A utility model is an exclusive right granted for an invention, which allows the right to the holder to prevent others from commercially using the protected invention, without his authorization, for a limited period of time. There is no universal acceptance of the world "Utility Patent", different country have different terminology, like in Australia, utility model protection is referred as "Innovation Patent", in Malaysia as "Utility Innovation", in France as "Utility Certificate", and in Belgium as "Short term Patent". Thus "Utility Model" is a generic term used for inventions which are not the subject matter of Patent.
"Imagine that frame of yours spectacles has solar cells embedded in them which get charged in day time and if you want to read comfortably, with no disturbance, then light may be switched on, thus you can enjoy reading a book in the dark".
There are many rural areas in India, where light cannot be reached. Isn't that this spectacle or any is useful in those areas. Can this invention be protected under Patent Act?
MAIN FEATURES OF THE UTILITY MODELS:
1. All Utility model law confers exclusive right on the Inventor;
2. Novelty is one of the criteria in all Utility Model Law, but requirement of inventive step varies from nation to nation;
3. Most of utility model laws protect the technical character of invention.
However beside this common trait, most of the countries have different provision on socio-economic condition of the Country.
DEVELOPMENT OF UTILITY MODEL PRINCIPLE
The concept of "utility model" principle is not a new phenomenon. The first important international treaties for promotion and protection of industrial property i.e. Paris convention for the protection of Industrial Property, 1883 recognizes the principle of Utility Model system. Under the convention a period of priority can be secured for a utility model application by virtue of a right of priority based on a patent application and vice versa.1
Under the Convention, if patent application consist two inventions then, applicant can divide his patent application into patent application or utility model2 either suo-motto or on the receipt of the examination report. Further provision of importation and compulsory licenses are also applicable mutatis mutandis, to utility models. Similarly Patent Corporation Treaty (PCT) also permits to file Utility Model application through National Phase utilizing the priority date and flexibilities provided therein as applicable for patent.
Though TRIPS lays down minimum standards for the protection of Intellectual Property rights but does not contain any provision regarding Utility Model Patent. The Utility Model framework was first established in Germany in 1891, this introduction encouraged innovators who file about 85% of these applications. Under German IP system, requirement of Utility Models are same as patents, but standard of inventive step is lowered down. 3
In Japan, the Utility Model protection system established in 1905 was originally based on the utility model law of Germany. It has been amended several times but now restricted to the protection of device only. Japanese utility law encourages devices by promoting the protection and utilization of devices relating to shape or construction of articles or a combination of articles, so as to contribute to the development of industry.4
In Australia, petty patents were introduced in 1979 which has similar provision as German Utility Model. However under Australian model, process is not excluded as German but invention related to biological processes including product were excluded from protection. Petty Patent did not get popular among inventor because it could not differentiate substantially from standard patent.
In China, there is no separate Utility Model law, but patent law enacted in 1984 governs utility model. Utility Model patents have resulted into economic prospers in China and the application filed for Utility Models have always been more then of invention patents. Apart from these countries, developing countries like Taiwan, Mongolia, Vietnam, Malaysia, Thailand, Indonesia and Philippines have adopted the Utility model system with aim to promote SMEs.
DIFFERENCES BETWEEN UTILITY MODELS AND PATENTS :
- The requirements for patents are stricter than the Utility Model. The invention which has novel, inventive step and industrial application can be protected by patents however for Utility Models the only requirement is the novelty.
- Only new substantial inventions are patentable whereas marginal improvements can be protected under Utility Patents.
- Term of protection of Utility Models is usually lesser than patents. In some countries utility models are granted for 10 or 7 years.
- Process for the grant of Utility Models is simpler and faster than the patents. Patent Office does not examine the utility applications substantially.
- Utility Models are very cheap to obtain and maintain than the patents and can be obtained in only 6 months to 1 year.
- Patents are available in most of the countries whereas Utility Models are available in specific countries.
- Patents can be converted into Utility Models but not vice versa.
DOES INDIA NEED UTILITY MODEL PATENT ?
The Utility Models are considered generally good for developing countries, namely
a) It secures protection for innovations, which does not require the strict novelty and inventive step as required by patent law.
b) They increase the role of individual & small scale innovators in economic development and promote competitive environment.
c) They act as a spur to enhanced levels of innovation.
d) They are cheaper to acquire than patent and finally they become a source of data on innovative activity and experience in technological management.
In recent years India IP regime has developed with several initiatives taken by government to promote Intellectual Property. And one of the heated debates is whether India should opt Utility Model patent or not? Voices are yes and it is expected soon. Indian patent regime is stricter than many other countries. Under the Indian Patent Act, 1970, several exceptions are provided which excludes small and useful inventions. India is growing as a hub for small and medium size enterprises which focuses on the development of new technology with minor improvements or modifications of existing products to meet the changing demands of the market.
In India SMEs plays an important role in economic growth of country and it provides employment to about 27.14 millions people, which is second only to Agriculture5. However, this sector is not much aware of patent regime and if so then also they are reluctant, because the slogan of patent system is "you have to invest in it before you can really benefit from it". Thus, Patenting is expensive and time consuming. In recent years, industrialization process has reached its highest pick and it is expected to have more Foreign Direct Investment. Thus strong IP regime ensure nondisclosure of technology brought by firms and further encourage investment. On this scenario Utility Model Patent will be boon to India.
UTILITY MODEL FOR INDIA:
There are various types of models followed by different countries for the protection of small inventions according to the need of the industry. What kind of model should India follow for the protection of Utility Models is highly debated issue? Do we need to follow country specific Utility Model or a blend of various countries? However before adopting any model we should identify the best practices followed by various countries and considering socio-economic condition of our country. Utility Models protection shall not be restricted only to mechanical devices as followed in various countries, but should be allowed for inventions in the field of information technology, biotechnology, pharmaceuticals and agriculture in order to promote SMEs in every sector.
Another major aspect is what parameters India should adopt with respect to novelty, inventive step, utility, and examination procedure. Should we exempt inventive step criteria for Utility Models or not and to what extent novelty is to be judged? However for sure utility models requirements shall be less stringent than patents. Utility Models will fill the gap between the patentable inventions and non patentable inventions.
According to the various studies conducted on the viability of Utility Models for India it can be derived that the novelty criteria should be followed same as for Patents. Because in case prior art only in India is considered then the patentee cannot commercialize the invention in other jurisdictions as he always have fear of infringing others patents. Inventive step criteria should be lowered down. Minimum cost and time shall be required for the grant of the utility patents and the duration for the same shall not exceed 10 year.
Innovation culture is growing rapidly but in terms of filling, we are far below the standard. This reflects that we have innovation in mind not in paper because of lack of legal framework. Experience of most Utility Model Patent looks very promising and beneficial to the SMEs and India opting this model will give its international legal obligation.
We can learn from our neighboring country China whose goods in terms of technology are more in Indian market then ours because they promote small invention through Utility Model Patent. Utility Model patent is a useful tool for enhancing the competitiveness of SMEs, but they must be used in a very careful way so that it can't be misused.
1. Arts 4(E) (1) and 4(E)(2), Paris Convention
2. Art 5 of Paris Convention
3. Section 1(1) of German Utility Model Law
4 Section 1 of Japanese Utility Model Law
5. Handbook of Industrial Policy and statistics, 2003-04, Ministry of Commerce and Industry, PP 155, available on the Ministry website at http://eaindustry.nic.in/new_handout.htm