Don’t forget the utility model
15 Apr 2019
Inventors often (hopefully always) look at ways to protect their inventions to gain the most benefit for them. The first ports of call are invariably patent, design and copyright protection along with trade mark protection. In many cases, the inventor considers or is advised that their invention is not capable of protection by a patent, which usually ends in them commercialising the invention without protection thereby effectively donating it to the public. Even where PCT International Patent Applications are filed, inventors are often not aware of the option of filing a utility model based on the PCT application. To the detriment of the inventor, utility models are often overlooked or not considered at all and possible protection is lost as a result.
A utility model is similar to a patent and sometimes referred to as “petty patents” or “innovation patents”. Similar to a patent, a utility model provides an exclusive right which allows the rights holder to prevent others from commercially using the protected invention without his authorisation for a limited period.
There are, however, some differences between a patent and a utility model:
- The requirements for a utility model are less stringent than for patents. While the invention must still be novel, there is no requirement for “inventive step” as in patents;
- The term of protection for a utility model is shorter than that for a patent but varies between countries – usually between 7 and 10 years;
- Many patent offices do not conduct substantive examination of a utility model application and will grant the application if the prescribed formalities are met, making the registration process significantly simpler and faster;
- A utility model is therefore much faster and cheaper to obtain and maintain.
As utility models are not registrable for processes, chemical substances, plants or animals, it is mainly used for mechanical inventions. Moreover, utility models are particularly suited for “incremental” improvements or adaptations to existing products as long as these improvements/adaptations render the invention new.
With the relatively low cost and ease of registration, a utility model is often an attractive option for small to medium enterprises or where improvements/adaptations are made to existing products. And with the lower threshold for a valid utility model, as compared to patents, all inventors should at least consider filing a utility model to obtain some sort of protection which may turn out to be very valuable.
A further consideration often overlooked is the option of basing a utility model on a PCT International Patent Application. In this instance, the inventor may file a PCT application and consider the patentability of the invention at a later stage, for example through the PCT’s search report and written opinion or from his own prior art searches. Should the invention appear not to be patentable, for example, on the grounds of non-inventiveness, but the invention is still new for purposes of a utility model, the inventor may proceed with filing a utility model for the invention in the countries where this route is available. This keeps the option of patent protection open, with the fall-back to a utility model if necessary, and still remaining a valuable opportunity to protect your invention.
Although a utility model is not available in all countries, consult with your patent attorney before you give up on protection and donate your invention to the public.
- Can third parties circumvent a patent with a small change?
- Patenting strategy: When to patent?
- The requirements for a patentable invention