Don’t Overlook Utility Model Protection

By Steven Saunders. Vice-Chair of the Patent Practice Group

 

US companies often struggle with the costly decision of whether they should file patent applications in foreign countries. Rather than taking a scorched-earth approach of filing in too many countries—depleting even the most well-endowed budgets—or, conversely, skipping foreign filing altogether because of the daunting cost, companies should consider the frequently overlooked option of filing a so-called “utility model.” While its scope of protection can be limited and uneven, a utility model can provide quick, patent-like protection for a new innovation.

A utility model is an intellectual property right that is similar to a patent but, as is explained in greater detail below, it is generally subject to less demanding examination prior to issuance, requires less creativity than a patent, has a shorter duration and may in some jurisdictions be easier to challenge.

A utility model can act as an adjunct to, or possibly as a substitute for, a direct national phase filing. In fact, companies can pursue a tiered strategy overseas by filing utility models in countries of secondary importance, and normal patent applications in countries of primary importance. To enhance protection for a critical technology, some companies go so far as filing both utility models and regular patent applications in the same countries.

Although details vary from country to country, utility models generally have a number of common attributes, such as:

• Protection is of shorter duration than normal patents–often between 5-10 years.
• Examination typically is less rigorous than that for normal patents. Some countries merely require novelty. Often, the utility model application is not substantively examined at all. Instead, it simply is registered as filed. Moreover, utility model applications usually issue much faster than normal applications (e.g., within 3-5 months in Germany) and are less expensive. Unlike some other countries, Germany requires utility models to have an inventive step (like non-obviousness in the US), but they do not examine for that requirement.
• The holder of a utility model often can receive monetary damages for infringement and a permanent injunction (e.g., Germany). In some countries, such as Germany, preliminary injunctions are unavailable.
• Since they are typically not subjected to rigorous examination, the claims are usually less likely to survive a patentability challenge in court.
• Many countries (e.g., Germany) do not provide utility model protection on methods–only on devices.
• Utility models often can begin as original filings, or branch off other filings, such as a filing under the Patent Cooperation Treaty or a local, already filed regular patent application. In fact, both the regular patent application and utility model typically can be prosecuted at the same time. In some jurisdictions, an applicant who faces significant resistance during examination of a regular application can convert that application to a utility model, which should be much easier to get allowed. (More)