SONN Patentanwälte – IP Attorneys

Austrian and German Utility Models – the dissimilar twins

Following the enactment of the Austrian Utility Model in 1994, not much guidance was given by the courts with regard to the level of inventiveness in order to meet the statutory requirement of "inventive step". According to the considerations given by the legislator and the prevailing opinion in academic writing, a lower "quantity" of inventiveness as opposed to patent law was considered sufficient for the registration of valid utility models in Austria.

Recently (12 July 2006), the Austrian Supreme Court took the opportunity to more precisely define the level of inventiveness for registering a valid Austrian utility model. With explicit reference to the "analogous" German Law, the Austrian Supreme Court decided that for satisfying the requirement of "inventive step" it is not necessary that the inventive effort must have been "non-obvious" to the person skilled in the art. Non-obviousness is only a requirement of Patent Law, whereas for a valid Austrian utility model it is rather sufficient that the found solution is not just the result of a routine work. Thus, the necessary level for inventiveness according to Austrian Utility Model Law was clearly and explicitly defined as being lower than in Patent Law.

Simultaneously, the German Supreme Court deliberated for the first time after the amendment of the German Utility Model Act in 1986 (by which the requirement of "inventive step" was introduced as a statutory requirement) on the level of inventiveness which is necessary for meeting this statutory prerequisite. By explicitly opposing long-standing case law of the Federal German Patent Court, academic writing, and the considerations of the legislator, the German Supreme Court concluded that there is a bar to consider obvious solutions as being based on an "inventive step" just because the person skilled in the art could not have found the protected solution as a matter of routine. Thus, the German Supreme Court overruled explicitly the academic writing the Austrian Supreme Court based its simultaneously handed down decision on.

On the basis of these diverging Supreme court decisions, it seems very likely that dozens of utility model registrations may be found invalid in Germany, whereas their corresponding twin regitrations will be considered valid in Austria. Thus, if the Austrian Supreme Court persists on its latest ruling, Austrian and German utility model registrations are quite dissimilar twins!

Dr. Rainer Beetz, LL.M.