April 1, 2013

Utility Models: Fast and Less Expensive Alternative to Patents

Ena Pugatsch, Partner, Co-Head of Technology, Mechanics & Designs Practice
Ena Pugatsch

Partner, Co-Head of Technology, Mechanics & Designs Practice

Reinhold Cohn & Partners
Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

Utility model is a form of IP rights available in many countries, providing patent-like protection, for certain types of inventions. The registration process of utility model is usually more rapid and less expensive than that of patents. Although the term of protection is shorter, typically 10 years, it is often a worthy alternative to patents, particularly for those inventions that have a short life cycle. At times, both patent and utility model can be combined to achieve optimal protection.

Patents are the widely accepted instrument for protection of inventions and are used effectively by many for securing exclusivity. As is known, a patent application undergoes a rigorous examination process, wherein questions of novelty, inventive step, and others, are thoroughly examined; and a patent is granted only if the application prevails through this rigorous test. Given the complexity of examination as well as the backlogs at patent offices, it usually takes several years before a patent issues and the process is also expensive.

Utility models are a form of protection available in many countries and can serve as an alternative or addendum to regular patent protection. In form and appearance an application for a utility model looks like a patent application in that it includes a patent specification and claims. Utility models afford patent-like protection but unlike a full-fledged patent, in most countries in which they exist, they are granted with only a formal examination (namely questions of susceptibility to protection and scope of claims are not examined). 

Consequently, in most countries the process for registering utility models is rapid and far less expensive than that for patents. The caveat is that utility models are granted for a more limited time period, typically for 10 years. However, the big advantage with utility models is that one can obtain enforceable patent-like rights within a time period after filing a utility model application, which is much shorter than that for a patent application. Furthermore, because utility models normally have lower patentability requirements than patents, they may often afford broader protection than that afforded by a patent.

Utility models can normally not be granted on any type of invention, and processes, substances and often also software products and systems are excluded from the scope of inventions that may form the subject of a utility model.

Given the rapidity with which utility model protection can be obtained, on the one hand, and the more limited life time of this form of protection, on the other hand, this form of protection is particularly suitable for inventions with a rapid onset and relatively short life cycle, e.g. consumer products and software-related inventions (the latter, where available).

Utility model protection is available in many countries, including China, Korea, Japan, Germany, Australia, Russia, and others. While under litigation, utility models can be attacked on the ground of lack of novelty or inventive step, their patentability criteria are less stringent than those for patents. Therefore, it is often difficult to attack validity of a utility model in court.

Utility models are particularly popular in China and more utility models are filed there than in the rest of the world combined. Utility models in China are also more widely applied for by Chinese than patents1. In China and in some other countries as well, it is possible at times to use utility models and patents in parallel to benefit from rapid protection afforded by a utility model, on the one hand, and long term protection afforded by a regular patent, on the other hand.

For its advantages, and as part of a global protection strategy, utility model protection should be considered by innovators interested to rapidly secure their exclusivity.

1 Utility model and patent are formally termed in China as “patent for utility model” and “patent for invention”, respectively.

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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