As the owner of a start-up business, you may have a new piece of technology or an invention which you’d like to protect internationally but lack the funds for an international patent.
What is a utility model?
A utility model is similar to a patent. It is an exclusive right granted in relation to a technical invention which permits the right holder to prevent or stop others from commercially exploiting that invention without their permission, for a limited period.
This means the invention cannot be commercially made, used, sold, distributed, or imported by a third party without the owner’s permission.
Utility models are typically used to protect inventions which improve or adapt existing products, or that have a short commercial life.
The right is territorial, meaning it can only be enforced within the country in which the utility model is granted.
Is utility model protection as popular as patent protection?
Intellectual property professionals are often dismissive of utility model protection; however, there are several benefits to pursuing utility model protection which can be particularly useful for SMEs, as opposed to patent protection.
Seeking protection through a utility model application is often a more cost-effective and time-efficient alternative to patent protection.
What’s the difference between a utility model and patent?
Utility model protection is not available worldwide and most notably it is not available in the UK, US or Canada. However, it is available in many key markets which are important to UK SMEs, including:
- Parts of Europe, including France, Germany, Greece, Italy and Spain
- Several countries in South America
The utility model is also of special interest in emerging markets, such as Indonesia, Brazil and Russia but in other markets they can be used not just as a protective means, but as an offensive legal device.
Scrutiny and timescales
The conditions that need to be fulfilled to obtain utility model protection are less rigorous than those for patent protection.
For an invention to qualify for patent protection, it must be ‘new’, involve an ‘inventive step’, be capable of industrial application and not specifically excluded from protection.
To obtain utility model protection, whilst the technology or invention must still be ‘novel’, the requirement that there be an ‘inventive step’ may not apply. As such, utility model protection is often sought where an innovation may not meet the patentability criteria, but nonetheless warrants protection.
The application process for utility model protection is much quicker than the process for patent protection and so protection is obtained more rapidly – on average, the utility model process takes around 6 months. This is because most patent offices do not examine applications as to substance prior to registration.
The costs associated with obtaining and maintaining utility models are often lower than those associated with obtaining patent protection. Patents are notoriously expensive to obtain and maintain. For example, the utility model approach is particularly popular in China where the cost to file a utility model application is relatively low compared to the cost of obtaining patent protection. In China, official fees to file a utility model application start at 500 RMB, compared to 950 RMB for a patent (around £56 and £106 respectively based on the current currency conversion rate).
Are utility models as strong as patents?
The right granted by a utility model tends to be of shorter duration than a patent and since applications are not examined, they are more susceptible to challenge than examined patents.
However, potential drawbacks can be managed – for example, by careful prior art searching before filing an application (as is the case with patent applications).
As such, with the right preparation and a ‘technical opinion’ from the relevant national patent office, a utility model can be just as strong as a patent.
As mentioned above, a key point to note is that the term of protection for utility models is shorter than for patents. The relevant term varies depending on the country in which protection is being sought, but typically protection is available for between 6 and 15 years (without the option to extend or renew), whereas patent protection lasts for 20 years in most countries.
Can I apply for both a utility model and a patent?
Typically, obtaining both patent and utility model protection in respect of the same invention is not possible. In most countries, if patent and utility model applications are filed in respect of the same invention by the same applicant, either the earlier application prevails, or the applicant may choose between the two forms of protection.
However, in some countries, utility model applicants may file both a utility model and patent application to quickly obtain utility model protection to protect their technology in a cost-effective way whilst the patent is ‘pending’.
Once the patent is granted, the utility model can either be abandoned or the claims amended to better complement the claims of the patent.
By way of an example, this ‘double action’ is popular in Germany; companies may even tailor a utility model to describe an allegedly infringing device and then use this as the basis of an infringement action whilst a patent is pending. Reference to the patent is then added later, once it has been granted.
However, relying solely on patents in some markets may leave your business vulnerable. For example, Dyson now use utility models in several territories, including China, for quick protection to prevent copying before they launch a new product. This is a result of seeing their market inundated with replica products prior to their related patents being granted.