Effective Ways to Protect Your Intellectual Property

Downs Rachlin Martin PLLC

Downs Rachlin Martin PLLC

Utility Model Protection

Much like invention patents (called “utility patents” in the U.S.), utility models provide exclusive rights that can be enforced to prevent competitors from copying your company’s innovations. However, many countries, including the U.S., do not offer utility model protection, and, because they are less known, they often are not considered for a company’s intellectual property (IP) strategy. This is unfortunate because in a variety of circumstances opting for utility model protection over invention patent protection can bring value to an IP strategy.

The pros: Relative to invention patents, utility models are typically less expensive and much quicker to issue. Also, the standards for patentability of a utility model are more relaxed than the standards for invention patents. As examples of the last point, the inventive step (nonobviousness) threshold that a utility model must meet during pre-registration examination is usually lower than the inventive step threshold for invention patents, and in some cases inventive step is not judged at all prior to registration. In countries that register utility models without analyzing inventive step, registrations can be obtained within several weeks of filing. This is far faster than invention patents, which typically take three or more years to be granted.

The cons: Before you start thinking “with all these benefits, why would anyone NOT choose a utility model over an invention patent,” there are some limitations that need to be considered in determining whether utility model protection is right for your IP strategy. For example, the term of a utility model is shorter than for invention patents. Utility model terms range generally from 6 years to 15 years, as compared to a 20-year term for invention patents. In addition, the range of innovations that can be protected by a utility model is narrower than for an invention patent. Typically, utility models are limited to product configuration and structure – physical aspects of the product. Methods and even products having method-invoking elements typically are not permitted. However, in some countries utility models can be used to protect processes, chemical compounds, pharmaceuticals, and software. Further, most countries allow an innovation to be protected by either a utility model or an invention patent – but not both, although some countries allow an application to be converted from an invention patent application to a utility model application and vice versa.

The takeaway: Balancing the positive and negative aspects of utility models along with the goals and budget of the IP strategy for a particular innovation, it may be that seeking utility model protection in a select set of countries makes sense. For example, utility model protection may be ideal for a product that has a relatively short lifespan and/or can be copied quickly and easily. In addition, utility model protection may also be ideal for a product where the arguments supporting inventive step are not as strong as they need to be for invention patent protection. Utility model protection may also be useful in countries where IP protection is less important than in others. In that case, invention patent applications can be filed in countries of higher importance, and utility models can be filed in countries of lower importance to help balance budget and portfolio breadth.

Balancing the positive and negative aspects of utility models along with the goals and budget of the IP strategy for a particular innovation, it may be that seeking utility model protection in a select set of countries makes sense. 

Because of the great variability among countries in implementing utility model protection, it is recommended that anyone interested in understanding how utility model protection may fit into an IP strategy for a particular innovation should contact a knowledgeable patent attorney. This is the best way to determine whether utility model protection can indeed provide value under the circumstances at issue.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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