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Utility Models

What is a utility model?

A utility model is a title that recognizes the right to exclusively use and produce a protected invention, preventing others from using, manufacturing, or profiting from it without your consent. In return, all information regarding the utility model will be made public.

The rights granted by a utility model is the same as those granted for patents. The basic difference between the utility model and the patent is that the utility model protects inventions with a lower degree of advancement or “improvements” whose degree of inventive activity is lower than what would correspond to patents.

This concept was created as a need to protect small everyday utensils that do not have the same degree of an inventive step as a patent, but for which protection is essential to achieve economic, technological and social development.  

An example of a utility model would be a paperclip, a corkscrew, or a hairpin, among others.

As a consequence of the lower inventive step requirement, the right to exclusively use the invention is 10 years, instead of the 20 years obtained through a patent.

Differences between Patents and Utility Models

Patents and utility models are inventions. The basic difference between them is that, while patents are granted to inventions that represent a major advance in the state of the art, i.e. in technological, economic, and social development, utility models are granted to inventions with a lower degree of advancement or improvements of existing inventions that represent a minor advance in technological, economic, and social development.

More specifically, the differences are the following:

  • Unlike patents, the following types of inventions cannot be protected as utility models: procedures, anything containing biological matter, or pharmaceutical substances or components.
  • Regarding registrability requirements, inventions are required to have a novel, inventive step and industrial applicability, just as with patents. However, the degree of inventive step is reduced if protected as a utility model. In this case, the invention must not be obvious to a person skilled in the art.
  • Although novelty, an inventive step, and industrial applicability are required, these requirements are not examined in the registration procedure in many countries. Unlike in patent registration, the procedure does not include a substantive examination that examines the registrability requirements. In other words, prior art is not examined.

If you have an invention that you wish to protect, please contact us, and we will assess whether it should be protected as a patent or as a utility model.

Registration Requirements

For a utility model to register it must comply with 2 requirements:

Objective requirements: Novelty, inventive step and industrial applicability.

  • The invention must be new (novel). The invention must not exist anywhere in the world or at the very least not have been made public by any means. Hence the importance of maintaining the confidentiality of the invention until the patent application or filing.
  • The invention must have an inventive step. This means that in the eyes of an expert in the industrial area in which it will be applied, the invention should be an advancement or an improvement in the area of study. However, the consideration of what constitutes an inventive step will not be as strict as in a patent application.
  • The invention must have an industrial application. It must be executable and real. In other words, it must be capable of being applied to a certain area of industry.

Formal requirements: These are the requirements related to the fees, documentations and steps that need to be followed for registration. It is important to have a patent expert prepare these documents and represent you during the application process.

Background Search

As mentioned above, although some Offices do not examine the registrability requirements (novelty, inventive step and industrial applicability) in the utility model registration procedure, this does not mean that any invention can be registered.

Once the utility model is granted, any third party may file an opposition against the registered invention alleging that it does not meet the registrability requirements. If this is the case, the utility model examiner will analyze whether or not the invention complies with these requirements, and if it does not, the invention will be refused or cancelled.

In order to avoid this it is essential to seek advice before deciding to file for registration. At KUDU Legal, we have patent and utility model experts who will be in charge of analyzing if the invention is indeed an invention that complies with registration requirements.

Registration

Utility model registration is not available in all countries.

Protection must be granted locally. The countries in which utility model registration exists are the following:

Argentina, Armenia, Australia, Austria, Belarus, Belgium, Benin, Botswana, Brazil, Bulgaria, Burkina Faso, Cameroon, Chad, Chile, China, Colombia, Congo, Côte d’Ivoire, Costa Rica, Denmark, Equatorial Guinea, Estonia, Ethiopia, Finland, France, Gabon, Georgia, Germany, Equatorial Guinea, Guinea, Greece, Guatemala, Guinea Bissau, Hungary, Ireland, Philippines, Russian Federation, Slovakia, Spain, Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lesotho, Liberia, Malawi, Malaysia, Mali, Mauritania, Mexico, Namibia, Netherlands, Niger, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Senegal, Swaziland, Tajikistan, Trinidad and Tobago, Togo, Turkey, Uganda, Ukraine, United Republic of Tanzania, Uruguay, Uzbekistan, and Zimbabwe.

KUDU Legal has a vast international network of expert attorneys that will be able to advise and provide services in whatever jurisdiction you may need.

Other Utility Model services

When you have a large number of utility model applications or registrations in different countries, it is essential that a firm specialized in industrial property is in charge of managing the portfolio in order to control and monitor them in a centralized manner. This allows you to:

  • Know the status of each utility model application and registration.
  • Know which rights have been obtained in each country.
  • Control the annuities to maintain the validity of your utility models.
  • Keep the holder’s data up to date in each of the registered countries.

KUDU Legal has a powerful industrial property rights management tool (not only utility models, but also patents, trademarks and industrial designs) that allows us to keep the status of all registrations updated. We will notify you of any necessary actions for the maintenance, protection and defense of your intellectual property, regardless of the country in which your intellectual property right is registered.

Transfer and licensing of Utility Models

Utility models are intangible goods with economic value and can therefore be the object of business transactions. They can be sold and they can be the object of licenses and other legal agreements.

If you are interested in obtaining international partnerships or competitive advantages in the sector, it may be convenient to assign or license the utility model in order to obtain the desired commercial returns.

Actions against utility model infringement

Unauthorized use of a utility model occurs when a third party is using a utility model without the owner’s authorization.

Since this is an illegitimate use and could cause considerable economic losses for your company, it is essential to act as soon as possible.

If you find yourself in this situation, do not hesitate to contact us. KUDU Legal will take all necessary steps to ensure your design rights are safeguarded.