LEGAL DECISIONS

12.10.2020: Subsequently filed claims do not directly change the content of a registered utility model

Claims filed subsequently to the file do not directly change the content of a registered utility model. Therefore, cancellation requests in this case must also be directed against the registered claims.

A cancellation request (additionally) adapted to the subsequently filed claims does not affect the content of the cancellation request originally directed against the registered claims.

If a utility model proprietor limits his opposition against a request for cancellation to claims for protection previously filed, an application of Section 93 of the Code of Civil Procedure (ZPO) in the subsequent decision on costs regularly leads to inequitable results.

Instead, it is advisable to base the decision on costs in such cases on the extent to which the utility model proprietor was able to successfully defend the challenged utility model with the subsequently filed claims.

Pracctical tip:
It is apparent that utility model owners must be much more sensitive when registering and defending utility models. Since the utility model is not examined for protectability, the proprietor is expected to take clear measures that indicate the scope of the protection that may be claimed. Here, it is important to have as far-sighted and flexible a strategy as possible in the context of cancellation proceedings.

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