https://doi.org/10.1093/oso/9780192844477.001.0001, pg. Lexis, ALB]
5.25
The cluttering of the register with utility models that are probably not valid (or at the very least partially invalid) is posing a problem in some areas of technology. Not only does this add to the costs of checking that a product infringes no IP rights, but also can lull a holder of a utility model into a false sense of security. The certificate of registration—unlike a regular patent—can never be given the ‘benefit of the doubt’ for validity. Some utility model systems, for example in Croatia or Japan, allow or require the proprietor to request complete ‘substantive’ examination of the utility model. Other systems, such as Germany, only provide for a search to be carried out at the request of the applicant;34 complete examination is restricted to a revocation request35 or as a counterclaim in an infringement procedure.
5.26
The value to the company of the (unexamined) utility model is also difficult to ascertain if there is no examination. Venture investors are looking for valuable rights and if no patent examiner has looked at the intellectual property rights in detail, then their value can be uncertain. The EMB developers need the funding to continue with their product and their backers would want strong IP protection. The lack of examination can be overcome, at least partly, by having a patent expert review the rights, but this lacks the force of law, and its costs can easily be higher than the cost of patent prosecution.