1992, CHI Research Inc. 
Japan Institute of Intellectual Property, Questionnaire relating to Legal Protection of the Fruits of R&D, 1991. 
Industrial Property Council of MITI, Subcommittee Report on Patent & Utility Models Laws and their 
Practices leading to International Harmonization, 1991. 
- vin -
UK Industrial Property and Copyright Department, unpublished study on the protection of spare parts in the 
motor industry, supplied by the Patent Office on 2 October 1990. 
European Commission, Panorama of EC Industry, Brussels 1993. 
European Commission, The Principle of Subsidiarity, communication to the Council and Parliament, 
SEC(92) 1990 final. 
European Commission, Report from the Commission to the Council on the Definitions of Small and 
Medium-sized Enterprises (SMEs) used in the context of Community Measures, SEC(92) 351 final. 
G. Periodicals 
Bulletin of the Union of European Practitioners in Industrial Property 
AIPPI Yearbook 
Gewerblicher Rechtsschutz und Urheberrecht (GRUR) 
Official Journal of the European Communities, L and C series (OJ) 
Official Journal of the European Patent Office 
Blatt fur Patent-, Muster- und Zeichenwesen (Bl.f.PMZ) 
Entscheidungen des deutschen Bundespatentgerichts (BPatGE) 
Annual reports of the Greek Industrial Property Organization (OBI) 
Gewerblicher Rechtsschutz und Urheberrecht, Internationaler Teil (GRUR Int.) 
International Review of Industrial Property and Copyright law (IIC) 
Mitteilungen der deutschen Patentanwâlte (Mitt) 
Supplements, Bulletin of the European Communities, 
Archiv fur Presserecht (AfP) 
Business Week 
The Journal, incorporating the Transactions of the Chartered Institute of Patent Agents (CDPA) 

iX 
ISSN 0254-1475 
COM(95) 370 final 
DOCUMENTS 
EN 08 06 10 
Catalogue numbpr : CB-CO-95-431-EN-C 
ISBN 92-77-92690-2 
Office for Official Publications of the European Communities 
L-2985 Luxembourg