IP and Brexit
What will happen to intellectual property rights when the UK leaves the EU?
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.
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.|
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.
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 to date 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:
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.
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.
|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.