Utility models are not available in all European jurisdictions or nor indeed are they recognised as intellectual property rights in TRIPS. They are however available in Spain. Some recent judgments show the particular features of these rights.
Utility models are defined in the Spanish Patent Act as inventions that are new and involve an inventive step and that confer a form, structure or constitution on an object that results in an appreciable improvement in its use or manufacture. This complicated definition suggests that utility models are intended to protect purely mechanical inventions. This literal interpretation is difficult to sustain, however, as the Spanish Patent Act explicitly excludes processes or plant varieties (that find protection in the Plant Varieties Act) and this explicit exclusion would be unnecessary if only mechanical inventions could be protected through utility models. As a result of trying to reconcile these antithetic provisions, the Spanish Patent Office has in some cases granted utility models for non-mechanical inventions (see Decision of 24 September 1987 where it granted a utility model for a grape variety which at that time was not protected under the Spanish Plant Varieties Act).
Novelty for utility model protection is only national, i.e., only disclosures in or that concern Spain can destroy the novelty of a Spanish utility model. This requirement was traditionally interpreted in a broad manner, so that only disclosures taking place in Spain and in Spanish language were considered to be novelty destroying prior art. This qualified novelty requirement drives utility models very close to “introduction patents”, a XIX-century IPR (that existed in Spain and other countries), which were intended to afford protection to people who registered in Spain inventions “imported” from other countries. Significantly, a recent decision by the specialised Section 28th of the Appeal Court of Madrid (Judgment of 28 November 2011) has declared that disclosures that are accessible in Spain (through the Internet, via Espacenet or via other databases) destroy the novelty of a Spanish utility model even if they were only published in English.
Inventive step for utility model protection requires that the invention does not derive in a “very” evident way from the state of the art. A recent decision of the specialised Section 15th of the Appeal Court of Barcelona (Judgment of 26 September 2012) declared that a utility model was not “very” evident because it took 40 years in the concerned sector to apply the “very” evident utility model. The distinction between evident and very evident could be regarded as very tenuous (it was called the pile sophism by the Greeks). It seems that it implies the granting of exclusivity rights to inventions that were evident (and therefore not patentable), but not “too much” evident. The rationale underlying this requirement is therefore difficult to grasp.
Another feature of the Spanish Law relating to utility models is the lack of recognition of a prior user’s rights if a utility model is at stake. This is contrary to what happens in the patent field, as Article 54 of the Spanish Patent Act provides that the owner of a patent shall not have the right to prevent persons who, in good faith, prior to the date of priority of the patent, had worked the patented invention in Spain or had made serious and concrete preparations to work the said invention, from continuing or commencing working it or from making preparations in the same manner as before in such a way as to meet the reasonable needs of their activity. As regards utility models, the Supreme Court decision of 13 February 2006 declared that the prior user of a utility model has no right to continue exploiting the invention once the utility model has been granted. This interpretation (based on the aphorism “odiosa sunt restringenda” or narrow interpretation of restrictive provisions) means that a minor invention (i.e., one that is evident but not very evident) paradoxically has greater rights in this respect than a major one.
Another peculiar feature of the utility models in Spain is that, according to the Supreme Court (Judgment of 24 October 2012), you do not need to apply the all-element-rule (i.e., all the characteristics of the claim must be present in the infringing embodiment). If the main elements of the claim are present, then there is direct (and not indirect) infringement. In that case, the alleged act of infringement was the sale of the looped-end of a wet mop head (without the stick). The claim referred to the combination of the mop head and the stick. For the Supreme Court the sale of the main part (the wet mop head) was a direct infringement, even though one element of the claim (the stick) was absent.
According to the European Union Court of Justice, EU countries enjoy the freedom to regulate IPRs in the absence of harmonisation, if no discrimination takes place (see Thetford, 1988 ECR 3585, which dealt with the concept of novelty in patent law). The peculiarities in the law relating to utility models in Spain strongly suggest that the competent European authorities should consider the need of harmonisation.
Other items in the Patents Update newsletter for January 2013:
> China: Two recent Supreme Court decisions open up greater possibilities for amendment of Chinese patents
> England: The PCC - A review of the first four patent cases to come to trial in the PCC
> Germany: "Customary usage in the trade" gains importance in determining infringement in repair/reconstruction cases
> Germany: Stay of first instance infringement decisions in standard essential patent actions
> Holland: Cross-border patent litigation revival 'Solvay vs Honeywell'
> England: The Patents Court exercises its jurisdiction to grant a pan-European declaration of non-infringement
> England: Patent litigation statistics for 2011 and 2012
> EU: Unitary Patent Regulation and Unified Patent Court Agreement
> England: The Patent Box