You are a new inventor, or small or medium enterprise (SME). You feel your idea for a new product is so revolutionary; it’s going to make you millions! However, it’s a jungle out there in the world of business and commerce. You realize you need your hard work and your investment to be protected somehow. Trade secret, trademark and/or copyright won’t do it. Your potential investor says he wants a patent. Your intellectual property practitioner is skeptical that despite the improvement in the marketplace, the product may not be easily patentable and even if there is a patentable invention, the costs of receiving a patent may be prohibitive.

Have you considered a utility model?

What is a Patent?

The term “patent” usually refers to a utility patent. Other types of patents may include a “design” patent for a new ornamental design or a plant patent for a new plant species.

A patent confers upon its holder, for a limited period, the right to exclude others from exploiting (making, using, selling, importing) the patented invention, except with the consent of the owner of the patent. A patent is a form of ‘industrial property’, which can be assigned, transferred, licensed or used by the patent owner. Patents are territorial; in effect for example an Israeli patent is only valid in Israel.

What is a Utility Model?

In its basic definition, a Utility Model is similar to a patent in that Utility Models grant a monopoly for new models which confer particular efficiency or functional advantages to machines or parts of them, instruments, tools or objects in general, such as new models having particular shape, disposition, configuration or combinations of parts. Utility models are not available for methods or processes.

Most intellectual property practitioners licensed in regions (US, Israel Britain) in which there are no provisions for utility model protection are usually not aware and do not suggest a utility model for intellectual property protection. However, use of utility models may provide many advantages in those countries which have provisions for them.

These advantages may include:

• Examination for a utility model is not substantive which means a model or improvement on a machine which may not be patentable can still receive protection as a utility model.
• a utility model usually issues within 6 months of filing which means allows enforcement early after marketing. Since utility models are usually granted much more quickly than patents, they can be useful if the owner is aware of an infringement and needs a granted IP right quickly, to enforce against an infringer.
• Utility Models can be useful for incremental inventions where only a small change has been made and which might not meet the inventive step requirements for a patent.
• Even if the model (machine or improvement) may be patentable, the costs for receiving the patent, ie. patent prosecution (the process of convincing the examiner as to the patentability of the invention) may be out of budget.
• Risk management: A utility model may be filed with a priority claim from an earlier filed patent application. Filing both utility models and patent applications in different jurisdictions guarantees some protection and some return on investment.
• Disadvantages of utility models may include:
• shorter term usually 10 years instead of 20 years, Due to the shorter term of protection, utility models can be useful for products with a relatively short commercial life.
• utility model may not always have an assumption of validity prior to enforcement.
• not available for methods and processes.

There is no “harmonization” of utility model practice. Each country has its own laws and regulations. Some expertise with respect to each country is necessary to properly formulate an intellectual property strategy including registration of utility models.