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” 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 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 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:

  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.