PCT Newsletter 05/2018: Practical Advice

WARNING: Although the information which follows was correct at the time of publication, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

How to find out which designated Offices offer utility model protection and how to request such protection in respect of an international application

Q:  I am about to file an international application and am interested in obtaining utility model protection.  How do I find out which designated States offer such protection, and how do I request that my application be treated as a utility model application in respect of those States? 

A:  It is recalled that information about the advantages and disadvantages of utility model protection was published in last month’s “Practical Advice” (in PCT Newsletter No. 04/2018).  Utility model protection is available in 851 PCT Contracting States, either as national utility models issued by certain national Offices, or as utility models issued by the African regional Offices of the African Regional Intellectual Property Organization (ARIPO) or the African Intellectual Property Organization (OAPI).  Although some Offices will only offer utility model protection as an alternative to patents, a number of Offices allow the applicant to request utility model protection in addition to patent protection.  This may be useful if you wish to obtain utility model protection while waiting for the grant of a patent.  For information on the PCT Contracting States in which you may obtain utility model protection, please consult “Types of Protection Available via the PCT in PCT Contracting States” at:

http://www.wipo.int/pct/en/texts/pdf/typesprotection.pdf

As far as requesting utility model protection is concerned, it is recalled that the filing of the PCT request form (Form PCT/RO/101) constitutes, under PCT Rule 4.9(a), the designation of all Contracting States bound by the PCT on the international filing date, for the grant of every kind of protection (and, where applicable, for the grant of both regional and national patents).  This means that, if you wish to request utility model protection (or other available alternative protection2 instead of (or, if applicable, in addition to) a patent, you do not need to take any action during the international phase.  In fact, there is no provision for requesting a certain kind of protection during the international phase (although it is possible to withdraw a certain type of protection in respect of the designation of a particular State).  Please be aware that this must not be confused with the situation where you wish an application to be treated for a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition (PCT Rule 4.11(a)(i)) or a continuation or a continuation‑in‑part of an earlier application (PCT Rule 4.11(a)(ii)), in which case certain indications may be required in the request form.

If you wish the international application to be treated, in a designated (or elected) State in respect of which PCT Article 433 applies, as an application for the grant of a utility model, and not as an application for the grant of a patent, or if you wish it to be treated as an application for more than one type of protection (to the extent that this is possible) in accordance with PCT Article 44, you should normally indicate your choice of protection to that Office when performing the acts necessary under PCT Article 22 (or 39) for entering the national (or regional) phase (see PCT Rule 49bis.1(a)).  However, the time when you must do this may vary, depending on the applicable national law – some designated (or elected) Offices allow you to indicate your choice(s) of protection at a later time (PCT Rule 49bis.2(b)).  Note that, where more than one type of protection is sought, you may also be required to indicate which type of protection is sought primarily (see PCT Rule 49bis.1(b)). 

If you do not make any express indication that you wish to apply for utility model protection when performing the acts referred to in PCT Article 22, the designated Office will treat the application as an application for a patent.  However, if you do not make such express indication but the national fee paid by the applicant corresponds to the national fee for a utility model, the payment of that fee would be considered to be an indication of your wish that the international application be treated as an application for a utility model and the designated Office would inform you accordingly (PCT Rule 49bis.1(e)).

Note that some Offices may have specific forms for requesting entry into the national phase in respect of an application for a utility model which may be used.  Although it is recommended to use such a form, this is not obligatory as, according to PCT Rule 49.4, no applicant shall be required to use a national form when performing the acts referred to in PCT Article 22.

Even if you request one particular type of protection, a number of Offices will allow you to convert from one type of protection to another at a later date (see PCT Rule 49bis.2(b)) (for instance, from a utility model application (or utility model) to a patent application (or patent), or vice versa).  This may, however, be subject to the payment of a special fee.  Although conversions are normally made by applicants, some Offices may convert an application ex officio, where appropriate.

For further information on any specific requirements of designated Offices in connection with requesting different types of protection, and on converting from one type of protection to another, please refer to the relevant National Chapter of the PCT Applicant's Guide at:

http://www.wipo.int/pct/en/appguide/

  1. This figure only concerns “utility models” specifically, and does not include Offices which grant other similar types of protection.
  2. For the purposes of this “Practical Advice”, the term “utility models” is generally interchangeable with other similar rights, such as “petty patents”, “innovative patents”, “short‑term patents”, “utility innovations” and “innovation patents”.
  3. PCT Article 43 provides for the indication by the applicant that the international application is for the grant of a particular kind of protection, in any State whose law provides for such protection.