In what countries there are utility models and what can be protected as a utility model
Currently, in some countries of the world there is such a subject matter of protection ofthe result of intellectual activity, as a utility model. By its nature, the utility model is often calleda “small invention.” This is due to the fact, that in order to obtain a patent for a utility model, it isnecessary for the offered technical solution to be new and industrially applicable. More loyalrequirements to the patentability criteria for utility models entail a large number of patents forutility models, which protect minor modifications of known technical solutions. The owners ofutility models obtain an exclusive right to a specific technical solution for commercialexploitation, during a limited period of time, often from 6 to 10 years from the date of filing theapplication or the priority date (it depends on a specific country).According to the World Intellectual Property Organization (WIPO), in the World only 97countries out of 192 ones grant patents for utility models, namely: Argentina, the United ArabEmirates, Albania, Armenia, Austria, Angola, the Republic of Azerbaijan, Burkina Faso,Bulgaria, Bahrain, Benin, Brazil, Botswana, the Republic of Belarus, Belize, Belgium, theCentral African Republic, Congo, Côte d'Ivoire, Chile, Cameroon, China, Colombia, CostaRica, Cuba, the Czech Republic, Germany, Djibouti, Denmark, the Dominican Republic,Ecuador, Estonia, Egypt, Spain, Finland, Gabon, Georgia, Ghana, Gambia, Guinea, EquatorialGuinea, Guatemala, Guinea-Bissau, Honduras, Hungary, Japan, Kenya, Kirghizia, Cambodia,the Comoro Islands, the Democratic People's Republic of Korea, the Republic of Korea, theRepublic 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 DemocraticRepublic 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 fora utility model or for an invention. That is, it is impossible to file simultaneously an applicationfor 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 filingapplications for an invention and a utility model with regard to the same technical solution. Thisfact is quite convenient for the applicants, since, in case of doubts about the presence of aninventive step in their technical solutions, they receive a certain kind of insurance in the form ofa 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 acheck system.The countries with a registration system of considering the applications do not carry outan examination as to novelty of the claimed solution. In such countries, there is a checkaccording to formal features, and the main aim of such check is only to check industrialapplicability. The check as to industrial applicability is necessary to ensure that the applicantswill 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 thecountries with a registration system. The check system stipulates a full-featured search for thetechnical solution considered in the application. There are also additional requirements to suchsolutions. For example, in accordance with Article 1351 of the Civil Code of the RussianFederation, it is possible to protect as a utility model only a device, which is included into asingle housing and has strict interrelations between its elements, however this device should beaimed 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 withregard to methods.In addition, it should be noted, that the patent for a utility model can be obtained by filingan application to one of the regional offices of Africa (ARIPO and OAPI). However, somecountries in Africa do not have their own Patent Office, and accordingly, it is possible to obtain apatent 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 applicationinto a national phase in the form of an application for a utility model is not stipulated in somestates (for example, in France, Ireland, Italy, Poland, Slovenia). Overcoming such limitations ispossible by converting an application for an invention into an application for a utility model, orby filing a divisional application for a utility model. It should be noted, that the possibility ofconverting an application for an invention into an application for a utility model is also notavailable in all countries. For example, in the Russian Federation such possibility is available. Inaddition, it is possible to file an application for a utility model with a request for a conventionpriority with regard to the application originally filed in the applicant’s country. In case of aconvention priority, it is also possible to file an application for an invention at first, and then toconvert it into an application for a utility model.
Thus, by transferring the international application into a national phase or by filing anapplication with a request for a convention priority, it is necessary either to study independentlyin detail the patent law of the chosen country or to address to qualified persons – patentattorneys, who will help to gain insight on the law and to offer the correct subject matter ofprotection.