In some countries, a utility model system provides protection of so-called “minor inventions” through a system similar to the patent system. Recognizing that minor improvements of existing products, which does not fulfill the patentability requirements, may have an important role in a local innovation system, utility models protect such inventions through granting an exclusive right, which allows the right holder to prevent others from commercially using the protected invention, without his authorization, for a limited period of time.
In general, compared with patents, utility model systems require compliance with less stringent requirements (for example, lower level of inventive step), have simpler procedures and offer shorter term of protection. Designed primarily to respond to the needs of local innovators, requirements and procedures for obtaining protection and the duration of protection vary from one country to another.
Similar to patents, utility models protect new technical inventions through granting a limited exclusive right to prevent others from commercially exploiting the protected inventions without consents of the right holders. In order to obtain protection, an application must be filed, and a utility model must be granted. They are sometimes referred to as “short-term patents”, “utility innovations” or “innovation patents”. It is not easy to define a utility model, as it varies from one country to another. In general, utility models are considered particularly suited for protecting inventions that make small improvements to, and adaptations of, existing products or that have a short commercial life. Utility model systems are often used by local inventors.
An owner of a utility model obtains the exclusive right to prevent or stop others from commercially exploiting the utility model for a limited period, often 6 to 10 years from the filing date. In other words, in general, utility model protection means that the invention cannot be commercially made, used, distributed, imported or sold by others without the utility model owner's consent. The above right is territorial, i.e. the right can be enforced only within the country in which a utility model is granted.
The main differences between utility models and patents are the following:
In some countries, utility models can be applied for in the same fields of technologies as patents. In other countries, utility model protection is eligible only for the shape or structure of products in certain fields of technology, such as mechanical devices and apparatus, but not for technical, chemical and biological processes. Eligible subject matter for utility models varies significantly from one country to another.
In general, the requirements for acquiring a utility model are less stringent than for patents. In some countries, the requirements for protecting utility models are basically the same as for patents, that is, (i) they must be within the eligible subject matter; (ii) they must be novel; (iii) they must involve an inventive step (non-obvious); (iv) they must have industrial applicability (utility); and (v) they must be described in an application in a sufficient and complete manner.
In some countries, the standards for an “inventive step” or “non-obviousness” may be lower than patents or absent altogether, and the requirement of “novelty” might be applied only at a local level.
Further, some countries require that the inventions are related to products, such as devices or apparatus (three-dimensional regime), thereby excluding processes or chemical substances. However, some countries allow utility models on processes, chemical compounds, pharmaceuticals or software.
In practice, protection for utility models is often sought for innovations of a rather incremental character, which may not meet the patentability criteria. For further information on the different conditions of registration of utility models in various countries and regions, please see the answer to the question below “How can I find the utility model laws of various countries?”.
No international treaty obliges Member States to implement a utility model system under their national laws. No reference to utility models is found in the Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). Nevertheless, a number of countries have implemented utility model systems to protect minor and incremental innovations and to complement the patent system in a flexible manner.
In countries where utility model protection is available, since utility models are listed as one category of industrial property in the Convention for the Protection of Industrial Property (Paris Convention), the general principles of the Paris Convention, such as the national treatment and the right of priority, are also applicable on utility models. Further, if an international patent application under the Patent Cooperation Treaty (PCT) is filed, utility models are one type of protection available at the national level in designated countries that have a utility model system.
Currently, a number of countries and regional patent offices provide utility model protection. These include: Albania, Antigua and Barbuda, Argentina, Armenia, Australia, Austria, Belarus, Belize, Botswana, Brazil, Bulgaria, Chile, China, Costa Rica, Croatia, Czech Republic, Denmark, Dominica, Dominican Republic, Egypt, El Salvador, Estonia, Ethiopia, Finland, France, Georgia, Germany, Ghana, Greece, Guatemala, Honduras, Hungary, Indonesia, Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lao People’s Democratic Republic, Malaysia, Mexico, Mongolia, Mozambique, Oman, Namibia, Nicaragua, Panama, Paraguay, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Serbia, Slovakia, Slovenia, Spain, Swaziland, Tanzania, Thailand, Tonga, Trinidad and Tobago, Turkey, Uganda, Ukraine, United Arab Emirates, Uruguay, Uzbekistan, Viet Nam, ARIPO, OAPI and Andean Community.
National and regional laws on utility models can be found at WIPO Lex.
Similar to patent protection, if more than one application claim utility model protection on the same invention, the applicant who first filed the utility model application shall be entitled to registration, according to the first-to-file principle. If a utility model or patent application describing the same invention has been filed before the filing date (or the priority date), or if the invention has been already disclosed to the public, an application for a utility model will be rejected or utility model registration will be invalidated. Therefore, the invention should be kept confidential before filing a utility model application. Some countries, however, allow for a grace period, usually between 6 to 12 months, which provides a safeguard for applicants who disclosed their inventions before filing a utility model application. Further, the novelty criteria may be interpreted differently depending on the applicable law, in particular applying universal or local novelty.
In order to obtain utility model protection, an application must be filed with a competent national/regional authority of the country in which utility model protection is sought. The contents of a utility model application are similar to a patent application, consisting of a request, claims, a description, drawings and an abstract. In many countries, patent offices check the compliance with the formality requirements, and register utility models without conducting substantive examination. The validity of registered utility models can be challenged by third parties before a court or, in some countries, before an administrative authority. In order to maintain the registration, right holders must pay a maintenance fee.
For further information about national/regional utility model systems, a list of URLs and a directory of national and regional intellectual property offices are available. In addition, WIPO Lex provides easy access to intellectual property legislation from a wide range of countries and regions in order to familiarize with the different requirements.
In general, it is not possible to obtain both a patent and a utility model for the same invention. If a patent application and a utility model application for the same invention are filed by the same applicant, in most countries, either the earlier application prevails, or the applicant can choose between a patent and a utility model. Further, depending on national or regional laws, a patent application may be converted into a utility model application or vice versa at any time during the pendency of the application. In some countries, applicants may file a patent application and a utility model application containing the same invention, and protect the invention first with a utility model, which may be granted quickly, while a patent application has been still under the substantive examination. Once a patent is granted, the utility model may be abandoned.
Official fees for obtaining utility models are generally lower than those for patents. Since there is no substantive examination of utility model applications in most countries, no examination fee is due before registration. Maintenance or renewal fees must be paid in order to maintain the registration of utility models during the term of protection. In addition, fees for a patent attorney or patent agent may be required in case where professional assistance is sought.
In many countries, patent offices provide administrative procedures that allow third parties to request cancellation of the registration of a utility model, for example, on the basis that the claimed invention is not new or does not involve required inventiveness. The request may be subject to a fee and regularly must be filed in writing together with a statement of reasons. A court may invalidate or revoke a utility model upon a successful challenge by a third party.
In some countries, although utility models are registered without examination, substantive examination of the utility model becomes mandatory in case of challenges by third parties or enforcement of rights by a right holder. Procedures for challenging utility models are different from one country to another (for further information, please see the answer to the question below “How can I find the utility model laws of various countries?).
WIPO Lex provides easy access to intellectual property legislation from a wide range of countries and regions as well as to treaties on intellectual property.
Many national or regional patent Offices provide information concerning national or regional legislation on their websites. A list of URLs of national and regional intellectual property offices are available.
The objectives for providing utility model protection are closely related to those for granting patents. Utility models provide incentives for inventors to innovate by offering them recognition for their creativity and the possibility of material reward for their inventions. In return for the exclusive right provided by a utility model, the applicant is required to disclose the invention to the public by providing detailed, accurate and complete written description of the invention in the utility model application. The specific features of the utility model system, i.e., a shorter period of protection and easier and cheaper procedures to obtain and maintain protection, are often considered favorable for supporting local or minor innovations by small companies.
Even if utility model protection is cheaper than patent protection, it does not mean that utility model protection is more favorable alternative to patent protection in all cases. The specific features of the utility model system and the patent system in a given country should be carefully examined, case by case, in order to determine the favorable way of protecting an invention.
From the viewpoint of an inventor seeking protection of his invention, in general, it may be easier to obtain utility model protection than patent protection, since:
On the other hand, the lack of substantive examination means that there is less legal security with respect to the validity of the registered utility models, which might be successfully challenged and revoked later. Consequently, third parties may be skeptical about the value of utility models, and be more cautious in concluding a licensing or funding agreement.
Since one of the common features of utility models is that the term of protection is shorter than for patents, if a product embodying the invention has a long life cycle and the invention is expected to be relevant in the market for a long period, utility model protection may not be a favorable option. On the other hand, if an invention is expected to be outdated in the market quickly, utility model protection, which may be obtained quickly with lower costs, may be considered.
In some countries, utility model protection can only be obtained for certain fields of technology and only for product inventions. For example, in some countries, technical, chemical and biological processes are not eligible for utility model protection. In those countries, there is no choice but seeking patent protection if the invention falls under such non-eligible subject matter.
In many cases, however, utility model protection and patent protection are not necessarily alternatives, but utility model protection might be used as a complement to patent protection, since a utility model may be quickly obtained while waiting for the grant of a patent. Further, it is possible to convert a utility model application (or a utility model) to a patent application (or a patent), and vice versa, in some countries. Those flexibilities might be also utilized in support of business strategies.
The “innovation patent”, recently launched in Australia, was introduced as a result of extensive research into the needs of small and medium-sized enterprises, with the aim of providing a “low-cost entry point into the intellectual property system” (see link in IP Australia). In order to mitigate negative effects of unsecured rights, some countries take measures, such as requiring substantive examination prior to enforcing utility models against third parties or issuing evaluation certificates on utility models.