It’s only a few years ago that I started paying attention to the prospect of a client obtaining a utility model instead of an ordinary utility patent. Until recently I knew of only a small number of Offices where utility models are available. But recently I happened upon a resource on the web site of WIPO that lists no fewer than fifty-nine Offices in which a utility model may be obtained.
First a bit of background. What is a utility model? Speaking in general terms, in the Offices that have a utility model as an available type of protection, a utility model differs from an ordinary utility patent in most of the following ways:
- shorter patent term
- limited or no examination as to novelty or inventive step (validity inquiry postponed until litigation time)
- cheaper government fees
- limited claim types (no method claims, no composition of matter claims)
As may be seen on the WIPO resource page, the fifty-nine Offices that offer utility model protection are:
- Albania
- Angola
- Argentina
- African Regional Intellectual Property Office (ARIPO)
- Armenia
- Aruba
- Australia
- Austria
- Azerbaijan
- Belarus
- Belize
- Brazil
- Bolivia
- Bulgaria
- Chile
- China
- Colombia
- Costa Rica
- Czech Republic
- Denmark
- Ecuador
- Egypt
- Estonia
- Ethiopia
- Finland
- France
- Georgia
- Germany
- Greece
- Guatemala
- Honduras
- Hungary
- Indonesia
- Ireland
- Italy
- Japan
- Kazakhstan
- Kuwait
- Kyrgyzstan
- Laos
- Malaysia
- Mexico
- African Intellectual Property Office (OAPI)
- Peru
- Philippines
- Poland
- Portugal
- South Korea
- Moldova
- Russia
- Slovakia
- Spain
- Taiwan
- Tajikistan
- Trinidad & Tobago
- Turkey
- Ukraine
- Uruguay
- Uzbekistan
Among the IP5 (the five biggest Offices for utility patent filing), the Offices that are conspicuously absent from this list are the US and EPO.
The WIPO web site has helpful articles here and here which are intended to help the reader appreciate what a utility model is and how it differs from an ordinary utility patent.
Hats off to WIPO for providing this helpful resource!
Being a Registered GB & European Patent Attorney, the issue of utility models does not often affect my filing practices, as utility models are not available. However, it is worth noting that utility models may also be requested when filing a conventional PCT patent application and I believe that in some jurisdictions both a patent and a utility model can coexist so, the utility model may provide protection, whilst you are waiting for grant of the patent application and thereafter, may still be important during litigation. (I know this is definitely not the case in Germany)..