(iii) Utility patents

Some countries, such as Germany, France, Spain, Italy, Japan, China and Australia,[1] have introduced a system with a lighter degree of protection for ‘inventions’, which is known as the utility model[2].

Utility model vs. patents. A utility model also provides a monopoly right for an invention: the owner of a utility model can prevent an infringer from exploiting the invention in the territory for which the utility model was granted. Normally, the same remedies for infringement available under a patent are available for infringement of a utility model.

Differences between utility models and patents. A utility model is different in that the requirements are typically less burdensome. For a patent to be granted, the invention must be both ‘novel’ and ‘inventive’. For a utility model, the ‘prior art’ in assessing novelty is often more limited (‘absolute’ novelty is not always required), and an ‘inventive step’ has a considerably lower threshold and is sometimes not even required. Most jurisdictions will only grant utility models for products, and not for methods or processes. The first utility model laws actually limited protection to mechanical innovations. Furthermore, the term of protection of utility models is shorter, and a utility model is much cheaper to obtain.

Importance of utility models. In view of the shorter term of protection, utility models can be useful for products with a relatively short product lifecycle. Since the novelty and inventive step criteria are less stringent, utility models can be useful in connection with incremental research and development, where only small changes to existing inventions are made and therefore might not meet the requirement of an inventive step for a patent. Since utility models are granted much more expeditiously than a patent, they are effective in acting against an infringer in a timely manner. Furthermore, the lower costs for obtaining utility models make them particularly attractive for SME’s.

If an inventor has published about its invention, and thus a patent cannot be granted anymore, some jurisdictions such as Germany, allow a grace period. This grace period permits the inventor to obtain a utility model despite it being part of the state of the art.

Duration. Whereas a patent provides protection of up to 20 years, a utility model provides protection for a shorter term. The exact term depends on the jurisdiction, but is usually between 7 and 10 years.

Application procedure. Utility model applications can be filed at the patent offices of countries that acknowledge or grant utility models. Similar to a patent application, an application for a utility model should include a description, explanations, drawings and claims. Utility model applications are usually not examined before being granted and are therefore granted much sooner (the average time approximating six months).

Conversion into a utility model. Many countries allow the conversion of a patent application into a utility model application. Some countries provide a time limit for such conversion. If a patent application is refused, some countries allow the patent application to be converted into a utility model within a certain period after the refusal.

In some countries, such as Germany, it is possible to obtain both a patent and a utility model for the same invention.

[1]           Utility models (or similar IP-rights with a different name) are available in Albania, Angola, Argentina, ARIPO, Armenia, Aruba, Australia, Austria, Azerbaijan, Belarus, Belize, Brazil, Bolivia, Bulgaria, Chile, China (including Hong Kong and Macau), Colombia, Costa Rica, Czech Republic, Denmark, Ecuador, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Honduras, Hungary, Indonesia, Ireland, Italy, Japan, Kazakhstan, Kuwait, Kyrgyzstan, Laos, Malaysia, Mexico, OAPI, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Russian Federation, Slovakia, Spain, Taiwan, Tajikistan, Trinidad & Tobago, Turkey, Ukraine, Uruguay and Uzbekistan.

[2]           Utility models are also referred to as innovation patent, utility innovation or petty patent.