One of the tools available to companies and entrepreneurs to protect innovation activities is the utility model.
The utility model is a type of registration that was introduced in several countries to address a certain set of perceived problems with the patent system: too high processing costs and too demanding patentability criteria. These two factors are particularly detrimental to small companies and individual inventors, who have fewer financial resources than large companies.
In Spain, the utility model is a popular type of registration and is particularly useful for SMEs and entrepreneurs implementing small improvements to existing products. In fact, during 2021, 3,059 utility model applications were filed in Spain versus only 1,361 Spanish patent applications.
The protection conferred by a utility model can be just as effective as that conferred by a patent. However, the utility model has a significantly lower processing cost because it is granted without substantive examination and usually in less than a year. In addition, the level of inventive step required is less stringent than that required for a patent, so it is often more difficult to invalidate a utility model than a patent.
It should be borne in mind that before bringing actions aimed at enforcing the exclusive rights of a utility model, it will be mandatory to request a State-of-the-Art Report (known in Spanish as Informe del Estado de la Técnica, IET) from the Spanish Patent and Trademark Office (SPTO). With this report, the owners or applicants of the utility model will be able to assess whether to continue with their claims regarding the approach of a possible legal action.
It is interesting to know that the SPTO sends a draft of this Prior Art Report to the owner of the utility model so that, in view of the result of the report, the owner can decide to submit arguments, optionally modify the claims, or even request the withdrawal of the report so that it is not made public. If finally accepted, the report is made public in the SPTO’s online file.
Utility models can be powerful weapons if used wisely. A possible interesting strategy for some clients is to make dual patent and utility model filings. Dual filing is a particularly useful practice when a patent application covers generic embodiments. This strategy begins with a patent application (either Spanish, European or PCT), followed by a utility model application just before the end of the priority year claiming the priority of the earlier patent. Since the specification was already drafted for the patent, only the costs of the utility model formal application must be faced.
If necessary, the claims of the utility model can be adapted in view of the result of the State-of-the-Art-Report issued by the Office during the priority year. This utility model will be granted within a few months, much earlier than the patent, so that the owner will soon obtain effective protection for his invention without waiting one or two years for the patent to be granted. Later, once the patent is granted, the owner will have the option to abandon the utility model.
It must be said that the utility model alone is not particularly suitable for protecting inventions arising from universities or research centers. The reason is that their inventions are often of a complex nature and commercialization is often far from the date of application for registration, given that time is needed to complete the development of the technology. The limited protection period of 10 years for the utility model, as well as its rapid publication, condition its effectiveness in these cases.
In contrast, the utility model is particularly attractive for industries of products with short life cycles, whether or not they are produced on a large scale. In this sense, the main sectors that benefit are the mechanical and electronics industries and, since the entry into force of the new Patent Law, also the chemical sector, given that chemical substances and compositions (not biological or pharmaceutical compositions) can be protected by utility models.
In summary, the utility model can, like patents, fulfil a defensive protection function by preventing third parties from patenting an innovative product, while also becoming an important offensive weapon to stop competition.