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Bold Considerations! A Granted Patent In One Country Does Not Guarantee International Patentability

November 7, 2017

What Is a “Utility Model Patent”?

Every patent system is territorial, which means that a patent in one country or intergovernmental organization (for example European Union) is enforceable only within its territory. Each country or intergovernmental organization has different laws and regulations on patents. For this reason, even if you have filed a patent application in one country, simply translating the language of that application and filing it in another country may not work. That is why it is important for an inventor to seek a local professional’s help in filing a patent application in each country. Moreover, a certain invention may not be patent eligible in one country, whereas a different kind of patent right for the same invention may be available in another country.

Utility Model Patent—A Second-class Utility Patent

“Utility model” is an unfamiliar term in American patent law. The American patent law system acknowledges only three types of patents: utility, design, and plant patents. Among these, the USPTO grants utility patents to “[inventions or discoveries of] any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.”

However, some countries acknowledge a second class of utility-like patents. As opposed to regular utility patents, these second-class patents are commonly known as “utility models” and are granted to “incremental inventions.” [See, for example, U. Suthersanen, “Incremental Inventions in Europe: A Legal and Economic Appraisal of Second Tier Patents,” Journal of Business Law, 2001, 319 ff.]  According to the Chinese Patent Office, the purpose of the second class patent rights is “to protect small inventions and creations.” The Korean Patent Office similarly states that the utility model was adopted to protect and encourage the “improvements and micro-inventions” of small companies. In Indonesia, these are aptly called “petty patents” or “simple patents.

Some argue that utility model patent systems were adopted mainly by developing countries that want to protect their weak domestic industries from global competition. However, many Western European countries including Germany, as well as Japan and Korea, have the utility model patent system.

Differences from Regular Utility Patents

A utility model is defined differently in different countries. However, the most common denominator is that a utility model is granted protection for a shorter term, usually ten years. This makes sense because incremental improvements on pre-existing technology are usually caught up by competitors rather quickly and thus there is less motivation for the government to encourage inventors to disclose such innovations to the public by patent filing—hence the protection for a shorter term is justified.

Another notable distinction is that in many countries, a utility model application is granted without substantive examination as long as the application complies with formalities. As opposed to the requirements of novelty and inventive step (nonobviousness) for regular utility patents, some countries require only novelty; other countries require a lesser degree of inventive step. For example, the Korean Patent Office rejects a utility model application for lack of an inventive step only if it is “extremely obvious” to conceive from prior art, whereas it rejects a regular utility patent application if it is “obvious for a person of skill in the art” to conceive from prior art.
Third, many countries limit the subject matter eligible for utility model registration. For example, Japanese law provides an allowable subject matter for a utility model as “a device that relates to the shape or structure of an article or combination of articles” and does not allow a business method utility model registration.

Finally, many countries allow for conversion from a patent application to a downgraded utility model application. So when an application for a regular patent eligible for 20 years is likely to be rejected, the inventor may switch to a utility patent application in some countries.

What It Means for an Inventor Seeking Multinational Patents

Utility models are called differently in many different countries: “实用新型” in China (literally “new type in practical applications,” as opposed to “专利” for regular patents); “petty patents” or “simple patents” in Indonesia; “Gebrauchsmuster” in Germany (literally “utility models”); and “実用新案/실용신안” in Japan and Korea (literally “new devise in practical applications,” as opposed to “特許/특허” for regular patents).
Knowing these different terms and being able to distinguish them from regular utility patents may be useful in understanding different patent rights awarded to an invention in each country. The power to enforce a utility model patent may be weak. For example, in Japan, a utility model patent is initially not examined for its substantive merit, but an inventor must request an opinion in order to bring an infringement suit. On the other hand, filing a utility model patent application may be a good alternative path for an inventor in ensuring some patent rights in many countries. Overall, these aspects may be helpful for planning a different patent strategy in each country.

Author: Wooshik Shim, Patent Attorney

Bold IP stands ready to meet your intellectual property patent prosecution and litigation needs. Keep your intellectual property rights protected domestically and internationally! Do not be afraid to take a bold step with your ideas! Any step forward with your IP is a step in the right direction. Our nationwide team of attorneys stands ready to help you through your Intellectual Property needs!

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