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Petty Patent (Utility Model) Protection

By John Richards [1]

Introduction to Petty Patent and Utility Model Protection

In a world where obtaining value for money has become even more important than in the past it may be useful to look for alternatives to the traditional way of doing things. For some types of invention, use of a petty patent or utility model as a means of protection may be a useful alternative to patent protection in many countries. Obtaining protection this way is often much less expensive than proceeding through the traditional patent route and, as noted below, in several countries has an advantage in its own right. Such protection can be obtained either by direct filing or by use of the Patent Cooperation Treaty.[2] In many cases, as noted in the Tables at the end of this paper, protection may be obtained without the need for substantive examination and often a lower standard of inventiveness is required for valid protection than is the case for patents.

The term “petty patent” is no longer used anywhere in the world, its use in Australia having been superseded by the term “innovation patent” in 2001.[3] Recently, however, the term has acquired a secondary meaning, namely any type of protection that is provided for inventions that do not qualify for full patent protection. By far the best known of these are utility models, although other terms such as utility innovations, utility solutions and short term patents are used in some countries. [4]

Until the 1990’s a utility model protection was regarded as being something of a curiosity in the intellectual property world. It is true that the Washington revision of the Paris Convention in 1910 had recognized Utility Models as a species of industrial property right, but in his 1975 book on “National and International Protection of Patents, Trademarks and Related Rights”,[5] Dr. Stephen Ladas listed as having this form of protection only Brazil, Germany, Italy, Japan, The Philippines, Poland, Portugal, South Korea, Spain and Taiwan. Since then, however, many countries have adopted protection of this type or some other form of “second tier” protection for useful articles or other inventions.

[1] This is an updated version of a paper first published in the Proceedings of the Fordham University School of Law International Intellectual Property Law and Policy Conference 1995 (Juris Publishing and Sweet & Maxwell, 1998). It was revised and published on this site in 2002 and this version has undergone extensive revision. Copyright John Richards 2009. John Richards may be contacted by email.

[2]PCT Article 2(ii).

[3]Petty patents were in fact rarely used in Australia. Their only advantage was that only publications or acts within Australia were considered when assessing novelty. However, the other standards that had to be met were the same as those for ordinary patents and petty patents lasted only for six years. The new innovation patent is intended to be more useful for small enterprises in that the standard of inventiveness required is lower than that required for ordinary patents (what is required is an innovation that makes a “substantial contribution to the art” - there is no need for it to be non-obvious. The term is now eight years old.

[4]In addition to patent-type systems, it should be borne in mind that protection for some forms of this type of innovation may also be protectable in other ways, for example by copyright or design protection in countries, such as France, where relatively broad protection is possible under such laws or by protection against “slavish imitation” as is provided in many countries in Continental Europe, for example by Marketing Laws in Scandinavia.

[5]Harvard University Press, 1975

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© Copyright 2009 John Richards - Revised 8 August 2009
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