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In what countries there are utility models and what can be protected as a utility model

Oct. 1, 2018

Currently, in some countries of the world there is such a subject matter of protection of
the result of intellectual activity, as a utility model. By its nature, the utility model is often called
a “small invention.” This is due to the fact, that in order to obtain a patent for a utility model, it is
necessary for the offered technical solution to be new and industrially applicable. More loyal
requirements to the patentability criteria for utility models entail a large number of patents for
utility models, which protect minor modifications of known technical solutions. The owners of
utility models obtain an exclusive right to a specific technical solution for commercial
exploitation, during a limited period of time, often from 6 to 10 years from the date of filing the
application or the priority date (it depends on a specific country).
According to the World Intellectual Property Organization (WIPO), in the World only 97
countries out of 192 ones grant patents for utility models, namely: Argentina, the United Arab
Emirates, Albania, Armenia, Austria, Angola, the Republic of Azerbaijan, Burkina Faso,
Bulgaria, Bahrain, Benin, Brazil, Botswana, the Republic of Belarus, Belize, Belgium, the
Central African Republic, Congo, Côte d'Ivoire, Chile, Cameroon, China, Colombia, Costa
Rica, Cuba, the Czech Republic, Germany, Djibouti, Denmark, the Dominican Republic,
Ecuador, Estonia, Egypt, Spain, Finland, Gabon, Georgia, Ghana, Gambia, Guinea, Equatorial
Guinea, Guatemala, Guinea-Bissau, Honduras, Hungary, Japan, Kenya, Kirghizia, Cambodia,
the Comoro Islands, the Democratic People's Republic of Korea, the Republic of Korea, the
Republic of Kazakhstan, Liberia, Lesotho, Mali, Mauritania, Malawi, Mexico, Mozambique,
Namibia, Niger, Nicaragua, Oman, Panama, Peru, the Philippines, Poland, Portugal, Romania,
the Russian Federation, Rwanda, Sudan, Slovakia, Sierra Leone, Senegal, the Democratic
Republic of Sao Tome and Principe, El Salvador, Swaziland, the Republic of Chad, Togo,
Tajikistan, East Timor, Tanzania, the Ukraine, Uganda, Uzbekistan, Zambia, Zimbabwe, France,
Italy, Ireland, Ethiopia, Greece, the Netherlands, the Republic of Moldova, Trinidad and Tobago,
Turkey.
At the same time, in some of these 97 countries, it is possible to obtain a patent either for
a utility model or for an invention. That is, it is impossible to file simultaneously an application
for an invention and a utility model. However, the legislation of 29 countries out of 97 ones,
which grant patents for utility models, allows “double patenting,” namely simultaneous filing
applications for an invention and a utility model with regard to the same technical solution. This
fact is quite convenient for the applicants, since, in case of doubts about the presence of an
inventive step in their technical solutions, they receive a certain kind of insurance in the form of
a patent for a utility model.

All countries that grant patents for utility models can be divided into two large groups:
the countries with a registration system of considering the applications and the countries with a
check system.
The countries with a registration system of considering the applications do not carry out
an examination as to novelty of the claimed solution. In such countries, there is a check
according to formal features, and the main aim of such check is only to check industrial
applicability. The check as to industrial applicability is necessary to ensure that the applicants
will not file the applications for abstract ideas or, for example, “perpetual motion machines.”
Whatever the patent is, its main task is to grant a monopoly right to some product.
Now, as to the second group, namely, the countries with a check system, it can be noted,
that the requirements to an examination of an application are more strict there, than in the
countries with a registration system. The check system stipulates a full-featured search for the
technical solution considered in the application. There are also additional requirements to such
solutions. For example, in accordance with Article 1351 of the Civil Code of the Russian
Federation, it is possible to protect as a utility model only a device, which is included into a
single housing and has strict interrelations between its elements, however this device should be
aimed at solving one technical problem.
It should also be noted, that a number of countries, such as the Ukraine, Austria, Estonia,
France, Portugal grant patents for utility models not only with regard to devices, but also with
regard to methods.
In addition, it should be noted, that the patent for a utility model can be obtained by filing
an application to one of the regional offices of Africa (ARIPO and OAPI). However, some
countries in Africa do not have their own Patent Office, and accordingly, it is possible to obtain a
patent for a utility model only by filing an application to one of the regional Offices of Africa.
For many applicants, it is a big surprise, that the transfer of the international application
into a national phase in the form of an application for a utility model is not stipulated in some
states (for example, in France, Ireland, Italy, Poland, Slovenia). Overcoming such limitations is
possible by converting an application for an invention into an application for a utility model, or
by filing a divisional application for a utility model. It should be noted, that the possibility of
converting an application for an invention into an application for a utility model is also not
available in all countries. For example, in the Russian Federation such possibility is available. In
addition, it is possible to file an application for a utility model with a request for a convention
priority with regard to the application originally filed in the applicant’s country. In case of a
convention priority, it is also possible to file an application for an invention at first, and then to
convert it into an application for a utility model.

Thus, by transferring the international application into a national phase or by filing an
application with a request for a convention priority, it is necessary either to study independently
in detail the patent law of the chosen country or to address to qualified persons – patent
attorneys, who will help to gain insight on the law and to offer the correct subject matter of
protection.

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Author of article

Marianna Boykova

Marianna Boykova

Patent Attorney