WARNING: Although the information which follows was correct at the time of publication, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  I have filed a PCT application, and, although I would like to obtain protection for my invention in a number of countries, I am also anxious to keep costs to a minimum.  I have heard that “utility model” protection can be requested in a PCT application, and that this form of protection is cheaper to obtain than patent protection.  What are the advantages and/or disadvantages of this type of protection compared to obtaining a patent?

A.  A utility model protects new technical inventions through the granting of an exclusive right to prevent others, for a limited period of time, from commercially using a protected invention without the authorization of the right holder(s). In this regard, a utility model is like a patent, but there are important differences, which are discussed below.  Protection of an invention through a utility model is only available in certain countries.  Some countries also provide for similar rights to utility models, which can be referred to as “petty patents”, “innovative patents”, “short-term patents”, “utility innovations”, or “innovation patents”.  However, for the purposes of this “Practical Advice” the term “utility models” covers both utility models and other similar rights. 

Official fees for obtaining utility models are generally lower than those for patents.  As there is no substantive examination of utility model applications prior to registration in most countries, no examination fee is due before registration and the registration process is simpler and faster than obtaining a patent, taking, on average, six months.  Although maintenance or renewal fees must be paid during the term of protection of a utility model, these are also generally lower than for patents.

Even though it may be cheaper to obtain and maintain protection through utility models compared to patents, and the process of registration is simpler and faster, you should be aware of other differences between utility models and patents which you may need to take into account when deciding how to protect a technical invention:

• the requirements for acquiring utility model protection are generally less stringent than for patents – while the requirement of "novelty" must always be met, this requirement might be applied only at a local level in the case of utility models. Furthermore, the requirement of "inventive step" (or "non-obviousness") may be much lower or absent altogether in the case of utility models.  Utility model protection is therefore possible for innovations of a rather incremental character which may not meet the patentability criteria;
• the term of protection for utility models is shorter than for patents and varies from country to country (usually between 7 and 10 years without the possibility of extension or renewal, although in the case of a few Offices, it is more than 10 years));
• although in some countries, utility models can be applied for in the same fields of technologies as patents, in other countries, utility model protection can only be obtained for certain fields of technology and/or it can be obtained only for products, such as devices or apparatus, but not for processes or chemical substances. In fact, eligible subject matter for utility models varies significantly from one country to another, and if you are thinking of requesting utility model protection in any particular designated (or elected) State, you are advised to check with a local agent in that State what kind of subject matter can be covered.

Further information on utility model laws in the various countries which offer such protection can be found under “IP legislation” at:

https://wipolex.wipo.int/en/

In conclusion, utility model protection is cheaper to obtain and maintain, the requirements for acquiring a utility model are often less stringent, and the registration process is generally simpler and faster without substantive examination.  However, this does not mean that utility model protection is a more favorable alternative to patent protection in all cases.  You should be aware that the lack of substantive examination means that there is less legal certainty with respect to the validity of a registered utility model.  In addition, if the invention is expected to be relevant in the market for a long period, utility model protection might not give sufficient protection.  The specific features of the utility model system and the patent system in a given country should therefore be carefully examined, on a case by case basis, in order to determine the best way of protecting an invention.

In many cases, utility model protection and patent protection are not necessarily alternatives, but utility model protection might be used as a complement to patent protection, since a utility model may be quickly obtained while waiting for the grant of a patent.  Furthermore, it is possible in some countries to convert a utility model application (or a utility model) to a patent application (or a patent), and vice versa.

For further information on utility models, a useful document containing frequently asked questions is available on the WIPO website at:

https://www.wipo.int/patents/en/topics/utility_models.html

Further information on the PCT Offices which offer utility model protection, as well as information on how to request such protection in respect of an international application, will be published in the next issue of the PCT Newsletter (No. 05/2018).