[co-authors: International Contributing Authors]*
Obtaining a traditional utility1 patent is often a long and strenuous process. Although fast track prosecution procedures may be available, they are often costly and cumbersome. But entrepreneurs often want to obtain patent protection of their technology quickly for reasons such as attracting investors, acquiring business assets, disclosing new technology to the public, or marketing their products. In some cases, advancements in particular technology sectors occur rapidly, resulting in short product cycles, which makes getting quick intellectual property protection not only desirable but also necessary for businesses to remain competitive.
One solution to this problem is to obtain utility model patents to protect the inventions in jurisdictions outside the United States.2 Utility model applications generally are not substantively examined, and they are significantly less expensive to prosecute and much faster to grant than a traditional utility patent. Also certain inventions that are difficult to patent in the United States may be especially suitable for utility model protection in foreign jurisdictions. For example, applying for utility model patents may be appealing for companies in the business of manufacturing simpler mechanical devices, which could face challenging obstacles to prove patentability at the United States Patent and Trademark Office (USPTO). However, obtaining relatively quick patent protection in a foreign country where the patented products will be manufactured is highly valuable for the business. For example, a utility model patent in Germany and/or France means a business has patent protection in Europe.
Notably, not all types of inventions can be protected under utility model patents, and rules in different jurisdictions defining what types of inventions are eligible vary. In the biotech sector, for example, pharmaceuticals and methods of manufacture thereof are typically excluded, however, there are still many other types of biotechnology inventions that can be protected by utility models, as discussed below. Notably in many countries, utility model patents and national phase applications can co-exist, which provides quick protection for the company’s product while waiting on the national phase applications to be examined. In these cases, utility models not only serve as a way to “fast-track” patent protection but also complement the protection offered under traditional utility patent protection.
Our article discusses at a very high level of the laws and practices in the selected foreign jurisdictions relating to obtaining utility model patent protection. The article can serve as a useful reference for businesses when considering using this valuable tool to maximize intellectual property protection outside the United States.
China
Subject matter
The subject matter eligible for protection of utility model applications in China is limited to products with definite shape and/or structure. Thus, products without a physical shape or structure, e.g., a chemical compound or composition cannot be protected by utility models.
Term and Cost
The term of a utility model patent in China is 10 years and currently the average cost of obtaining utility model protection is approximately 1000 USD for a typical utility model application plus additional translation cost. Occasionally utility model applicants may receive a notice of substantive examination to which a reply is required, and the cost may correspondingly increase.
Examination
Traditionally the examiner will not conduct a prior art search when examining a utility model application and only performs a preliminary examination to look into whether there is a prima facie lack of novelty based on available technical solutions and information. Starting in 2017, however, the scrutiny on utility model applications by China National Intellectual Property Administration (CNIPA) has increased, it is now common for applicants for utility model patents to receive a notice of substantive examination based on a prior art search. Despite the increased scrutiny, the threshold for nonobviousness for a utility model application for passing the examination remains relatively low such that applicants may be able to obtain broader protection in scope as compared to the scope of protection that would have obtained through invention patent applications. If a notice of substantive examination is issued, Applicants are required to file a reply with arguments and/or amendments in response to the notice.
A utility model application can be filed with the CNIPA as a first filing or filed within 12 months of a previously filed application, e.g., U.S. provisional application or other application. China also allows the national entry of a PCT application as a utility model application. However, the applicant must choose either an invention patent application or a utility model patent application, but not both, at the time of national phase entry. If the Applicant wants to obtain both utility model and national phase protection, the utility model application should be filed on the same day as the PCT application.
A utility model patent and a national phase patent claiming the same subject matter cannot co-exist in China; however, utility model patents may be withdrawn once a national phase patent has been granted.
Enforcement
Utility models in China can be powerful and produce significant financial rewards if the market of the underlying protected product is big enough. One example of successful enforcement of a utility model patent is a case involving the utility model Patent ZL201420522729.0, owned by Winners’ Sun Plastic Electronics (Shenzhen) Co., Ltd. (“Winners’ Sun”). SPC IP Civil Final 357 (July 24, 2020). In that case, Winners’ Sun sued that Zhongshan Pinchuang Plastic Products Co. Ltd. (“Pinchuang”) for manufacturing selfie sticks claimed in the utility model patent and thus infringing the utility model patent. The Guangzhou Intellectual Property Court (“Guangzhou IP Court”) held that the Pinchuang willfully infringed the utility model patent and ordered Pinchuang to pay 1 million RMB to the patent owner Winner’s Sun. The decision was affirmed by the Supreme People’s Court (SPC).
Although the damage award in this case is relatively small, the market for selfie stick in China is huge. Thus, when the utility patent is enforced against a large number of defendants, the accrued damage awards can be substantial. In fact, Winner’s Sun has filed a massive number of lawsuits against alleged infringers of this utility model patent.
France3
Subject matter
The “utility certificate” in France is very similar to the “utility model” available in other jurisdictions. However, unlike other jurisdictions, the subject matter of utility certificates in France is not limited to products. Therefore, method claims can be pursued in utility model applications in France. A utility certificate can protect any patentable invention. In particular, the provisions of the French Intellectual Property Code relating to patent applications, also apply to utility certificate applications, except for those provisions concerning the preparation of the search report4.
Term and Cost
Until recently, the term of a utility certificate in France was shorter (only six (6) years) than other jurisdictions. However, as of January 2020, the term of utility certificates in France is now the same as many other jurisdictions of ten (10) years from the day on which the application is filed. Although the typical filing costs are similar to filing a patent application, there are minimal prosecution costs, and no search costs in obtaining a utility certificate.
Search
A utility certificate in France is granted without a search report being issued, and therefore without any examination of patentability.
If a utility certificate application is converted into a patent application, the search fee must be paid and a search report is issued. When a patent application is converted into a utility certificate application, the preparation of the search report is cancelled.
Examination
An application for a utility certificate can be converted into a regular patent application and a regular patent application may also be converted into an application for a utility certificate. The request must be made in writing, within eighteen (18) months of the priority date of the utility certificate application, and before the start of the preparations for publication of the application. Therefore, it is recommended that conversion be considered as soon as possible after filing the application, as in practice the technical preparations for publication may begin a few weeks before the eighteen (18) month deadline. To ensure the request for conversion is filed in time, it is wise to file this request before sixteen (16) months from the earliest priority date of the application.
As mentioned above, a utility certificate is published around eighteen (18) months from its earliest priority date. It is possible to accelerate the grant of a utility certificate in France by requesting early publication.
It is possible to file divisional applications from a utility certificate application in France. However, an application for a utility certificate may only be divided into applications of the same category i.e., utility certificates. The division of a utility certificate application may be requested up until the date of payment of the grant and printing fees.
Examination of a utility certificate application is limited to a formal examination only, and the patentability requirements of novelty, inventive step and industrial applicability are not examined. The claims of a utility certificate may be amended up until the date of payment of the grant and printing fees.
Enforcement
Although a search report is not prepared for a utility certificate before grant, if the owner of a utility certificate brings an infringement action, they must be able to produce a search report. Therefore, a request must be filed for a search report to be prepared. However, it is important to note that an applicant may not amend the claims of a granted utility certificate during infringement proceedings in light of any prior art found in the search report.
Some applicants may wish to file both a patent application and a utility certificate application together. This can be useful if it is important to obtain a granted right quickly, to be able to take action against a third party.
Germany5
Subject matter
Method claims are excluded from registration in a German utility model. However, a utility model can be used to obtain protection for all other technical inventions, including chemical substances, and food and medicinal products.
Although method claims cannot be protected by a utility model, what is deemed to be a method claim has been interpreted in such a way that there appear to be some exceptions. For example, operating methods for machines, such as computers, can be protected in the form of system claims. Furthermore, second medical use claims are also not excluded from German utility model protection. However, a manufacturing or working process, or for example, a measuring process, may not be eligible for utility model protection.
Term and Cost
Utility models in Germany last for a maximum of ten (10) years. The average cost of obtaining a utility model includes attorney fees for drafting the application, translation fees (if a German translation is required), representation fees, and official fees. The official filing fee is 30€ and maintenance fees for the 4th to 6th year, for the 7th and 8th year, and for the 9th and 10th year amount to 210€, 350€ and 530€, respectively. The average costs for obtaining utility model protection without maintenance fees is approximately between 2000€ and 4000€ depending on the length of the utility model specification.
Search
An applicant may request that a search report is drawn up for a utility model in Germany. However, this is optional. It may be beneficial to have the German Patent Office (DPMA) draw up a search report, so that the applicant can assess the validity of the claims before registration.
Examination
In Germany, utility model applications are not examined for novelty, inventive step and industrial applicability6. However, for the claims of a utility model to be valid, they must meet this criterion. As utility models are an unexamined IP right, typically they are registered quickly, and often within only few months.
Advantageously, there are limitations on what prior art is relevant for a utility model compared to a patent. For example, oral disclosures, public uses outside Germany and subsequently published older applications, do not constitute relevant prior art for a utility model, whereas they do for a patent. A further advantage is that a six (6) month grace period exists for German utility models. Therefore, an invention can still be protected in Germany even if, for example, it was “accidentally” published by the inventor prior to filing an application. In contrast, such a grace period does not exist for patents in Europe.
A German utility model application can be filed directly, from a PCT application, or can claim priority to a provisional application.
Furthermore, it is possible to “branch off” a utility model from a pending patent application in Germany, as long as the patent application has not been pending for more than ten (10) years7. For example, it is possible to branch off a utility model from a pending European patent application, a PCT application or a German national patent application. This can provide protection alongside the pending patent application, at a point in prosecution where no or limited protection is available from the pending patent application. The date of the utility model will be the same as the date of filing of the parent application.
There are no excess claim fee requirements for German utility models. Therefore, an applicant can include any number of claims, provided they comply with the subject matter requirements. Further, the claims can be amended voluntarily before registration and, in some instances, after registration.
It is also possible to file divisionals from a utility model application in Germany. The division of a utility model may be requested up until the date of registration.
Enforcement
Utility models can be enforced from the date of registration. However, during infringement proceedings, the validity of the utility model can also be assessed by the court.
Cancellation proceedings may be brought against a registered German utility model and these proceedings will determine if the registered claims are new and inventive. Therefore, it is important to ensure that the claims of the utility model are valid before registration.
Japan
Subject matter
In general, utility model applications in Japan are limited to devices relating to the shape or structure of an article or a combination of articles. Pharmaceutical products, materials, chemical substances, food products, software, and methods are not eligible.
Term and Cost
The term of utility model protection lasts 10 years. The official fee for registering a utility model is 14,000 yen, or approximately 108 dollars.
Examination
Examiners only perform formality checks and other basic requirements including
1. The device relates to the shape or construction of articles or a combination of articles.
2. The claimed device is not liable to contravene public order and morality.
3. The application satisfies the requirements for the format of the claim as well as the unity of the application.
4. All the necessary items are described in the specifications and drawings, and these descriptions are not conspicuously unclear.
Applicants will have an opportunity to respond if the office deems the application does not meet either the formality requirements or the basic requirements. The examination can typically be completed within two to three months. Since no substantive examination of the subject matter is conducted when registering a utility model, filing an application will almost certainly result in registration within a short period of time. Products covered by the utility model can be marked to notify the public of the registration no. of the utility model. But keep in mind that the utility model marking must be deleted on products upon the expiration of the registered utility model. Not doing so constitutes a violation of the prohibition of false marking that is punishable under the Japanese law.
Enforcement
Although a utility model application is not examined for substantive requirements such as novelty and inventive steps, not meeting these requirements will be a ground for invalidation of a registered utility model. There is no presumption of validity for utility models. To enforce a registered utility model, the owner needs to request a Technical Opinion from the JPO (Utility Model Act, Article 29-2; Article 12) and present it to the accused infringer. The cost for requesting a Technical Opinion is 42,000 yen + (number of claims x 1,000 yen). If the number of claims is five, the fee will be approximately 360 dollars. The Opinion contains assessments of whether the utility model fulfills the substantive requirements, including novelty and nonobviousness. Utility Model Act, Article 12. The standard of nonobviousness for a utility model is less strict than that for a patent. Utility Model Act, Article 3. It typically takes about three to four months for the JPO to issue such an opinion. It is noted that such an opinion can be requested by any person, not just the holder of the patent registration, and a request may be made even after the expiration of the utility model. Utility Model Act, Article 12, Paragraph 1.
It should be noted that if the Opinion from the JPO is negative, the right holder has to be very careful when enforcing the registered utility model because the right holder must compensate for any damages caused by the exercise of the right if the utility model right is ultimately invalidated.
It is possible to amend the claims only once within two months from the first dispatch date of the Utility Model Technical Opinion. Utility Model Act, Article 14-2. By requesting another Technical Opinion after the amendment, a more preferable opinion may be obtained.
A well-known case of successful enforcement of a utility model right in Japan is the Toe Support Pad, Osaka District Court, Hei 26 (wa) no. 4916, March 17, 2016, (Japan)8. In this case, the court found infringement under the doctrine of equivalents for the utility model right and awarded damages of approximately 1.2 million dollars.
Dual filings
It is possible to file a utility model application and an invention patent application for the same invention. However, if they are filed on different dates, they will be prior art against each other. If they are filed on the same date, an applicant can only choose to obtain only either a patent right or a utility model registration, but not both.
It is also possible to convert the utility model registration to an invention patent and the latter will be entitled to the filing date of the original utility model. However, there are some requirements for conversion, including a time limit of three years from the date of filing. Patent Act, Article 46-2.
Mexico
Subject matter
The Mexican Federal Law for Protection of Industrial Property (LFPPI) defines utility models as “objects, utensils, apparatuses or tools that, as a result of a change in its arrangement, configuration, structure or form, show a different function with respect to its component parts or advantages in terms of its usefulness.” Mexican Federal Law for Protection of Industrial Property [LFPPI], Art. 59, Diario Oficial de la Federación, 1, July 2020, efectivo 5, November 2020 (Mex.). In order to assess the possibility of protection under a utility model in Mexico, it is important to determine if the innovation complies with the above-mentioned definition. For instance, under said definition, processes, compounds/compositions or uses cannot be protected as utility models in Mexico.
PCT national phases in Mexico could be filed either as a MX patent application or a utility model application. Prosecution of utility models is faster and cheaper than patent prosecution.
Mexican legislation also provides the possibility for applicants of converting a patent application into a utility model application and vice versa, in cases where the invention is not consistent with the protection originally sought. This transformation can be carried out within two months after filing the application or upon request of the Mexican Institute of Industrial Property (“IMPI”).
Term and cost
Utility model protection lasts 15 years in Mexico and the average cost of obtaining protection is about $3,500.00 - $5,000.00 USD depending on the number of substantive office actions issued during its prosecution. A maximum of four office actions can be issued for a utility model application before receiving the Notice of Allowance or Final Rejection.
Examination
Filing requirements for utility models are the same as those for patents.
After the utility model application is filed, IMPI carries out the formal examination. Once the formal requirements are met, the utility model application is published.
Unlike other jurisdictions, IMPI carries out a substantive examination for utility model applications to evaluate whether the invention complies with the novelty and industrial application requirements. Inventiveness is not a requirement for a utility model to be registered.
Regarding prior disclosures, Mexican law provides a 12-month grace period before the filing date or the recognized priority date, wherein public disclosures made directly or indirectly by the inventor/s or its assignees, as well as the disclosure made by any third party who obtained the information directly or indirectly from the inventor/s or its assignees, will not be considered as part of the prior art. Publications made by IP Offices in an application, patent or register cannot be used as prior disclosures to obtain the benefit of said grace period.
No annuities are due during prosecution; however, once the utility model is granted, annuities are computed from the filing date which must be paid along with the granting fees.
Registering a utility model in Mexico typically takes between 1.5 - 3 years, whereas it takes between 3 -5 years to obtain a patent.
Enforcement
Utility models provide the same enforcement possibilities as patents. Utility model registration entitles its owner to prevent any third party from manufacturing, using, selling, offering for selling or importing a protected product without its consent. Remedies available to enforce utility models in Mexico are the same as those available when enforcing patents.
Ukraine
Subject matter
In Ukraine, a significant patent legislative reform occurred in 2020 (An English version of the amended Ukrainian Patent Law is available, Verkhovna Rada of Ukraine, Law of Ukraine: On Protection of Rights to Inventions and Utility Models (last modified July 21, 2020), https://zakon.rada.gov.ua/laws/show/en/3687-12#Text.). The main purpose of such legislative changes is the harmonization of the Ukrainian patent legislation with the legislation of the European Union and the implementation of the provisions of the EU-Ukrainian Association Agreement in the Ukrainian laws.
Utility model protection is eligible now only for a device or a process (method). Thus, a chemical substance or a formulation is no longer protectable by a utility model in Ukraine. Additionally, the novel use of a known product or process was excluded from protection as an utility model.
The following subject matter is also excluded from utility model protection: plant varieties and animal breeds; biological processes for reproduction of plants and animals; integrated circuits topographies; aesthetic creations; methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body, etc.
Term and examination
Utility models are examined for formalities only in Ukraine and not for the substantive patentability requirement. During the formality review, the Patent Office examines whether a utility model applied for belongs to the subject matter eligible for utility model protection, checks for the completion of the application documents, description of the utility model, utility model claims, drawings, abstract, and power of attorney in the name of the applicant's representative (patent agent) and a document confirming payment of a statutory fee pursuant to Ukrainian legislation, and the like. The examination can typically be completed within a year and in some instances, they can be completed within 4-5 months if an accelerated review is requested (subject to an additional fee).
Once registered, the term of protection is 10 years from the filing date.
Following the registration of the utility model of Ukraine, it can be examined for compliance with patentability conditions by reasoned request of any interested person. A fee shall be paid for submission of the request. The Patent Office notifies a utility model patent owner about the receipt of such a request. The conclusion of the Patent Office on correspondence of the utility model with the terms of patentability shall be sent to the person that submitted it and also to the utility model owner. The Patent Office's conclusion on compliance of a utility model with patentability conditions may be submitted by the person who filed the request to the court or the Chamber of Appeals of the Patent Office in case of initiating utility model invalidation proceedings.
Enforcement
Utility model rights are typically enforced through litigation. A utility model owner can prohibit unauthorized use of its utility model in Ukraine.
A defense of the utility model patent invalidity can be raised as a counterclaim in the course of already initiated utility model patent infringement proceedings or in a separate administrative (post-grant oppositions before the Chamber of Appeals) or court proceedings.
Any person shall have the right to provide the Chamber of Appeals with a justified statement of invalidation of rights to the utility model either in full or partially on the basis of non-correspondence of the utility model with the terms of patentability. The statement of invalidation of rights to the utility model may be filed with the Chamber of Appeals within the whole term of protection of the utility model and after its termination. A fee shall be paid for submission of the statement.
The grounds for challenging the validity of a utility model patent in a court are broader and besides the non-compliance of a utility model with patentability conditions also include the following: the utility model claim extends beyond the content of the originally filed application; the requirements of filing an international application with the PTO, where patenting is made under the PCT, were not fulfilled; or the utility model patent was issued as a result of filing application infringing third parties’ rights.
Dual filings
Ukrainian Patent Law does not contain the provisions regarding the dual filings of a utility model and an invention application. However, if they are filed on different dates, an earlier application will prevail and have the prior art effect in respect of an application filed later. In any event, such a strategy may be unnecessary as Ukrainian legislation allows converting a utility model application to an invention application and vice versa at the stage of its review by the Patent Office of Ukraine.
Conclusion
Utility models are often overlooked by U.S. companies because the U.S. does not provide utility model protection for inventions. However, utility models are widely utilized in ex-U.S. jurisdictions and for companies eyeing a global market, utility model protection is a valuable tool in the overall strategic considerations for IP protection. Utility model registrations can be obtained quickly, which is especially useful for products that have a short life cycle. Utility model registrations can be obtained relatively inexpensive, which can be desirable for small or medium companies desiring to obtain protection to mark their products and attract investors.
Utility models can be combined with national phase patent applications to give the companies efficient protection over the life cycle of the technology. This strategy advantageously provides the applicant patent rights while the national phase application undergoes substantive examination and thus maximizes the economic benefit from valuable intellectual property.
The opinions expressed are those of the authors and do not necessarily reflect the views of the firm, its clients, or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
We collaborate with the contributing international authors and other trusted international partners to provide you with this information and to manage our clients’ global intellectual property portfolios. Please contact us if you have any questions. Our contact information are as follows:
* International Contributing Authors:
China: Kunpeng Peng, UNITALEN, kunpeng.peng@unitalen.com
Germany: Emma Bridgland and Ralf Bucher, VENNER SHIPLEY LLP, ebridgland@vennershipley.co.uk and rbucher@vennershipley.de
France: Emma Bridgland and Ralf Bucher, VENNER SHIPLEY LLP, ebridgland@vennershipley.co.uk and rbucher@vennershipley.de
Japan: Shinichi Watanabe, K. ITO & ASSOCIATES, s-watanabe@kitopat.jps-watanabe@kitopat.jp
Mexico: Jorge Alejandro Juarez Oceguera, OLIVARES, jorge.juarez@olivares.mx
Ukraine: Yuliia Chyzhova, KATZAROV SA, yuliia.chyzhova@katzarov.com and
Andrea Manola, KATZAROV SA, andrea.manola@katzarov.com
