一覧に戻る BPatG – Extent of the Examination Competence of Utility Model Sections of GPTO in Registration Procedure, particularly with respect to computer-implemented inventions

With decision 35 W (pat) 14/08, "System for invoicing services on the Internet" ("Vorrichtung zur Abrechnung von Diensten im Internet"), the German Federal Patent Court (Bundespatentgericht, BPatG) has clarified the extent of examination competence conferred to the Utility Model Sections (Gebrauchsmusterstellen) of the German Patent and Trademark Office (GPTO). Prior to this decision, it was not clear whether the Utility Model Sections of the GPTO were allowed or even required to examine whether a utility model application refers to protectable subject matter, or whether such subject matter would fall under the exclusions from protectability (also referred to as absolute protection bars, "absolute Schutzhindernisse") in Sections 1 and 2 German Utility Model Law (Gebrauchsmustergesetz, GbmG).

In the cited decision, the BPatG ruled that there is no legal basis allowing the Utility Model Sections of the GPTO to examine compliance of a utility model application with absolute protection bars, and particularly no legal basis for the examination of whether the subject matter of the utility model application has a technical character, i.e. falls under the exclusion from protectability for computer programs as such (Section 1 (2) No. 3  and (3) GbmG). Rather, the BPatG clarified that due to the lack of unambiguous legal basis, and the lack of technical competence of the Utility Model Sections of the GPTO, the utility model registration procedure remains a formal procedure; according to the explicit provision of Section 8 (1) GbmG, the procedure is limited to examining the formal requirements laid down in Sections 4 and 4a GmbG (particularly regarding the content of the utility model application).

Thus, since the legally defined staffing of the Utility Model Section is not foreseen to integrate technical expertise (e.g. in the form of consulting patent examiners) in the registration procedure, the extent of examination in the registration procedure must be limited to the purely formal requirements. This situation could change if the lawmaker specifically defines which absolute protection bars are to be examined before registration, and also provides for a corresponding staffing of the Utility Model Sections. Under the present legal situation, the examination competence of the Utility Model Section can only be acknowledged in the exceptional cases where the lack of protectability under Sections 1 and 2 GbmG can be recognized without technical expertise in an obvious manner on the basis of an unambiguous formulation of the utility model application.

Since a utility model is registered in a purely formal registration procedure, the verification of whether a utility model application complies with the absolute protection bars is limited to the cancellation procedure before the Utility Model Section of the GPTO (Section 17 GbmG), consisting of one legal and two technical members, or before the Utility Model Appeal Senate of the BPatG (Section 18 (3) GbmG), also consisting of one legal and two technical members.

Accordingly, the cited decision finally clarifies that under the current statute, the Utility Model Sections of the GPTO are limited, as a rule, to examining whether a utility model application complies with the formal requirements of Sections 4 and 4a GbmG, and thus, are not competent to examine whether subject matter is excluded from protectability under Sections 1 (2) and 2 GbmG. Thus, the practice followed by some Utility Model Sections of the GPTO in examining whether the subject matter on file has a technical character in view of the exclusion of computer programs as such under Section 1(2) No. 3 and (3) GbmG can no longer be upheld, and a registration must be performed without such an examination.

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Download the full text of the decision 35 W (pat) 14/08 "System for invoicing services on the Internet" ("Vorrichtung zur Abrechnung von Diensten im Internet") of the German Federal Patent Court dated January 11, 2010 under:

http://www.mueller-bore.de/tl_files/Decisions_BPatG/System_for_Invoicing_Services.pdf

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