Paradigm Shift on the Inventiveness Requirement of Utility Models

Austria is one of the countries which offers protection for technical inventions not only via patents but also utility models. When the Austrian legislator enacted the first Utility Model Act in 1994 he commented the requirement of inventiveness for utility models was lower than that for patents.

Since then the Austrian Courts have struggled with a definition for the inventiveness requirement for utility models. In 2006 the Supreme Court defined the requirement of inventiveness for utility models as satisfied in case the solution of the invention goes beyond routine skills of the person skilled in the art. This definition applied by the Austrian Supreme Court was taken from German literature on the identical provision of the German Utility Model Act. However, when handing down its decision in 2006 the Austrian Supreme Court could not know that the German Supreme Court simultaneously changed its practice by explicitly dismissing this definition applied by the Austrian Supreme Court. In 2006 the German Supreme Court decided that the inventiveness requirement for patents and utility models must be assessed equally. Accordingly, since then the requirements for the validity of utility models in Austria and Germany were significantly different.

However, in a very recent judgment the Austrian Supreme IP Tribunal (SIPT) has changed its practice, bringing the inventiveness requirement for utility models in line with the non-obviousness requirement known from patent law. In its reasoning the SIPT stated that Austrian Courts should judge the inventive step requirement for patents on the basis of the well-known problem/solution-approach developed in the case law of the EPO. As on the basis of this approach the person skilled in the art needs anyway a motivation to combine the teachings of two documents (“could/would-approach”), it cannot be seen how such a motivated combination would not be based on routine skills. Accordingly, the SIPT found that the attempt to distinguish the inventiveness requirement for patents from those for utility models has failed. Thus, the inventiveness requirement for Austrian utility models is now in line with those for patents.

Critical voices may say – what then do we need utility model protection for? There are still several reasons. Fortunately, Austrian utility model law knows a 6-months novelty grace period (in contrast to patents). Additionally, a utility model is registered – if time requires – within 2 months. Accordingly, for products with a rather short life time a utility model is the most suitable IP right. Finally, the Austrian Utility Model Act includes the possibility of branching of a utility model from a pending (European or Austrian) patent application, which can be of significant value if a patent application is pending for years in times of the great backlog of the EPO.

Dr. Rainer Beetz, LL.M.

01.06.2011