Amended proposal for a European Parliament and Council Directive approximating the legal arrangements for the protection of inventions by utility model
Date: 1999-06-25
Institutions: European Commission
Subjects: approximation of laws, industrial property, invention, patent, patent law

C 248 E/56

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Amended proposal for a European Parliament and Council Directive approximating the legal
arrangements for the protection of inventions by utility model (1)

(2000/C 248 E/03)

COM(1999) 309 final (cid:151) 97/0356(COD)

(Submitted by the Commission pursuant to Article 250(2) of the EC Treaty on 28 June 1999)

(1) OJ C 36, 3.2.1998, p. 13.

INITIAL PROPOSAL

AMENDED PROPOSAL

THE EUROPEAN PARLIAMENT AND THE
COUNCIL OF THE EUROPEAN UNION,

Unchanged

Having regard to the Treaty establishing the European
Community and in particular Article 95 thereof,

Having regard to the proposal from the Commission,

Having regard to the opinion of
Committee (1),

the Economic and Social

Acting in accordance with the procedure laid down in Article
251 of the Treaty (2),

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

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

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

(2) Whereas technical
they make

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

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

___________
(1) OJ C 235 of 27.7.98, p. 26.
(2) European Parliament Opinion of 12 March 1999.

the Community, at

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

least not

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INITIAL PROPOSAL

AMENDED PROPOSAL

to employ every
Whereas it
of
possible means
Community industry in the field of research and development;

is important
of

in this context

competitiveness

increasing

the

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

response

rapid

in particular

Whereas there is a need for placing at the disposal of firms,
and
and
researchers, an instrument which is cheap, rapid and easy to
evaluate and apply;

and medium-sized

small

firms

(4) Whereas it is important in this context to employ every
increasing the competitiveness of
possible means of
Community industry in the field of research and devel-
opment;

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

(6) Whereas there is a need for placing at the disposal of
firms, and in particular small and medium-sized firms
and researchers, an instrument which is cheap, rapid
and easy to evaluate and apply; whereas the fees should
therefore be as reasonable as possible for small
firms,
individual inventors and universities;

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

(7) Whereas utility model protection is better suited than
involving a

inventions

patent protection to technical
specific level of inventiveness;

Whereas technical
throughout the Community;

inventions should be suitably protected

(8) Whereas technical inventions should be suitably protected

throughout the Community;

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

in accordance with the principle of propor-
(9) Whereas,
tionality,
the approximation may be limited to those
national provisions which have the most direct impact
on the functioning of the single market;

if

the objectives of

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

requirements which a
it

list of

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

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

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

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

(12) Whereas utility model protection must be available both

to products and to processes;

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

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(14) Whereas

similar

a utility model

application must

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

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

registered utility models

that

the

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

single market
that

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

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

rights must

exhaustion

apply

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

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

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

the auspices of

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

the Paris Convention and of

(19) Whereas

the application of

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

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INITIAL PROPOSAL

AMENDED PROPOSAL

HAVE ADOPTED THIS DIRECTIVE:

Unchanged

CHAPTER ONE

GENERAL PROVISIONS

Article 1

Definition

In accordance with the provisions of this Directive, utility
1.
model protection shall
involving
products or processes that involve an inventive step and are
susitable for industrial application.

cover new inventions

2.

The following names are used in the Member States:

Brevet de courte durØe/Octrooi van korte duur
Brugsmodel
Gebrauchsmuster
—Ø(cid:243)(cid:244)(cid:239)(cid:240)(cid:239)Ø(cid:231)(cid:244)ØŒ(cid:252) ı(cid:240)(cid:239)(cid:228)(cid:229)(cid:223)ª(cid:236)Æ(cid:244)(cid:239)(cid:242) (cid:247)æ(cid:231)(cid:243)Ø(cid:236)(cid:252)(cid:244)(cid:231)(cid:244)Æ(cid:242)
Modelo de utilidad
Certificat d’utilitØ
Short-term patent
Brevetto per modelli di utilit(cid:224)

Belgium:
Denmark:
Germany:
Greece:
Spain:
France:
Ireland:
Italy:
Netherlands: Zesjarig octrooi
Gebrauchsmuster
Austria:
Modelo de utilidade
Portugal:
Nyttighetsmodellagen
Finland:

Article 2

Subject

Unchanged

This Directive seeks to approximate Member States’ laws, regu-
lations and administrative provisions on the protection of
inventions by utility model.

CHAPTER II

SCOPE OF THE UTILITY MODEL

Article 3

Exceptions to protection

The following in particular shall not be regarded as

1.
inventions that are eligible for utility model protection:

(a) discoveries, scientific theories and mathematical methods;

Unchanged

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(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts or

doing business;

(d) presentations of information.

Unchanged

2.
The items referred to in paragraph 1, shall be excluded
from utility model protection only the application for utility
model protection relates to those items as such.

Article 4

Article 4

Non-protectable inventions

Utility models shall not be granted in respect of:

Unchanged

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

(b) inventions relating to biological material;

(c) inventions

to
substances or processes;

relating

chemical

or

pharmaceutical

Article 5

Novelty

An invention shall be considered to be new if it does not

1.
form part of the state of the art.

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

Additionally,

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

Article 6

Inventive step

Article 6

Inventive step

1.
For the purposes of this Directive, an invention shall be
considered as involving an inventive step if, compared with the
state of
it presents an advantage and is not very
obvious to an expert in the field.

the art,

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2.
The advantage referred to in the previous paragraph must
be a practical or technical advantage for the use or manu-
the product or process in question, or another
facture of
benefit to the user, such as an educational advantage or an
entertainment value.

Article 7

Industrial application

Unchanged

An invention shall be considered as

1.
susceptible of
industrial application if it can be made or used in any kind
of industry, including agriculture.

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

CHAPTER III

UTILITY MODEL APPLICATION

Article 8

Requirements of the application

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

Unchanged

1.

A utility model application shall contain only:

(b) a description of the invention;

(c) one or more claims;

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

(e) an abstract.

A utility model application shall be subject

to the
2.
payment of a filing fee and, where appropriate, a search fee.

Article 9

Date of filing

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

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

(b) information identifying the applicant;

(c) a description and one or more claims.

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Article 10

Designation of the inventor

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

Article 11

Unity of invention

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

Article 12

Disclosure of the invention

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

Article 13

Claims

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

Article 14

The abstract

Unchanged

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

Article 15

Examination as to formal requirements

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

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

The competent authority referred to in paragraph 1 shall
the

3.
not carry out any examination to establish whether
requirements of Articles 5, 6 and 7 have been met.

Article 16

Search report

If a utility model application has been accorded a date of
1.
the
filing and is not deemed to have been withdrawn,
competent authority with which the application has been
lodged shall, at
the applicant or any other
interested party and at their own cost, draw up on the basis
of the claims a search report covering the relevant state of the
art, with due regard to the description and any drawings.

the request of

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

Unchanged

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

Immediately after it has been drawn up, the search report
3.
shall be transmitted to the applicant together with copies of
any cited documents. The search report shall be made available
to the public as part of the documentation accompanying the
granting of the utility model.

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

Article 17

Priority right

Unchanged

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

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

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

Article 18

Internal priority and transformation

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

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

2.
mutatis mutandis.

Unchanged

CHAPTER IV

EFFECTS OF THE UTILITY MODEL

Article 19

Duration of protection

The duration of the utility model shall be six years from

1.
the date of filing of the application.

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

right-holder may submit

to the

the

the

right-holder may submit

Six months before the period indicated in paragraph 1
2.
elapses,
competent
authority an application for renewal of the utility model for
a period of two years. This renewal shall not be granted unless
an application for a search report has been made in respect of
the invention concerned.

to the

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

Unchanged

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

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Article 20

Rights conferred

1. Where the subject-matter of a utility model is a product,
the utility model shall confer on its proprietor the right to
from making,
prevent
using, offering for
these
purposes that product.

third parties not having his consent

importing for

selling, or

sale,

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

The rights conferred by a utility model

3.
with paragraphs 1 and 2 shall not extend to:

in accordance

Unchanged

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

(b) acts done for experimental purposes relating to the subject-

matter of the protected invention.

The proprietor of or applicant for a utility model shall
4.
have the right to assign, or transfer, the utility model by any
legally recognised means and to conclude licensing agreements.

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

the proprietor of

Unchanged

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

the authorisation of

The right conferred by the utility model shall take full

7.
effect at the time when the protection is published.

Article 21

Unchanged

Community exhaustion of rights

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

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

Article 22

Relationship with other forms of protection

The provisions of this Directive shall be without prejudice to
any provisions of Community law or of the law of the Member
State concerned relating to design rights, trade marks or other
distinctive signs, patents,
semi-
topography of
conductor products, civil liability or unfair competition.

typefaces,

CHAPTER V

Unchanged

DUAL PROTECTION, LAPSE AND REVOCATION

Article 23

Dual protection

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

2.
A utility model which has been granted shall be deemed
to be ineffective where a patent relating to the same invention
has been granted and published.

3. Member States shall take appropriate measures to prevent
the proprietor, in the event of his rights being infringed, from
instituting successive proceedings under both sets of protection
arrangements.

Article 24

Lapse

Unchanged

A utility model shall lapse:

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

(b) if its proprietor surrenders it;

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

due time.

Article 25

Revocation

An application for revocation of a utility model may be

1.
filed only on the grounds that:

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

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

Unchanged

(c) the subject-matter of the utility model extends beyond the

content of the utility model application as filed;

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

extended.

If the grounds for revocation affect the utility model only
2.
partially, revocation shall be pronounced in the form of a
corresponding limitation of the utility model.

CHAPTER VI

FINAL PROVISIONS

Article 27

Transposal

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

Article 26

Secondary application

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

Unchanged

1. Member States shall bring into force the laws, regulations
and administrative provisions necessary to comply with this
Directive not later than two years after the date of its publi-
cation in the Official Journal of the European Communities.
They shall immediately inform the Commission thereof.

these provisions,

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

Unchanged

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

law which they adopt

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Article 28

Monitoring of the Directive

the Commission shall

Within three years of the deadline for transposal laid down in
Article 27,
inform the European
Parliament and the Council of the results of its application
and whether it should be adapted in order to safeguard,
in
the context of utility models, the proper functioning of the
internal market and innovation by Community undertakings.
It shall also propose any measures it deems necessary to
improve it.

Article 29

Entry into force

Unchanged

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

Article 30

Addressees

This Directive is addressed to the Member States.