Patent Alternatives: When to Consider a Utility Model

Most people in the UK are familiar with 2 ways of protecting their ideas: either through a Patent to protect how something works or through a Registered Design to protect the look of an object.

In many countries of Europe, Asia, and South America there is a third form of protection available which should be considered. Known variously as a utility model or petty patent, protection is provided for inventions which may not reach the level of ‘inventiveness’ needed for the more usual patent, but which nevertheless include an innovation. Also, the time between filing the application and grant is typically far less than for a conventional patent, resulting fairly quickly in a valid and enforceable right.

There are several reasons why you might think about filing a utility model application. First, you are provided with a route to protect more incremental improvements in an invention which might not be independently patentable. Such improvements are often made some time after the original patent for the broader invention has been filed and so allow for the overall scope of protection at your disposal to be expanded.

Second, the usual patent system sets a cut-off point of 12 months from an initial filing, in which to maintain patent rights outside the initial filing jurisdiction – typically the UK for our clients. Should you wish to have rights outside the chosen countries, once this period has passed then this is usually not possible. The utility model however allows rights to be obtained in countries not on the original list: albeit with the additional improvement.

To obtain the rights, then a description of the invention, including drawings, needs to be filed. This is then examined by the relevant Patent Office, but again, the examination process is not as rigorous as that for a conventional patent and is sometimes directed only to formal matters.

Need Advice on Utility Models or IP Strategy?

If you’re considering using a utility model to protect your innovation, or want to explore how it fits into your wider IP strategy, get in touch with our team. We’d be happy to discuss your options and help you find the right approach for your business.

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Written by Paul Harrison for ip21