Of mice & methods - Why a small gnawer could overthrow German IP law

Published on: 28 September 2016 by Dr. Malte Köllner, Dennemeyer & Associates

The field mouse inhabits a wide range of habitats including grasslands and marshes, pastures and gardens, and urban areas. As a consequence of a decision of the Bundespatentgericht (Federal Patent Court of Germany) from September 2016 with the keyword "field mouse bait station" it has also found its way to the Bundesgerichtshof (German Federal Supreme Court).

From the start: Bundespatentgericht recently confirmed the rejection of a utility model application to protect a method of catching mice with a bait station due to the fact that methods are not protectable as utility models under German Law . The German branch of Luxembourg based patent law firm Dennemeyer & Associates S.A. had brought the appeal asking if § 2 Nr. 3 GebrMG (the statutory provision that forbids the protection of methods as a utility model) is compatible with constitutional and basic Human Rights Protection both at national and European level.

Utility models consist of an exclusive right granted for an invention that is similar to a patent right, but its main purpose is to achieve a faster registration than that of a patent by replacing examination and grant by simple registration. In return, its lifespan is shortened. Not all countries offer this type of protection and their scope differs widely.

Patent Attorney Dr. Malte Köllner, head of Dennemeyer & Associates’ office in Frankfurt am Main, had claimed that “utility models started as a protection for tools and machines, they later included protection even for substances and pharmaceuticals and their use as treatments in diseases. From a historical point of view, the protection of utility models developed as a right parallel to the protection of patents.” He further mentioned that “methods are still not included within the protection of utility models mainly due to the lack of drawings in such applications”.

So Köllner raises the question if “the inclusion of mandatory drawings couldn’t be sufficient to allow the registration of methods as utility models in Germany?” The main issue surrounding this subject are the different requirements for device utility models and method utility models and the question whether this differentiation might clash with fundamental rights.

The question is now pending before the Bundesgerichtshof (German Federal Supreme Court). Köllner states: “I want to encourage everybody to register methods as utility models in combination with an request for suspension until this issue is finally decided by the Bundesgerichtshof or the Federal Constitutional Court.”

Dr. Fichter, Director of Dennemeyer & Associates S.A., adds: “Even if the case may at first glance seem funny given the fact that a small animal like the filed mouse is involved, it has the potential to change German IP history - if the Bundesgerichtshof should decide that methods must be treated and protected like other Intellectual Property Rights such as patents.”

In that case the field mouse would have found a new habitat: the history books of German IP law.

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