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The Current Situation Worldwide

Table I sets out some basic facts about secondary protection in most countries that have such laws including indications as to how long the countries have had such laws, the name given to the protection (not all countries use the term “utility model”), the duration of protection and, as an indication of the usefulness of such protection, the number of such applications filed in 2006, the most recent year for which statistics are available from WIPO. A summary of the most important features of the substantive laws in these countries is set out in Table II.

A comparison of Tables I and II shows that the countries in which the most widespread use of utility model protection is made are countries where there are significant differences between the standards of invention required for patents and utility models namely: Japan, China, Korea, Taiwan and Germany. In Germany there are additional differences between patents and utility models, namely the grace period as noted above and secondly, that for utility models prior to public use outside Germany does not constitute a bar to protection. Furthermore, in Germany procedures for enforcement of utility models and patents differ. In the case of an infringement action, the defendant can plead that the utility model is invalid and the courts can in effect amend the scope of protection in the light of the art cited by the defendant.

As can be seen from the tables, countries where there is a lesser distinction between requirements for patent protection and for utility model protection have tended to result in few utility model applications being filed. It is, however, noticeable from the statistics compiled by WIPO, that in all countries utility models, unlike patents in most countries, are much more utilized by local residents than by foreigners. One reason for this is that costs for utility models tend to be less than those for patent applications because in many countries (although as shown by the table not all by any means) no substantive examination is carried out for utility model applications. Dispensing with examination seems to be an increasing trend, although Korea at one point abolished this requirement but has now re-introduced it. This lack of examination also has the potential advantage of accelerating the grant of an enforceable intellectual property right. One consequence of a lack of examination, however, is a feeling that protection should not be granted for the full term normally granted for patents and so utility model protection is generally for a shorter period than that granted for a normal patent.

In many countries, but not for example China, it is possible to convert a patent application into a utility model application at any time during pendency of the patent application, for example, if one encounters an obviousness objection where a lower standard required for protection as a utility model would be met even though one cannot satisfy the Examiner as to patentability. In France, failure to request examination of a patent application will automatically convert the application into one for a utility certificate. In general, it is not possible to secure protection for the same invention by both patent and utility model rights (Germany is an exception). Many countries, including Japan, Korea (if examination has no already been carried out), France and China require that a report on the novelty of the model must be carried out before an infringement action can proceed. In Germany, this is not obligatory but can be requested by the right holder or a third party. As noted above, however, in Germany issues of the valid scope of protection can be considered by the court hearing the infringement action.

Typically therefore utility models differ from patents in one or more of the following respects:

• Standard of invention required.
• The basis on which novelty is assessed.
• Whether examination is required (and consequent speed of grant of an enforceable right).
• Costs.
• Duration of protection.

Superimposed upon this is the fact that the classes of subject matter which may be protectable by a utility model or other form of secondary protection may in many cases be much narrower than the definition of patentable subject matter for normal patents.

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© Copyright 2009 John Richards - Posted June 2009
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