Benefits of patenting a device as an invention and utility model

“Invention or utility model?”, “Which patent is better to protect the developed design?” - these or similar questions come to us from our new clients. However, the more regular customers talk about what patent should protect their development, the more questions they have. So, let's sort it out in order, and start with the definition of an invention and utility model, which are given in the civil code of the Russian Federation:

• As an invention, a technical solution is protected in any field related to a product (in particular, a device, a substance, a strain of a microorganism, a plant or animal cell culture) or a method (the process of performing actions on a material object using material means), including the use product or method for a particular purpose.
• A technical solution relating to a device is protected as a utility model.

From the above two definitions, it clearly follows that such technical solutions as various methods, technologies, substances, compositions, strains, the use of a product or method for a specific purpose can only be protected by a patent for an invention. As for various designs of devices, such an object can be protected both by a patent for an invention and a patent for a utility model.

Separately, special attention should be paid to developments that have not been similar before and which open up new areas of technology, new directions in industrial production, medicine, defense or other industries, or which create new types of valuable materials, machines, products, therapeutic agents, etc. Such technical solutions are called "pioneer inventions" because they have no precedent in the history of technology and open up a new era in the development of scientific and technical thought. For example, "pioneer" inventions were: the antibiotic penicillin, steam engine, incandescent lamp, plastics, radio, television, laser, nuclear reactor, diamond synthesis, etc. Thus, "pioneer inventions", including those related to various devices - machines, mechanisms should be protected by a patent for inventions.

And what kind of patent is better to protect modified, improved devices, that is, in the design of which changes have been made? Of course, they can be both inventions and utility models. Ceteris paribus, the patent attorneys of Zuykov and partners advise “to aim for more, and you can always get less”, that is, we recommend filing an application for an invention. However, it is worth mentioning that it is not always possible to protect any device with a patent for an invention.

Let's see why the invention? And is invention always better?

An invention is granted legal protection if it is new, involves an inventive step and is industrially applicable.

• An invention is new if it is not known from the prior art.
• An invention has an inventive step if it does not clearly follow from the prior art for a specialist. The state of the art for an invention includes any information that became public knowledge in the world prior to the priority date of the invention.
• An invention is industrially applicable if it can be used in industry, agriculture, healthcare, other sectors of the economy or in the social sphere.

The term of a patent for an invention is 20 years, subject to the payment of an annual fee for maintaining the patent in force.

Unlike an invention, a utility model is granted legal protection if it is new and industrially applicable.

• A utility model is new if the totality of its essential features is not known from the prior art.
• A utility model is industrially applicable if it can be used in industry, agriculture, healthcare, other sectors of the economy or in the social sphere.
• The term of a patent for a utility model is 10 years, subject to the payment of an annual fee for maintaining the patent in force.

As can be seen from the conditions of patentability, in order to obtain a patent for an invention, three conditions must be met, and for a utility model only two, and based on their duration of patents, it can be assumed that it is much easier to obtain a patent for a utility model. However, in practice, not everything is so simple.

In recent years, patent law has undergone significant changes, especially in terms of utility models, that is, the rules of law related to obtaining a patent for utility models have been tightened, as a result of which the scope of rights for utility models has become narrower. So, in accordance with the changes, it is possible to protect only one specific version of the device as a utility model, while it should be aimed at obtaining only one positive effect that needs to be confirmed. In addition, the combination of features of the utility model must be essential to achieve the claimed technical result. Simply put, a utility model can be a fairly simple design, with changes, improvements, in comparison with known solutions for the same purpose. Thus, it is not possible to use alternative features in a utility model and indicate several technical results, however, if necessary, this can be done in the case of filing an application for an invention. If it is necessary to protect complex devices consisting of a large number of components, parts, systems, complexes, then this can only be done by filing an application for an invention.

You can talk a lot about the pros and cons of one and the other patent, but since we have global criteria for obtaining both patents, that is, the same solution should not be known in the world, in order, among other things, to determine which patent is better to protect the device, it is necessary to conduct an international patent information search, and it is better to entrust such a search to experienced qualified patent attorneys. If, according to the search results, the solution corresponds to world novelty and inventive step, then you can safely apply for an invention, and if there are difficulties with the inventive step, then there are more chances to get a patent for a utility model.

Returning to the advice at the beginning of the article - “you need to aim for more”, that is, apply for an invention, let us explain that if suddenly the experts of the patent office refuse to issue a patent for an invention, for example, because the solution does not correspond to the inventive step, then not everything is lost, since the legislation provides for the possibility of converting an application for an invention into an application for a utility model by filing an appropriate petition. And in this case, the decision will be considered as a utility model, in which the presence of an inventive step is not required, in connection with which a positive decision on granting a patent for a utility model will be more likely to be received. Of course, this approach is more time-consuming, time-consuming and financially costly, but who does not take risks does not drink champagne, as they say.

Another important nuance that should be taken into account when filing an application for an invention or utility model is the geography of the patent. And this factor must be taken into account, especially if it is necessary to protect your rights abroad. So, if patents for inventions under the Patent Cooperation Treaty (PCT) are recognized by 150 countries, under the Paris Convention more than 170, then utility model patents are available in not much more than 60 states.

Based on the foregoing, a large number of pros and cons can be given both for inventions and utility models, but no one can unequivocally answer which patent is better to protect a device, invention or utility model. The solution depends on the specific situation. Thus, a competent patent attorney, privy to all of the above nuances, having become acquainted with the essence of the issue, can give advice on what, in his opinion, is more likely to be granted a patent by the office. However, the last word always remains with the applicant, because only he has a full understanding of his development.