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 very similar to a patent. It is an exclusive right granted in relation to an invention which permits the right holder to stop others from commercially exploiting that invention without their permission, for a set period of time.
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 as opposed to patent protection which can be particularly useful for SMEs. 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 in order to obtain utility model protection are less rigorous than those that need to be met to obtain patent 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 – 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. 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 an application start at 500 RMB (around £55 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 7 and 10 years (without the option to extend or renew).
Can I apply for both a utility model and a patent?
A utility model can protect your technology in a cost-effective way whilst a 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.