Article by Suchi Rai and Akshay Mehta1
The current study concerns itself with the requirement of Utility Model protection system and its position in India, which works as an alternate system to patents in order to protect the inventions having lower level of inventiveness. In this article, we have tried to highlight the importance for Utility Models protection in order to encourage the Intellectual Protection creation activities of SMEs and small innovators in India. Earlier in time, the need for utility models was not seen but for now it has grown to a large extent and it has become very crucial to recognize the same in India.
INTRODUCTION
Utility model protection is currently available in many countries excluding India. Utility model does not require stringent examination procedures like Patents. It relates to incremental innovations, do not involve any inventive step and are obvious developments, however a utility model is known for its usefulness. It is similar to a patent and gives an exclusive right to the holder to prevent others from commercially using the protected innovation for a limited period of time, according to the World Intellectual Property Organization (WIPO)2.
WIPO defines it as:3
"A utility model is an exclusive right granted for an invention, which allows the right holder to prevent others from commercially using the protected invention, without his authorization, for a limited period of time. In its basic definition, which may vary from one country (where such protection is available) to another, a utility model is similar to a patent. In fact, utility models are sometimes referred to as "petty patents" or "innovation patents"
Indian Patent Law does not recognize innovations. India is a developing nation with innovations and inventions increasing at every step. Even the greatest journey begins with a small step, which makes it important to safeguard and promote these innovators by providing exclusive rights for their intellect and their efforts which went inside the work.
India recognizes improvements in the form of patent of addition4under the Patents Act, 1970 ("the Act"). A patent of addition is a patent granted for any improvement in or modification of an invention described or disclosed in the complete specification of the main invention. The improvement or the combination must produce a new result, or a new article or a better or cheaper article than before, which an innovation will also have.
Section 54 of Patents Act, 1970
Patents of addition.—
(1) Subject to the provisions contained in this section, where an application is made for a patent in respect of any improvement in or modification of an invention described or disclosed in the complete specification filed therefor (in this Act referred to as the "main invention") and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Controller may, if the applicant so requests, grant the patent for the improvement or modification as a patent of addition.
(2) Subject to the provisions contained in this section, where an invention, being an improvement in or modification of another invention, is the subject of an independent patent and the patentee in respect of that patent is also the patentee in respect of the patent for the main invention, the Controller may, if the patentee so requests, by order, revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked.
(3) A patent shall not be granted as a patent of addition unless the date of filing of the application was the same as or later than the date of filing of the application in respect of the main invention.
(4) A patent of addition shall not be granted before grant of the patent for the main invention.
Utility Model was first recognized in the Paris Convention, to which India is a signatory5 , which was made with the intention to protect the rights of inventors who came together to exhibit their inventions. The Paris Convention does not expressly define Utility Models in-spite of its amendments. However, the World Intellectual Property Organization defines it. Nevertheless, the International Convention known as Patent Cooperation treaty (PCT)6, under Article 2(ii) construe the reference of patents as patents for inventions, inventor's certificates, utility certificates, utility models, patents, or certificates of addition, inventor's certificate of addition and utility certificates of addition.
INNOVATIONS v. INVENTIONS
The Patent Act, 1970 defines an invention7 but not innovation. As per Section 2 (j) of Patents Act, 1970 "invention" means a new product or process involving an inventive step and capable of industrial application. Innovation relates to novelty and modernization whereas invention relates to creation of something new.
Innovation is invention plus exploitation. Invention's concern is a singular product or process, but innovation involves an amalgamation of various products processes8.
UTILITY MODEL PROTECTION IN OTHER COUNTRIES
In more than 100 countries these innovations have been recognized and given protection under their respective laws, for instance, US Petty Patents and Japan's Utility Model law.
US Petty Patent
A petty patent is granted to anyone who invents or discovers any new and useful process, machine, and article of manufacture, compositions of matter, or any new useful improvements thereof. In the case of KSR Int'l Co. v. Teleflex Inc. (2007), a general issue of material fact existed as to whether a person of ordinary skill in the art would have been motivated to attach an electronic control to the support structure of the Asano pedal assembly. The district court had said to apply the prevailing teaching-suggestion-motivation test wrongly and later the Supreme Court had cleared the grants of the petty patents.
Japan's Utility Model Law
The law was last amended in 2004 with the help of which minor inventions are protected and thus resulted in motivation for domestic innovators. Under the law, only devices but not the processes or substances are protectable. The device must not be against morality or public order. The protection extends upto 6 years and dual protection is not given. The infringement is strictly refrained and if done, it will attract dual penalty under Section 61 of the Utility Model law.
NEED FOR UTILITY MODEL PROTECTION IN INDIA
After analyzing the utility model protection systems in other countries and India being a developing nation, it becomes extremely important to have a legislation which will protect innovations and also would motivate the small innovators or SMEs. Micro, Small and Medium Enterprises (MSME) which contribute nearly 8 percent of the country's GDP, 45 percent of the manufacturing output and 40 percent of the exports. They provide the largest share of employment after agriculture. They are the nurseries for entrepreneurship and innovation. They are widely dispersed across the country and produce a diverse range of products and services to meet the needs of the local markets, the global market and the national and international value chains9 .
The SMEs contribute 45% of the industrial output, 40% of exports, 42 million of employment, create one million jobs every year and produces more than 8000 quality products for the Indian and international markets. As a result SMEs are today exposed to greater opportunities for expansion and diversification across the sectors10.
The Utility Model protection is less expensive and can promote the growth of the SMEs and motivate them for more innovations. Hence, recognizing innovations is an essential need of the hour.
CONCLUSION
It is important to give protection to small innovations likewise US or Japan's Law on utility model, which in India would motivate the SMEs which contribute a lot to the economy. Irrespective of the term of protection in utility model, which is lesser than the protection for inventions in other countries, India should come out with legislation for protecting such innovations which actually become a gateway for development of the technology.
Footnotes
1. Legal Intern, 5th year ITM Law School, Gurgaon
2. http://www.business-standard.com/article/current-affairs/industry-to-benefit-from-utility-model-forpatents-113112700501_1.html last accessed on 12th June
2014.
3. http://wipo.int/sme/en/ip_business/utility_models/utility_models.htm last accessed on 12th June 2014. 4. Section 54, The Patents Act, 1970
5. December 8, 1998
6. December 8, 1998
7. Section 2(j), The Patents Act, 1970
8. http://www.differencebetween.net/language/difference-between-invention-and-innovation/ last accessed on 12th June 2014.
9. http://msme.gov.in/Web/Portal/New-Default.aspx
10. http://www.smechamberofindia.com/rol_of_sme_sector.aspx last accessed on 12th June 2014
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