Utility models, often called petty patents, can be an efficient way of gaining intellectual property protection for inventions in more than 50 countries outside the UK. While the protection they provide isn’t as robust as patents, they’re quicker, easier and cheaper to apply for. Here we answer common questions about little-known utility model protection and how it interacts with other forms of IP protection in the UK.
Jump to individual utility models FAQs:
What is a utility model?
A utility model is a type of protection for intellectual property. Considered a more affordable and less stringent alternative to obtaining a patent, a utility model provides a monopoly right for an invention in a specific geographical area. The similarities between patents and utility models arise from the fact that both protect creations which are ‘novel’, and they both grant the right holder exclusive rights 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 types of inventions which you can obtain protection for vary significantly from country to country. Whereas some countries require that the inventions are related to products, such as devices or apparatus and therefore exclude processes and chemical substances, other countries do allow utility models on processes, chemical compounds, pharmaceuticals and software.
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. Many countries also exclude certain subject matter from utility model protection. For example, plants and animals are generally excluded from utility model protection.
To work out whether or not your invention is eligible for utility model protection you need to consult the laws of the country where you are seeking protection. Our utility model solicitors can help you with this.
What are the advantages of using a utility model to protect your intellectual property?
An advantage of protecting your intellectual property using a utility model is that it’s much cheaper than obtaining and maintaining a patent. This makes utility models particularly useful for SMEs since they are lower cost and more accessible.
Utility models are also granted more quickly than patents. Where a patent can take around 36 months, a utility model can be granted in around three to six months. This is because a utility model does not require a substantive examination. However, the invention must still be novel to be protected by a utility model.
A utility model is a great way to protect minor inventions. For example, if you plan to create an invention, you may develop multiple variations which require protection or you may wish to protect different inventive steps in the early stages. Obtaining a patent is inconvenient, costly, and inappropriate for such inventions. However, a utility model would provide the same protection very quickly and for a much lower cost.
Since utility models are granted quickly, you may decide to protect your invention using a utility model whilst your patent application is pending. This ensures that you have a remedy against any party that infringes your intellectual property, before it’s protected by a patent.
What are the disadvantages of using a utility model to protect your intellectual property?
One of the main disadvantages of using a utility model is that the period of protection is much shorter. Whilst a patent can provide around 20 years protection (if renewed), a utility model provides around seven to 10 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 that country.
In which countries, regions or statutes can you get a utility model?
You can apply for a utility model in over 50 countries including Australia, Brazil, China, Germany, Japan, Russia, Egypt, Ethiopia, Kuwait, Malaysia, Ireland, Spain, Finland, Austria and many more.
If national legislation does not provide protection for utility models, you can always choose to apply for a patent or keep the invention a trade secret instead.
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 or not to grant you protection in the 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.
What are your IP protection options for countries where utility models aren’t available?
Where utility models are not available, there are a number of alternative options to obtain protection. The first option is to apply for a patent. This allows you to protect any invention which is novel. Some countries allow you to apply for a patent and utility model simultaneously through a PCT application. This means that a single application can result in you being granted a utility model in countries offering that protection and a patent in countries that do not offer a utility model.
Where a country does not allow you to make a utility model and patent application simultaneously through a PCT application, you will need to apply for a patent separately with the patent office in that country. In such circumstances, you will need 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. You may therefore find it more appropriate and affordable to apply for registered design rights or trade marks instead. However, it is important to note that 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 trademark protects names which identifies a product or organisation. The name may include words, slogan, symbols or numbers. Again, if your creation is a physical invention this may not be appropriate.
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 process for such actions 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 intellectual property 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 intellectual property 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 intellectual property protection than a patent. We have utility model dispute solicitors who can help you in the case of infringement. Although your invention will have protection which is 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 or not 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.
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 or not 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, people can oppose your application for a utility model. 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 is the criteria for granting a utility model?
Generally, a utility model will be granted if the invention is:
- Eligible as a subject matter
- 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 indication of this cost, an application and registration costs around:
- 100 euros in Spain (£89)
- 14,000 yen in Japan (£95) and
- 90 euros in Ireland (£80)
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 of the utility model.
These fees are much lower than a patent, which can cost £230 for the application. After five years, you will need to pay a patent renewal fee of £70, which increases by £20 each year (meaning the 20th patent renewal costs £600).
What’s the process of applying for a utility model?
For countries offering utility models, the process of applying is similar to the process for patent applications. Although the process varies from country to country, applying for a utility model usually includes:
- The petition
- A description of the invention which is an 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)
- An abstract (although not mandatory for utility models)
- Application fee
The utility model will be registered and published without examination. However, some countries offering utility models 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 three to six months to be granted a utility model although it can be granted quicker. It is for this reason that utility models are popular. By registering a utility model you can protect inventions which have a short commercial life and protect creations which are inventive steps in a big invention or protect inventions which offer comparatively small advances over existing technology.
Duration and renewal
How long does a utility model last for?
A utility model usually last for around seven to 10 years depending on the law of the country in which the right is granted. As mentioned earlier, 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 is not possible to renew utility models. Once granted, the protection will last for a fixed period of seven to 10 years according to the 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?
The main differences between utility models and patents are set out in the below table:
|Requirement||Must show ‘progress’ in order 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||The lack of substantive examination means you can be granted a utility model within three to six months||Can take up to 36 months (but can be shorter or longer)|
|Duration||Lasts for seven to 10 years, depending on national law in which the right is granted||Lasts for five years in England and Wales but can be renewed up to 20 years|
|Renewability||Cannot be renewed||Can be renewed up to 20 years after initial grant|
How do you decide whether a utility model or a patent is the best option for you?
If you have created an invention which you would like to protect and prevent others from using, manufacturing, and/or selling, obtaining some form of intellectual property protection is ideal. If you are unsure about the best protection options for your IP portfolio, we suggest that you consult our intellectual property protection strategy solicitors for advice.
When deciding whether a utility model or patent is more appropriate, you should 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, then 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. Whilst 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 up to seven to 10 years, and cannot be renewed beyond this.
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 for a utility model to co-exist with a patent for the same invention. One example where you can have both a utility model and a patent for the same invention is 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).