Utility model

A utility model is an intellectual property right to protect inventions. This right is available in a number of national statutes, as described below.^[1] It is very similar to the patent, but usually has a shorter term (often 6 to 15 years) and less stringent patentability requirements.

The German and Austrian utility model is called the "Gebrauchsmuster", which influenced some other countries such as Japan. In Indonesia the utility model is called a "Petty Patent".^[2]

Definition

A utility model is a statutory monopoly granted for a limited time in exchange for an inventor providing sufficient teaching of his or her invention to permit a person of ordinary skill in the relevant art to perform the invention. The rights conferred by utility model laws are very similar to those granted by patent laws, but are more suited to what may be considered as "incremental inventions".^[3] Terms such as "petty patent", "innovation patent", "minor patent", and "small patent" may also be considered to fall within the definition of "utility model".^[4]

Requirements for grant

Most countries having utility model laws require that the invention be new. However, many patent or utility model offices do not conduct substantive examination and merely grant the utility model after checking that utility model applications comply with formalities. Some countries exclude particular subject matter from utility model protection. For example, methods, plants and animals are normally barred from utility model protection.

Australia

The law in Australia provides for the grant of a utility model known as an innovation patent. For an innovation patent to be valid the invention claimed must be novel and involve an innovative step. An invention will lack novelty if it has been already been disclosed to the public through prior publication or prior use anywhere in the world. Publication within a "grace period" of 12 months prior to the filing date of an innovation patent with the consent of the applicant is not considered to form part of the prior art for the assessment of novelty. The innovative step requirement is supposedly a lesser requirement than the inventive step required for a standard patent under Australian law. An invention will involve an innovative step if there are differences between the invention and the prior art, that make a substantial contribution to the working of the invention. An innovation patent is granted automatically after a formalities check without substantive examination, however, can only be enforced once it has been certified, which requires a substantive examination. Innovation patents are available to persons outside Australia, but an Australian address for service must be provided. Innovation patent specifications must be prepared by a registered patent attorney unless the application proceeds as a Convention application or as a divisional application. Innovation patent applications cannot proceed as national phase of an international patent application, but can proceed as a divisional application from an international patent application that is open to public inspection.^[5]

Germany

In Germany, a utility model is considered to be new if it does not form part of the state of the art. The state of the art comprises any knowledge made available to the public by means of a written description or by use within Germany before the date relevant for the priority of the application. Description or use within the six months preceding the date relevant for the priority of the application shall not be taken into consideration if it is based on the conception of the applicant or his predecessor in title.^[6]

Italy

In Italy, a utility model (in Italian: 'Modello d'utilità') is considered to be new if it does not form part of the state of the art.^[7] The state of the art comprises any knowledge made available to the public by means of a written or oral disclosure, anywhere in the World, before the filing date of the application or the priority date (if claimed). The utility model must also involve an inventive step, i.e. machines, devices or items which are claimed in the utility models must be more effective and/or easier to use than the ones according to prior art. Utility models cannot claim processes or methods. At the time of filing the application a filing fee is due which also covers the maintenance for years 1 to 4. No claim fee is provided. The Italian Patent and Trademark Office (UIBM) does not perform substantive examination of the application in order to assess novelty and inventive step of what is claimed; the examination is limited to formal requirements only. Publication occurs at 18 months from the filing date or the oldest priority date, if any; at the time of filing the application the applicant may request advance publication, which normally occurs within 90 days. In any case only bibliographic data are published after 1 month from the filing. Grant generally occurs within 2 years. The validity of an Italian utility model is ascertained by the Judge and his/her technical expert, during litigation. At the end of the fourth year from the filing of the application, a maintenance fee for the years 5 to 10 falls due. Foreign companies/residents must indicate an address of service in Italy, that may correspond to the domicile of a lawyer or, as always occurs, a chartered patent attorney.^[8]

Japan

In Japan, a utility model is considered to be new if it has not been made available to the public by means of a written description or by use before the date relevant for the priority of the application (same as for patents). Japanese utility models are not subject to substantive examination, but the owner must request one or more "reports on technical opinion" before instituting infringement proceedings.^[9]

Spain

In Spain, the novelty requirement for obtaining a utility model (Spanish: modelo de utilidad) is "relative", i.e. only public written disclosure of the invention in Spain is prejudicial against the novelty of the invention claimed in the utility model. This is in sharp contrast with Spanish patents for which absolute novelty is required. What constitutes a "disclosure of the invention in Spain" has been the subject of two decisions of the Spanish Supreme Court, in 1996 and 2004.^[10]

Availability and names

Utility model applications may be prepared and filed at local patent offices in countries where utility model protection is available.

The table below is a list of countries having utility model protection under various names as at March 2008.

Country	Type of protection	Maximum term	PCT route available[11]	Conversion from patent application
Albania[12]	utility model	10 years	Yes[13]	Yes
Angola[14]	utility model	no set term	No	No
Argentina[15]	utility model	10 years	No	Yes
ARIPO(†)[16]	utility model	8 years	Yes[17]	Yes
Armenia[18]	utility model	10 years	Yes[19]	Yes
Aruba[20]	small patent	6 years	No[21]	Yes
Australia[22]	innovation patent	8 years	Not unless by division[23]	Yes
Austria[22]	utility model	10 years	Yes	Yes by division
Azerbaijan[24]	utility model	unknown	Yes	Yes
Belarus[25]	utility model	8 years	Yes	unknown
Belize[26]	utility model	7 years	Yes	Yes
Bolivia[15]	utility model	10 years	No	unknown
Botswana[27]	utility model	7 years	Yes	unknown
Brazil[28]	utility model	15 years	Yes	probably
Bulgaria[14]	utility model	10 years	Yes	probably
Chile[20]	utility model	10 years	No	unknown
China[29][30]	utility model patent	10 years	Yes	unknown
Colombia[31]	utility model	10 years	Yes	probably by division
Costa Rica[32]	utility model	12 years	Yes	Yes
Czech Republic[33]	utility model	10 years	Yes	Yes by division
Denmark[34]	utility model	10 years	Yes	Yes by division
Ecuador[35]	utility model	10 years	Yes	Yes by division
Estonia	utility model	10 years	Yes	Yes
Ethiopia[36]	utility model	10 years	No	Yes
Finland[37]	utility model	10 years	Yes	Yes
France[38][39][40]	utility certificate [N/A]	6 years	No	Yes
Georgia[41]	utility model	8 years	Yes	Yes
Germany[42]	utility model	10 years	Yes	Yes
Ghana[43]	utility model	7 years	Yes	Yes
Greece[44]	utility model	7 years	No	Yes
Guatemala[45]	utility model	10 years	No	Yes
Honduras[46]	utility model	15 years	Yes	unknown
Hungary[47]	utility model	10 years	Yes	Yes
Indonesia[48]	Petty Patent/Simple Patent	10 years	Yes	Yes
Ireland[49]	short term patent	10 years	No	Yes
Italy[50]	utility model	10 years	No	Yes
Japan[51]	utility model	10 – 15 years	Yes	Yes
Kazakhstan[52]	utility model	8 years	Yes	Yes
Kenya[53]	utility model	10 years (From date of registration)	Yes	Yes
Korea (south)[54]	utility patent	10 years	Yes	Yes
Kuwait[55]	utility model	7 years	No	unknown
Kyrgyzstan[56]	utility model	unknown	Yes	unknown
Laos[57]	petty patent	7 years	No	unknown
Lesotho[58]	utility model	7 years	Yes	Yes
Macau[29]	utility model	unknown	No	unknown
Malaysia[59]	utility innovation	20 years[60]	Not directly (+)	Yes
Mexico[61]	utility model	10 years	Yes	Yes.[62]
Moldova[63]	utility model	unknown	Yes	probably
Mozambique[64]	utility model	unknown	Yes	probably
Netherlands[65]	short term patent (*)	6 years	No	unknown
Nicaragua[66]	utility model	unknown	Yes	probably
OAPI(‡)[67]	utility model	8 years	Yes	probably not
Panama[68]	utility model	10 years	No	unknown
Peru[69]	utility model patent	5 years	No	Yes
Philippines[70][71]	utility model	7 years	Yes	Yes
Poland[72]	utility model	10 years	Yes	Yes
Portugal[73]	utility model	6-10 years	Yes	Yes
Russia[74]	utility model	10 years[75]	Yes	Yes
Sierra Leone[76]	utility model	unknown	Yes	probably
Slovakia[77]	utility model[78]	10 years	Yes	Yes
Slovenia[79]	short term patent	10 years	Yes	probably
South Africa[80]	functional design	10 years	No	No
Spain[81]	utility model	10 years	Yes	Yes
Taiwan[82]	utility model[82]	10 years[82]	No[82]	Yes[82]
Tajikistan[83]	utility model	9 years	Yes	probably
Tangier International Zone	utility model	10 years	No	unknown
Thailand	petty patent	10 years	unknown	unknown
Tonga[84]	utility model	7 years	No	No
Trinidad and Tobago[85]	utility certificate	10 years	Yes	unknown
Turkey[86]	utility model	10 years	Yes	Yes
Uganda[87]	utility certificate	7 years	No	Yes
Ukraine[88]	utility model	8 years	Yes	Yes
United Arab Emirates[89]	utility model	10 years	Yes	unknown
Uruguay[90]	utility model patent	10 years	No	Yes
Uzbekistan[91]	utility model	8 years	Yes	probably
Venezuela[92]	utility model	10 years	No	Yes
Vietnam[93]	utility model	6 years	Yes	Yes

(†) The members of ARIPO (Lusaka Agreement) are: Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.
(*) The Dutch short-term patent is no longer granted since June 5, 2008.^[94]
(+) A Malaysian Utility Innovation cannot be filed directly from a PCT, but it can be interconverted from a national phase patent application.
(‡) The members of OAPI are: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo.

References

1. WIPO web site, Where can Utility Models be Acquired?
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3. U. Suthersanen, Incremental Inventions in Europe: A Legal and Economic Appraisal of Second Tier Patents, in Journal of Business Law, 2001, 319 ff
4. Kelsey Martin Mott, The Concept of the Small Patent, in The International Business Executive, 5 February 2007, Volume 5, Issue 3 , pp 23 - 24
5. "Patents Act 1990 (Aust)". Retrieved 2013-12-21.
6. Utility Model Law § 3 Abs. 1
7. Italian Patent Law, Decree n. 30 of February 10, 2005
8. Articles 147, 148 e-bis and 201 of the Italian patent Law, literally "Codice della Proprietà Industriale", issued as Law Decree no. 30 of February 10, 2005.
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87. "WIPO Information by Country: Uganda".
88. "WIPO Information by Country: Ukraine".
89. "WIPO Information by Country: United Arab Emirates".
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94. Website NL Octrooicentrum "Vanaf vandaag geen zesjarig nationaal octrooi meer ..."