FAQs: utility models

Last updated: 16 September 2021

Estimated reading time: 16 minutes

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Utility models, often called petty patents, can be an efficient way to secure intellectual property (IP) protection for inventions in more than 75 countries and regional patent offices outside the UK.  

While the protection provided isn’t as robust as patents, they’re quicker, easier and cheaper to apply for.  

Here, we answer common questions about utility model protection and how it interacts with other forms of IP protection in the UK. 

Jump to individual utility models FAQs:

  1. General
    1. What is a utility model?
    2. What are the advantages of using a utility model to protect your IP?
    3. What are the disadvantages of using a utility model to protect your IP?
    4. In which areas can you get a utility model?
    5. What are your options in countries where utility model protection isn’t available?
    6. What is a PCT application?
    7. Can a utility model be bought and sold, or transferred and assigned?
    8. What remedies and protection does a utility model afford against infringers?
    9. Can utility models be revoked?
    10. Can utility model grants and applications be opposed?
  2. Applying and granting 
    1. What are the criteria for granting a utility model?
    2. How much does it cost to obtain utility model protection?
    3. What’s the process of applying for a utility model?
    4. How long does it take to apply for a utility model and for it to be granted?
  3. Duration and renewal 
    1. How long does a utility model last for?
    2. What’s the renewal process for utility models?
  4. Utility models and patents 
    1. What’s the difference between a utility model and a patent?
    2. How do you decide whether a utility model or a patent is the best option for you?
    3. Can you apply for a patent and a utility model for the same invention?
    4. Can you convert your protection between a patent and a utility model and vice versa?

General

What is a utility model?

A utility model is a type of IP protection that protects ‘novel’ (i.e. new) technical inventions by providing a limited, exclusive right to stop others commercially exploiting the invention without the rights holders’ consent, in a specific geographical area.  

The types of inventions afforded protection varies significantly between countries.  

In most countries, utility models cover technical inventions that are novel, industrially applicable and cover three-dimensional objects with a definite shape and form, such as a tool, an instrument, a device and an apparatus.  

Some countries require that inventions are related to products, such as devices or apparatus, so exclude processes and chemical substances. However, others allow utility models on processes, chemical compounds, pharmaceuticals and software. 

Many countries also exclude certain subject matter from utility model protection. For example, plants and animals are generally excluded from utility model protection. 

To ascertain whether your invention is eligible for utility model protection, you need to consult local law in the country where you seek protection. Our utility model solicitors can help with this.  

What are the advantages of using a utility model to protect your IP?

Utility models are often considered a more affordable and less stringent alternative to obtaining a patent.  

It’s much cheaper to obtain a utility model than obtain and maintain a patent, which makes utility models particularly useful for SMEs since they are lower cost and more accessible. 

Utility models are also granted more quickly than patents. It can take around 36 months to obtain a patent, however, a utility model is usually granted in 3 to 6 months. This is because, although an invention must still be novel to be protected by a utility model, it does not require a substantive examination. 

A utility model is a great way to protect minor inventions and inventions which have a short commercial life. For example, if you plan to create an invention, you may develop multiple variations that require protection, or you may wish to protect inventive steps in the early stages. You may also seek to protect small inventive steps in a bigger overall invention, or inventions which offer comparatively small advances over existing technology. Obtaining a patent is inconvenient, costly, and inappropriate for such inventions. However, a utility model would provide protection promptly, at a much lower cost. 

Since utility models are granted quickly, you may decide to protect your invention using a utility model while your patent application is pending. This ensures that you have a remedy against any third party that infringes your IP before it’s protected by a patent.  

What are the disadvantages of using a utility model to protect your IP?

One of the main disadvantages of using a utility model is that the period of protection is much shorter. While a patent can provide around 20 years protection (if renewed), a utility model provides between 6 to 15 years’ protection. 

Another disadvantage is that utility models are not offered in England and Wales or in the US. This means you will need to obtain alternative protection (like a patent) to protect your invention in these countries. 

In which areas can you get a utility model?

You can currently apply for a utility model in 75 countries and regional patent offices, including: 

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.  

What are your options in countries where utility model protection isn’t available?

Where utility models aren’t available, there are several alternative options to obtain protection.  

The first option is to apply for a patent, which will allow you to protect any novel invention.  

Some countries allow you to apply for a patent and a utility model simultaneously through a PCT application. This means a single application can secure utility model protection in countries that offer it, and patent protection in those that don’t. For more details on PCT applications, please see below. 

Where a country does not allow you to make a simultaneous application through a PCT application, you will need to apply for a patent separately with the patent office in that country. In these circumstances, it’s important to apply for the patent as soon as possible after your utility model application to prevent your patent application being denied on grounds of your invention being public and not being novel. 

Patents can be expensive. As such, it may be more appropriate and affordable to apply for registered design rights or trade marks instead. However, it is important to note these forms of protection are different in nature to patents.  

Registered design rights apply to creations which have a distinctive shape and configuration (such as a distinctive arrangement of different parts). This is different to patents since registered designs will not protect the function of the creation or any processes. For this reason, you may decide that a registered design is not adequate protection for your IP.  

Similarly, a trade mark protects names which identify a product or organisation. The name may include words, slogans, symbols, or numbers. Again, if your creation is a physical invention this may not be appropriate. 

You may consider keeping your invention a trade secret. Trade secrets are IP rights associated with confidential information, which may be sold or licensed. 

Information must fulfil certain criteria in order to be eligible to be treated as a trade secret. The information must be commercially valuable, known only to a limited group of people, and reasonable steps must have been taken by the rights’ holder to keep the information secret (such as entering into confidentiality agreements with employees). 

Local law will dictate the level of protection afforded to trade secrets, but generally they are covered by aspects of the law that protect against unfair competition and breach of confidentiality. However, a trade secret owner cannot stop others using the same information if it was acquired or developed independently. Another way in which they are different to patents is that, since they are not public, they cannot be used defensively to provide evidence of the prior existence of your invention.  

For more detail about types of IP protection, read our Intellectual Property FAQs, Trade Marks FAQs, Copyright FAQs, and Patents FAQs

What is a PCT application?

A Patent Cooperation Treaty (PCT) application is a single patent application which allows you to gain patent protection in over 150 countries which are party to the PCT. 

To file an international patent application, you need to send your application to your national patent office (although your local laws may allow you to send a direct application to WIPO instead).  

An international search report and written opinion will be produced before your application is published. After this, the application will enter the national phase in each country in which you seek protection. Each respective national patent office will decide whether to grant you protection in that country. 

Some countries offering utility models allow you to apply for a utility model through a PCT application. This means you can apply for a utility model in multiple countries (which offer the right). Additionally, it’s also possible to file utility model applications in multiple countries through a European patent application under the European Patent Convention (EPC). 

If you are considering protection by patent or utility model in multiple countries, our utility model solicitors can advise on the best plan for your IP strategy to achieve your objectives. 

Can a utility model be bought and sold, or transferred and assigned?

Yes, it is possible to sell, transfer and assign utility models in countries which offer the protection. The applicable process will be governed by the local law in which the utility model is granted. 

For example, in Austria, a utility model can be transferred wholly or in proportionate shares. The transfer will be made by a normal sale of IP agreement (or by an assignment agreement) which will state the right being transferred, the amount paid for the right and warranties and indemnities to protect the parties. 

Similarly, it is also possible to licence your utility model. Again, a licence agreement will be required which states the extent of rights being granted, the fees payable, the regularity of payment, obligations on each party (such as giving the other notice upon discovery of infringement of the utility model by a third party) and warranties and indemnities. 

If you are thinking of buying, selling, transferring, assigning, and licensing a utility model, our specialist IP solicitors can advise on the process and handle all your legal documentation and agreements. 

What remedies and protection does a utility model afford against infringers?

Utility model protection is considered weaker IP protection than a patent.  

Although your invention will have protection effective from the date of registration, to take legal action against a party that has infringed your utility model, you will need to upgrade your protection by undergoing a substantive examination. 

In the substantive examination, a search report will be produced by the examiner to determine whether your utility model is validly registered. If prior art is discovered, you will fail to ‘upgrade’ your right and subsequently enforce the protection. This means your action against the infringer will fail and you may even be liable for damages incurred by the infringer. 

However, if your utility model is considered validly registered, the court will order the infringer to cease their infringing activity. You will also be able to recover damages for loss suffered as a result of the infringement. 

Our utility model dispute solicitors can help you in the case of infringement. 

Can utility models be revoked?

Yes, utility models can be revoked if they are considered invalid after registration. There are usually two ways a utility model will be considered invalid. 

Firstly, if you rely on your utility model against an infringer but fail to prove that the utility model is validly registered, it will be revoked. 

Secondly, if you register your utility model, anyone can challenge the validity of the utility model by demanding a trial for invalidation. In this trial, a substantive search will be done to identify whether the invention is novel. If the invention is novel and no prior art is discovered, your utility model will be considered validly registered. However, failing to prove that the utility model was validly registered will lead to the right being revoked. 

Can utility model grants and applications be opposed?

Yes, once the utility model has been published, your application for a utility model may be opposed. In most countries offering utility models, if an application remains unopposed for two months after publication, the right is granted. 

A utility model grant can be opposed by initiating a trial for invalidation (or an equivalent action in that country). A substantive search will be required. If prior art is discovered, the utility model will be revoked on grounds of not being novel (and validly registered). 

Applying and granting 

What are the criteria for granting a utility model?

Generally, a utility model will be granted if the invention is: 

  • Eligible as a subject matter 
  • Novel 
  • Involves a non-obvious inventive step 
  • Has industrial applicability (utility) 
  • Described in an application in a sufficient and complete manner 

However, these criteria are not applied strictly. For example, no substantive search will be undertaken to ensure the invention is novel. Instead, this will be considered in more detail when you seek to enforce your (registered) utility model against an infringer or when you defend the utility model in a trial of invalidation. 

How much does it cost to obtain utility model protection?

Obtaining a utility model is significantly cheaper than obtaining a patent. Generally, there is a small fee for the application and an additional fee for registration. 

As a rough indicator, an application and registration costs around: 

  • 100 euros in Spain (£86) 
  • 14,000 yen in Japan (£92) 
  • 90 euros in Ireland (£77) 

There is usually an additional fee payable over the period of protection as a maintenance fee. For example, in Germany, there is a first, second and third maintenance fee which is payable after three, six, and eight years after registration. 

These fees are much lower than for a patent, as patent fees will apply at various stages of the process. After four years, you will need to pay renewal fees. The renewal fees increase each year and are between £70 and £610 depending how long it has been since the initial filing. 

What’s the process of applying for a utility model?

For countries offering utility models, the application process is similar to the process for patents. Although the process varies from country to country, applying for a utility model usually includes: 

  • The petition 
  • A description/explanation of the invention  
  • One (or more) claims which defines the subject of the invention (for example, technically explains the function so others don’t replicate and infringe) 
  • Drawings 
  • An abstract (although not mandatory) 
  • Application fee 

The utility model will be registered and published without examination. However, some countries may allow you to request an examination in your application. 

How long does it take to apply for a utility model and for it to be granted?

On average, it takes 3 to 6 months to be granted a utility model although it can be quicker; this is the reason utility models are popular.  

Duration and renewal 

How long does a utility model last for?

A utility model usually lasts between 6 to 15 years, depending on local law in the granting country.  

This is because a utility model is intended to afford short-term protection for inventions which are limited in commercial life, and which only offer small advances when compared to existing technology/inventions. 

What’s the renewal process for utility models?

It’s not possible to renew utility models. Once granted, the protection will last for a fixed period, according to applicable local law. After this, the protection will end and anyone can use, manufacture, and sell your invention. 

Utility models and patents 

What’s the difference between a utility model and a patent?

Both patents and utility models protect novel creations, and grant the rights holder the exclusive right to use, manufacture, and sell that invention. In other words, if someone infringes your utility model by copying or manufacturing your invention to sell, you can take legal action. 

The main differences between utility models and patents are set out in the below table: 

Difference Utility model Patent 
Requirement Must show ‘progress’ to be considered inventive/novel Must show ‘notable progress’ to be considered inventive/novel 
Application process Right will be registered and granted without a substantive examination of whether invention is novel Right is only granted after a substantive examination of whether the invention is novel 
Time taken to obtain right 3 to 6 months Can take up to 36 months (but may be shorter or longer) 
Duration Lasts for 6 to 15 years, depending on local law in the granting country Lasts for 5 years in England and Wales but can be renewed  
Renewability Cannot be renewed Can be renewed for up to 20 years after initial grant 

How do you decide whether a utility model or a patent is the best option for you?

When deciding whether a utility model or patent is more appropriate, consider the nature of your invention.  

If it’s a small invention which may not retain novelty for a long period due to competitors catching up with their own technological advancements, you may decide short-term protection is more appropriate (for example, a utility model). Similarly, if you have a limited budget and would prefer affordable protection, utility models are cheaper to obtain than a patent. 

However, if your invention is of high value to your business and can bring you significant profits by being exploited exclusively by you, then patent protection is longer-lasting and stronger.  

While a utility model affords protection, you can only enforce the right against an infringer after a substantive examination. However, a patent allows you take immediate legal action against a third party. The certainty of this right means that you may have greater bargaining power in settlement negotiations outside of court which can allow you to reach an agreement to licence your right to the infringer or simply allow you to recover damages for the infringement without the legal cost of litigation. 

Similarly, if your invention is such that long-term protection is necessary, it is important to obtain a patent because a utility model is only granted for between 6 to 15 years and cannot be renewed. 

If you are unsure about the best protection options for your IP portfolio, we suggest you consult our IP protection strategy solicitors for advice. 

Can you apply for a patent and a utility model for the same invention?

Yes, in some countries. Although a utility model is considered an alternative to a patent, some countries do allow a utility model to co-exist with a patent for the same invention, such as in Denmark. However, other countries, like Japan, will not allow you to apply for both a utility model and patent. If you make an application for a utility model and patent, only one will be granted (the one filed earlier). 

Can you convert your protection between a patent and a utility model and vice versa?

Yes, in countries which offer utility models, it’s common to be able to convert a utility model into a patent.  

The conversion is usually done by undergoing search and substantive examination (required by the patent application procedure). For example, in Japan, you can convert to a patent within three years of the filing date of the utility model. The filing date for the converted patent will be deemed to be the same filing date as the original utility model. This may be desirable where the invention becomes a big commercial success, and you need more secure IP protection (in the form of a patent). 

It is also possible to convert a patent application into a utility model. However, this is usually only possible for a limited period after the patent application or grant (depending on the country). 

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