Utility Models

Last summer, I attended an intellectual property seminar at a state bar function.  There was a panel of speakers, one of whom was a registered patent attorney and the General Counsel of a Fortune 500 company.  He admonished patent counsel attending the seminar for not promoting the use of utility models as an option for protecting innovation.

Like many patent practitioners, I assumed in-house counsel, particularly in-house patent counsel, were aware of the existence of utility models.  So, I often refrained from suggesting utility models as a form of protection, but instead followed a client’s filing instructions, especially if the client is a sophisticated client, one who is familiar with patent filings.  However, this practice has changed.  I would rather a client decline a suggested course of action rather than forego an opportunity.

Utility models are similar to patents in that utility models grant an exclusive right to the owner to prevent others from unauthorized commercialization of inventions for a period of time.  However, utility models differ from patents in a number of ways.  The principal differences are as follows:

Utility models have less stringent requirements than patents.  For example, though novelty remains a requirement of utility models, the inventive step or non-obviousness requirement may be lowered or omitted entirely.

Utility models are typically not examined prior to registration, so they register quickly, often in about six months.

Utility model protection may be limited to particular technological fields.

Utility models are also often less costly to acquire and maintain.

The term of a utility model is typical shorter, in the order of 7-10 years.

Generally speaking, utility models allow the owner to more readily secure protection for an invention and assert rights in the invention.

The differences in utility models vary from one country to another.  These differences should be considered when developing a filing strategy.

For a list of countries that offer utility models as a form of protection see World Intellectual Property Organization (WIPO).