The utility model can represent a useful and cost-effective tool for protecting innovative technical aspects of a product that would be excluded from patent protection due to the lack of a sufficient inventive step.
What are utility models?
Utility models are defined by the Codice della Proprietà Industriale (CPI - Italian Industrial Property Code, Art. 82 CPI) as:
new models capable of conferring particular effectiveness or convenience of application or use to machines or parts thereof, instruments, tools or objects of general use, such as new models consisting of particular conformations, arrangements, configurations or combinations of parts.
In general, this involves an improvement in the form of a product such as to confer a particular utility or greater effectiveness of use.
Utility models are often referred to as minor or second-level patents; however, they can represent a useful and economical tool for protecting those innovative technical aspects that would be excluded from patent protection due to the lack of a sufficient inventive step.
In particular, small and medium-sized enterprises can benefit from utility models to protect minor innovations, variants, or improvements that would otherwise end up in the public domain.
In today's article, we will focus on utility models and the protections that these titles guarantee.
Utility Model protection: patentability requirements
According to the Codice della Proprietà Industriale, the same provisions applicable to industrial inventions (protected by patents) apply to utility models. However, as we will see in greater detail below, they present some substantial differences and are subject to certain important limitations.
Utility models protect industrial or intellectual creations of a technical nature but cannot be invoked for certain types of innovations. These include: discoveries, scientific theories, and mathematical methods; aesthetic creations; rules and methods for intellectual activities; business methods; diagnostic and treatment methods for the human body; animal and plant varieties; processes and methods in general; biotechnological inventions and chemical compounds.
The requirements for obtaining a utility model patent are, as with an invention patent:
- Novelty: similar to invention patent protection, the creation must not already be included in the state of the art, meaning it must not have been made accessible to the public, in Italy or abroad, before the filing date of the patent application by means of a written or oral description, use, or any other means. It serves to protect a new functional form, namely a two- or three-dimensional configuration or conformation of an object, device, or equipment.
- Inventive step: the creation must not be obvious in any way from the state of the art to a person skilled in the art. With utility models, reference is made to a "particular effectiveness or convenience of application" and, in the case of an ornamental model, to a "special ornamentation." Therefore, the innovative character must be attributed to the ability to confer specific effectiveness and/or ease of use to an industrial product. A model is inventive if it is not anticipated or intuitable from the prior art, such that a person skilled in the technical field would not have the possibility of developing the same product without providing an inventive contribution.
- Industrial application: the creation must be capable of being manufactured and used in the industrial field.
- Lawfulness: the creation must not be contrary to public order or morality.
All the requirements mentioned above are not examined by the UIBM (Ufficio Italiano Brevetti e Marchi - Italian Patent and Trademark Office), but they will be in the event of litigation, for example, in a nullity or validity lawsuit.
Duration of protection
A utility model patent lasts 10 years starting from the filing date of the application and cannot be renewed, nor can its duration be extended. The effects of the patent (which consist of granting the owner exclusive rights for 10 years from filing) run from the date on which the application is made accessible to the public.
The registration process at the UIBM is simple and inexpensive. The filing fee is 50 Euros for online filing and 120 Euros for paper filing. The granting procedure, however, as in the case of an invention patent, is relatively long and varies from two to three years.
After filing, the UIBM only verifies formal aspects (for example, the payment of filing fees or whether the application was written according to the implementation regulations in force).
Unlike invention patents, utility models are not subject to a novelty search carried out by the European Patent Office (EPO). The latter, therefore, does not issue a search report or a patentability opinion.
The UIBM makes the documents available 18 months after the filing date of the application, or, if the owner requests early publication or immediate accessibility, after 90 days. Approximately two to three years after the filing date, the applicant receives a notice of grant or refusal, which may be appealed.
The level of legal protection granted to utility models is equivalent to that conferred on patents (the owner has the exclusive right to prevent others from producing, using, selling, marketing, or importing the claimed product), but with a different duration (10 instead of 20 years).
Costs
Maintenance fees for utility model patents are due starting from the second five-year period of life. Payment of maintenance fees must be made in advance by the last day of the month corresponding to that in which the application was filed. The renewal fee amounts to €500.00.
After said period, payment is permitted within the following six months with the application of the corresponding late fee of €100.00.
Payment is also permitted within four months from the date of grant of the utility model, or in the following six months upon payment of the late fee of €100.00, for any fees that may have accrued up to that point.
Failure to pay the fees beyond the terms indicated above results in the forfeiture of the patent. The author or their successor in title (for example, the employer) is entitled to the right to the patent (Art. 83 CPI).
At the time of filing, the applicant may simultaneously file a patent application for an invention and for a utility model, so that if the first application does not meet the required requirements, the second may continue to be valid (Art. 84 CPI). Double protection, in this sense, is not allowed. Conversely, it is possible to obtain protection for both a utility model and an industrial design (protection of form).
Furthermore, it is possible to convert a national patent application at any time during the pendency of the patent application under certain conditions: for example, if the claimed subject matter is a product and the examiner's objections concern the inventive step. As established by Article 84, if the subject of the application is a utility model rather than an invention or vice versa, the UIBM asks the interested party, setting a deadline, to amend the application, which in any case will be effective as of the first filing date.
The conversion of a European patent application, rejected or withdrawn, into a utility model is also possible.
The utility model is subject to the obligation of use and compulsory licensing. This means that in the event of non-use or insufficient exploitation, another company can request a compulsory license for use.
The utility model abroad
Currently, only a limited number of states and regional entities provide this type of protection. In particular: Albania, Angola, Argentina, ARIPO (African Regional Intellectual Property Organization), Armenia, Aruba, Australia, Austria, Azerbaijan, Belarus, Belize, Brazil, Bolivia, Bulgaria, Chile, China (including Hong Kong and Macau), Colombia, Costa Rica, Czech Republic, Denmark, Ecuador, Egypt, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Honduras, Hungary, Indonesia, Ireland, Italy, Japan, Kazakhstan, Kuwait, Kyrgyzstan, Laos, Malaysia, Mexico, OAPI (Organisation Africaine de la Propriété Intellectuelle), Peru, Philippines, Poland, Portugal, South Korea, Moldova, Russia, Slovak Republic, Spain, Taiwan, Tajikistan, Trinidad & Tobago, Turkey, Ukraine, Uruguay, and Uzbekistan.
Conversely, industrially and commercially important countries such as, for example, the United States and Great Britain do not recognize this form of protection. Furthermore, there is no harmonized international legislation on utility models, but each state or regional entity, without prejudice to the fundamental requirements described above, assigns different peculiarities to the protection.
However, the main international agreements on industrial property are applicable to it; these include: the Paris Convention, the European Patent Convention, the PCT (Patent Cooperation Treaty), and TRIPs-WTO (World Trade Organization). Furthermore, it confers a priority right of twelve months for the filing abroad of one or more invention patent applications, including European patents and international PCT applications.
Conclusions
The utility model is an alternative patent protection to the industrial invention patent and can be fruitfully applied where the creation to be protected does not possess a high degree of inventiveness but, on the other hand, is suitable for conferring a particular utility and/or greater effectiveness of use to a specific product.
It presents some advantages compared to the invention patent. For example, a utility model patent application is subject only to a formal examination that does not go into the merits of the novelty and originality of the patent object. Therefore, the grant of a utility model patent can be faster than an industrial invention patent. Furthermore, as the validity requirements are less stringent than those for an invention patent, it is also more difficult to obtain its annulment after it has been granted, for example during a nullity lawsuit. The maintenance cost is also lower.
Among the main disadvantages, however, are the shorter duration of the exclusive right (10 years instead of 20) and the lesser harmonization of the law at the international level.