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.
In this article, we discuss some of the benefits of utility models, how they differ from patents, and how they can be a more cost-effective way to protect your intellectual property.
If you are exploring utility models as a way to protect your invention, we can help. Our intellectual property solicitors work with a trusted network of partners worldwide to guide you through the application process. We’ll also advise on how utility models can fit into a wider protection strategy for your business.
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What is a utility model?
A utility model is similar to a patent, and it is often referred to as a petty patent. It is an exclusive right granted 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 but 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 quicker alternative to patent protection.
You can read more about what’s involved in applying for patent in our patent application guide if you are comparing your options.
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: Australia had so-called 'innovation patents', but they were abolished in 2021. Nor is there an EU system, although it has been discussed in the past. It is available in many key markets which are important to UK SMEs, including:
- China
- Japan
- Parts of Europe, including Ireland, France, Germany, Greece, Italy and Spain
- Several countries in South America and many in Africa.
The utility model is also of special interest in emerging markets, such as Indonesia, Brazil and Russia. They can be used not just as a form of protection, but as a weapon with which to attack others’ IP rights. Filing an application for a utility model, anywhere in the world, means your invention forms part of the state of the art and could enable you to knock out a competitor’s later-granted patent that might interfere with your business.
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 inventiveness criterion, but nonetheless warrants protection.
The application process for a utility model is much quicker than for a patent, and 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.
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.
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.
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, whereas patent protection lasts for 20 years in most countries. Once this term has expired, neither a patent nor a utility model can be extended further.
Can I apply for both a utility model and a patent?
Obtaining both patent and utility model protection for 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.
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.
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.
Summary
Utility models don’t do as good a job of protecting inventions as patents do, but they cost a great deal less and can be obtained much more speedily. In a well-managed intellectual property portfolio, they can fill gaps that arise because patents take a long time to reach grant, and give protection in countries where the cost of an ordinary patent is not justified.
