Change in Practice for (Partial) Revocation Procedures of Utility Models in the Czech Republic

What is a utility model and what are the conditions for registration?

Technical solutions that are novel, surpass mere professional skill, and are industrially applicable can be protected by utility models.

However, upon request, the Office will revoke a utility model from the register if the technical solution is not eligible for protection, i.e., if it is not a technical solution, is not novel, does not surpass the realm of professional expertise, or is not industrially applicable.

If the reasons for revocation apply only to a part of the utility model, the utility model will be partially revoked.

In the previous practice, the utility model owner could amend the claims for protection during the revocation proceedings to meet the aforementioned eligibility conditions for registration. This is no longer possible. The only option now is to amend the claims that do not meet the registration eligibility conditions. If an independent claim does not meet this condition, all dependent claims will be revoked.

Revocation of the utility model

A utility model, like an invention protected by a patent, is the result of creative activity. However, there are many differences between an invention and a utility model, and these differences concern not only the level of the respective technical solution, the conditions, scope, and duration of protection but also differences in the proceedings before the Office itself. As a consequence of these differences, it is not admissible to amend claims in revocation proceedings under the utility model law. The aforementioned change is based on the verdict of the Supreme Administrative Court under case number 2 As 192/2022 – 31.  A utility model can only be partially revoked by removing (striking through) individual claims, while maintaining the unity of the technical solution, if the conditions of § 1 of the utility model law are met and the eligibility for registration of the model is cumulatively given, logically including its industrial applicability (technical feasibility). The Supreme Administrative Court adopts its conclusions, referring in detail to its reasoning. If the Office concludes that a partial revocation cannot be carried out by removing individual claims, it must proceed to a complete revocation. This is because, the proceedings for the registration of a utility model are based on a different principle (registration-based).

In judgment No. 9 As 37/2008-153, the Supreme Administrative Court stated that the higher demands on the quality of the application are fully in line with the type of proposal proceedings and the general principle vigilantibus iura scripta sunt (the law belongs to those who are vigilant, laws are written for the vigilant, or for those who look after their rights). It is in the applicant’s fundamental interest to formulate the claims in such a way that the utility model can withstand a possible revocation proceeding. It is not, therefore, an undue restriction of the rights of the utility model owner. Since it is purely up to the applicant how specifically to formulate the utility model, meeting only the formal criteria, they also assume the risk that if the claims are complexly formulated, failing to meet the registration conditions for one claim can lead to the revocation of the entire model. If the applicant wants to avoid this outcome, they must formulate their claims in a way that they can independently withstand without adjustments. It is the applicant’s duty to formulate the claim proposal in such a way that all of them meet these conditions. If they fail to meet this requirement, they cannot invoke good faith or legitimate expectation based on actions not conforming to the utility model law. Legitimate expectations or good faith cannot be derived from the registration itself, as the substantive conditions are not examined in the registration proceedings, as already mentioned.

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