Utility models, short term patents, petty patents, innovation patents, utility solutions – the names may be unfamiliar to you, but they all relate to a form of IP right which is under-utilised by many businesses that could benefit from them.

Many SMEs and lone inventors struggle to finance IP protection for their inventions, and the utility model system could be a cost-effective alternative to “standard” patents for many of those inventions. For bigger businesses, the utility model system offers a cost-effective way of protecting multiple inventions, especially for those having a relatively short commercial life.

What are they?

Utility models are a form of IP right which are generally similar to standard patents and provide similar remedies for infringement, but there are a number of key differences summarised below.

	“Standard” Patents	Utility Models
Where can I file for protection?	Almost every country in the world	Over 70 countries, including China, Japan, Germany, Australia and France. A list of countries, at the time of press, is listed below in Annex 1. NB: The UK and USA do not have a utility model system.
How long can they last?	20 years	Generally 6-10 years. (12-15 years in a few countries)
What can be protected?	Products, processes, apparatus	In most countries – products and apparatus only. There are some countries which allow utility model protection for processes (e.g. France)
What is needed to file an application?	Description of the invention, claims and drawings	Description of the invention, claims and drawings
Does the relevant Patent Office examine the right for novelty and inventive step?	Yes	Many countries do not examine utility models for novelty or inventive step – including China, Germany and Spain. Novelty and inventive step will generally only be assessed if the utility model holder sues for infringement.
How is novelty assessed?	Global novelty – the same idea cannot have been published anywhere in the world before the patent application was filed. There are some exceptions, and some countries which offer a grace period after self-publication.	A mixture of global novelty (e.g. China) and local novelty, where publications of the same invention outside of the utility model country are not considered novelty-destroying.
How is inventive step assessed?	Inventive step must be proved, based on differences of the invention to the prior art	Some countries require no inventive step at all (e.g. Russia, Mexico, Turkey) and others have a lower threshold for inventive step than for standard patents.
How long does it take for the right to be registered/granted?	Varies by country or region, but generally between 3-7 years.	Varies by country, but generally between 6-12 months.
What are the relative costs for filing and maintenance?	100%	Generally between 40-75% of the cost of filing and maintaining a standard patent in the same country.

 

What are the advantages of filing for utility model protection?

• Utility models are much cheaper to obtain and maintain than standard patents, but give very similar protection and enforcement rights in most countries. This can also be an advantage to SMEs and individual inventors whose IP budgets are tight.
• Due to the fact that the novelty and inventive step requirements tend to be much less stringent than for standard patents, utility models can be very useful to protect new inventions which are incremental to previous inventions or involve only a small change, and which may not meet the more stringent inventive step requirements of a standard patent.
• As utility models last generally between 6-10 years, they can be useful for products having a short commercial life, such as many fast-moving consumer goods, automotive components and simple mechanical devices.
• They generally take months, rather than years, to grant, which allows for quick protection and the ability to enforce the right much earlier than for standard patents; again this is very useful for products having a short commercial life.
• If the inventor has already published the invention, many countries’ utility model systems have a grace period, within which the utility model may still be validly filed.
• Utility models can be filed in addition to standard patents in many countries – so early utility model protection can be gained while waiting for patents to grant, or gaps can be plugged in claim coverage.
• Utility models can also claim priority from an earlier patent (including a PCT application) or utility model application.
• In some cases, utility models may be the only form of protection you can get, for example if the prior art against your invention is considered so close that differences aren’t deemed to involve an “inventive step” necessary for a standard patent application.

What are the disadvantages of filing for utility model protection?

• Because most countries do not examine utility model applications for novelty, the validity of many utility models at registration is very uncertain. In effect, the applicant is putting off novelty searching until a potential infringer is identified, and only then will a novelty search be required by the country’s patent office. This uncertainty can be reduced by the applicant undertaking novelty searching before filing the utility model application (or during its lifetime). In some countries, examination of a utility model may be requested by a third party concerned with the scope of a utility model.
• Although many countries have a reduced level of inventive step requirement for utility models, there is still a requirement in most countries, and in some cases the level is the same as for standard patents.
• The lifetime of the utility model may be too short for some inventions, and it can be difficult to assess whether a utility model’s lifetime will be long enough during the early stages of development of an invention.
• Most countries do not allow utility model protection for processes or methods.

Is it possible to convert a standard patent application into a utility model?

Some countries allow conversion of a patent application into a utility model, but there may be time limits for doing it.

In some countries, if a patent application is refused, then it may be possible to convert the refused application into a utility model. This can be very useful for inventions refused on the basis of lack of inventive step, for countries where the inventive step threshold is much lower for utility models.

In a few countries, a granted patent may be converted into a utility model – again with time limits for doing so.

What are the recent trends in the filing of utility models?

The figure below is a graph based on information provided by the World Intellectual Property Organisation which shows the trend in the global number of utility model filings from 1985-2018.  After a relatively long period of stagnation in utility model filings, from 2007 the number of filings has increased dramatically to more than 2.5 million applications worldwide in 2018.

There are a number of interesting statistics, for example:

1. The total number of filings passed 1 million for the first time in 2015 but has doubled since then to more than 2.5 million in 2018.
2. The vast majority of filings are in in Asian region; over 96% of the total number of filings in 2017.
3. The bulk of utility model filings are made by resident companies of the filing countries – over 98% of filings.
4. Chinese utility model filings have increased from around 41,000 in 1985, to almost 1.5 million in 2017.
5. Of the 1.55 million applications filed globally in 2016, the IP office in China received almost 1.48 million – 95% of the world total.

The significant increase in Chinese utility model filings is not very surprising given the meteoric rise in economic and innovation activity in China over the last 5-10 years. The fact that such a large proportion of Chinese utility model filings are made by resident Chinese companies indicates that utility model protection is particularly suited to the Chinese economic model and manufacturing base, and also that many businesses outside China are not aware of the advantages of using the utility model system when exporting innovative products to China.

Where can I get more information on utility models?

Annex 1 includes basic details of most countries where utility models can be filed, with some brief information on the name of the right, and its maximum duration.

For more detailed information and for a discussion on whether utility models are relevant to your inventions, please get in touch to speak to one of our attorneys.

Annex 1 – Countries with utility model systems

Country*	Name	Maximum Term
Albania	Utility model	10 years
Angola	Utility model	Up to 15 years
Argentina	Utility model	10 years
ARIPO	Utility model	8 years
Armenia	Utility model	10 years
Aruba	Small patent	6 years
Australia	Innovation patent	8 years
Austria	Utility model	10 years
Azerbaijan	Utility model	10 years
Belarus	Utility model	8 years
Belgium	short patent	6 years
Belize	Utility model	7 years
Bolivia	Utility model	10 years
Botswana	Utility model	7 years
Brazil	Utility model	15 years
Bulgaria	Utility model	10 years
Chile	Utility model	10 years
China (including Hong Kong & Macau)	Utility model patent	10 years
Colombia	Utility model	10 years
Costa Rica	Utility model	12 years
Czech Republic	Utility model	10 years
Denmark	Utility model	10 years
Ecuador	Utility model	10 years
Egypt	Utility model	7 years
El Salvador	Utility model	10 years
Estonia	Utility model	10 years
Ethiopia	Utility model	10 years
Finland	Utility model	10 years
France	Utility model	6 years
Georgia	Utility model	8 years
Gambia	Utility model	7 years
Germany	Utility model	10 years
Ghana	Utility model	7 years
Greece	Utility model	7 years
Guatemala	Utility model	10 years
Honduras	Utility model	15 years
Hungary	Utility model	10 years
Indonesia	Petty Patent/Simple Patent	10 years
Ireland	Short term patent	10 years
Italy	Utility model	10 years
Japan	Utility model	10 years
Kazakhstan	Utility model	8 years
Kenya	Utility model	10 years
Korea (south)	utility patent	10 years
Kuwait	Utility model	7 years
Kyrgyzstan	Utility model	8 years
Laos	Petty patent	7 years
Lesotho	Utility model	7 years
Malaysia	Utility innovation	20 years
Mexico	Utility model	10 years
Moldova	Utility model	10 years
Mozambique	Utility model	15 years
Nicaragua	Utility model	10 years
OAPI	Utility model	8 years
Panama	Utility model	10 years
Peru	Utility model patent	10 years
Philippines	Utility model	7 years
Poland	Utility model	10 years
Portugal	Utility model	10 years
Romania	Utility Model	10 years
Russia	Utility model	13 years
Rwanda	Utility model	10 years
Slovakia	Utility model	10 years
Slovenia	Short term patent	10 years
South Africa	Functional design	10 years
Spain	Utility model	10 years
Taiwan	Utility model	10–12 years
Tajikistan	Utility model	15 years
Tanzania	Utility model	7 years
Thailand	Utility model	10 years
Tonga	Utility model	7 years
Trinidad and Tobago	Utility certificate	10 years
Turkey	Utility model	10 years
Uganda	Utility certificate	7 years
Ukraine	Utility model	8 years
United Arab Emirates	Utility model	10 years
Uruguay	Utility model patent	15 years
Uzbekistan	Utility model	8 years
Venezuela	Utility model	10 years
Vietnam	Utility model	6 years

 

*there are other countries with utility model systems, this list is not exhaustive and lists only the more widely used countries. Please contact us for more information.