Patents

Have you considered Utility Models?

Benefit from this under-utilised form of IP protection.

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” PatentsUtility Models
Where can I file for protection?Almost every country in the worldOver 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 yearsGenerally 6-10 years.

(12-15 years in a few countries)

What can be protected?Products, processes, apparatusIn 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 drawingsDescription of the invention, claims and drawings
Does the relevant Patent Office examine the right for novelty and inventive step?YesMany 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 artSome 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
AlbaniaUtility model10 years
AngolaUtility modelUp to 15 years
ArgentinaUtility model10 years
ARIPOUtility model8 years
ArmeniaUtility model10 years
ArubaSmall patent6 years
AustraliaInnovation patent8 years
AustriaUtility model10 years
AzerbaijanUtility model10 years
BelarusUtility model8 years
Belgiumshort patent6 years
BelizeUtility model7 years
BoliviaUtility model10 years
BotswanaUtility model7 years
BrazilUtility model15 years
BulgariaUtility model10 years
ChileUtility model10 years
China (including Hong Kong & Macau)Utility model patent10 years
ColombiaUtility model10 years
Costa RicaUtility model12 years
Czech RepublicUtility model10 years
DenmarkUtility model10 years
EcuadorUtility model10 years
EgyptUtility model7 years
El SalvadorUtility model10 years
EstoniaUtility model10 years
EthiopiaUtility model10 years
FinlandUtility model10 years
FranceUtility model6 years
GeorgiaUtility model8 years
GambiaUtility model7 years
GermanyUtility model10 years
GhanaUtility model7 years
GreeceUtility model7 years
GuatemalaUtility model10 years
HondurasUtility model15 years
HungaryUtility model10 years
IndonesiaPetty Patent/Simple Patent10 years
IrelandShort term patent10 years
ItalyUtility model10 years
JapanUtility model10 years
KazakhstanUtility model8 years
KenyaUtility model10 years
Korea (south)utility patent10 years
KuwaitUtility model7 years
KyrgyzstanUtility model8 years
LaosPetty patent7 years
LesothoUtility model7 years
MalaysiaUtility innovation20 years
MexicoUtility model10 years
MoldovaUtility model10 years
MozambiqueUtility model15 years
NicaraguaUtility model10 years
OAPIUtility model8 years
PanamaUtility model10 years
PeruUtility model patent10 years
PhilippinesUtility model7 years
PolandUtility model10 years
PortugalUtility model10 years
RomaniaUtility Model10 years
RussiaUtility model13 years
RwandaUtility model10 years
SlovakiaUtility model10 years
SloveniaShort term patent10 years
South AfricaFunctional design10 years
SpainUtility model10 years
TaiwanUtility model10–12 years
TajikistanUtility model15 years
TanzaniaUtility model7 years
ThailandUtility model10 years
TongaUtility model7 years
Trinidad and TobagoUtility certificate10 years
TurkeyUtility model10 years
UgandaUtility certificate7 years
UkraineUtility model8 years
United Arab EmiratesUtility model10 years
UruguayUtility model patent15 years
UzbekistanUtility model8 years
VenezuelaUtility model10 years
VietnamUtility model6 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.