What to patent: an invention or utility model?
Comparative analysis of a patent for an invention and a patent for a useful model as tools for legal protection of the results of intellectual activity was made on the basis of Russian legislation, taking into account changes that come into force on October 1, 2014. For clarity, the main characteristics of inventions and PM (for Russia) are summarized .
When choosing between the patenting of an invention and the patenting of a utility model, the following considerations should be considered.
1. Purpose of patenting
If it is necessary to protect a rather complicated development (for example, a hardware-software hardware, a system, a complex, a production method or a service delivery method) or the application of a known product or method for a new purpose, then an invention should be patented.
As conceived by the legislator, the institute of the utility model is designed to protect relatively simple (mostly consumer) devices with a short start-up time and is adapted for use primarily by small businesses. Patenting a utility model is simpler, faster, and cheaper than patenting an invention. Until October 1, 2014 there is a declarative procedure for patenting PM, a substantive examination with respect to a PM is not carried out and a patent for a PM is actually issued “on parole” of the applicant. The wave of refusals of Rospatent in patenting as PM systems and complexes has recently been connected with this. This is understandable: in this way, some individuals attempt to patent space communication systems containing satellite constellations, automated defense complexes, power plants based on “cold” thermonuclear reactions, colliders of elementary particles, etc.
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The utility model is ideal in cases where nominal availability of applications is required and their quality is absolutely not important: for reporting on grants and government orders, for a list of publications in a Ph.D. thesis, for a line in a resume, etc.
2. Geography of patenting
Russia is not the only country in which there is an institute of a patent on a PM, however, the countries in which it is possible to patent the PM are approximately three times less than the countries in which it is possible to patent the inventions. In different countries, patents on PM may be called differently: utility model patent, petty patent or innovation patent. At the time of this writing, patenting of utility models is supported by the following national and regional patent offices :
Albania, Angola, Argentina, ARIPO, Armenia, Aruba, Australia, Austria, Belarus, Belize, Brazil, Bolivia, Bulgaria, Chile, China (including Hong Kong and Macau), Colombia, Costa Rica, Czech Republic, Denmark, Ecuador , Egypt, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Honduras, Hungary, Indonesia, Ireland, Italy, Japan, Kazakhstan, Kuwait, Kyrgyzstan, Laos, Malaysia, Mexico, OAPI, Peru, Philippines, Poland , Portugal, Republic Of Korea, Republic Of Moldova, Russian Federation, Slovakia, Spain, Taiwan, Tajikistan, Trinidad & Tobago, Turkey, Ukraine, Uruguay, Uzbekistan.
Note that in the USA, Canada, most European PM countries are not protected. At PM it is impossible to obtain a conventional European patent (and in the future it will not be possible to obtain a single European patent) or a Eurasian patent.
3. Scope of legal protection
The scope of the legal protection of the PM is formally equal to the scope of the legal protection of the invention (determined by the claims and the PM), however, the interpretation of the formula PM does not apply the doctrine of equivalents, which potentially narrows the actual scope of protection.
4. Resistance to cancellation
In terms of resistance to patent cancellation, the utility model (with a well-written application) is not inferior, and in some cases even surpasses the invention (since the concept of inventive step is not applicable to PM). But usually the PM is patented for reasons of economy and at the same time they save on everything, including the involvement of a patent specialist for the preparation of an application. As a result, an “economical” patent on a PM often turns out to be a “filing letter” and the cancellation of such a patent does not present much difficulty.
5. The rate of receipt and the term of the patent
A patent for a PM has a shorter term (10 + 3 years) than a patent for an invention (20 or 20 + 5 years); temporary legal protection is not provided for a PM until a patent is granted. However, a patent for a PM can be obtained much faster. Sometimes, applicants simultaneously file two identical (or close) substantive applications for an invention and a PM, then quickly receive a patent for a PM and use it to protect their interests until a broader and “long-playing” patent for an invention is obtained.
6. The cost of obtaining a patent
A quality patent for a PM is approximately twice as cheap as a patent for an invention, at least due to lower fees associated with obtaining a patent. It is also cheaper to maintain the patent in force. A nominal patent for a PM when it comes to self-drafting an application and maintaining correspondence is cheap.
7. Conversion and selection of applications
Patent law provides for the possibility of converting an application for an invention into an application for a PM and vice versa. This allows, for example, to first try to obtain a patent for an invention, and in case of failure by an inventive step, convert the application for an invention into an application for a PM and quickly obtain a patent for a PM (if the application for the invention has not yet been published). After the publication of the application for an invention, but before the expiration of the term for filing an objection to the refusal to grant a patent, it is possible to file a dedicated application for a PM and also quickly obtain a patent for a PM. This mechanism provides a kind of insurance in the event that the application is made quite well.
8. Uses for underwater applications
The use of the mechanism of selected applications allows you to implement the strategy of "underwater" applications, when the applicant constantly has one or several unpublished and therefore unknown patent applications to competitors. Since it is possible to pause up to three years before the beginning of the substantive examination with respect to applications for an invention, and with regard to applications for a PM, the examination essentially begins automatically after the end of the formal examination, the use of applications for PM as “underwater” applications is impractical.
Conclusion
With proper selection or combination of inventions and utility models allow businesses to effectively protect their interests. Competent choice implies knowledge of the above and other features of the legal regime of inventions and PM. We add that patents for industrial designs can be an effective tool for protecting commercial interests. But that's another story.
| Characteristic | Invention | Utility model |
|---|---|---|
| Number of countries in which patenting is possible | 148 ( Patent Cooperation Treaty ) 176 ( Paris Convention ) | 59 |
| Object of protection | Technical solution in any area related to the product (in particular, the device, substance, strain of microorganism, plant or animal cell culture) or method (the process of performing actions on a material object using material means) | Technical Solution Related to the Device |
| Maximum term of protection | 20 years (with a possible extension to 5 years for medicines, pesticides and agrochemicals) | 10 years |
| Conditions of patentability | World novelty, inventive step, industrial applicability | World novelty, industrial applicability |
| The normal term for obtaining a patent | 18-36 months | 9-18 months |
| The usual cost of patenting, including the cost of services for the analysis of patentability, the preparation of the application, correspondence, as well as fees | 200-400 tr. | 50-200 tr. |
When choosing between the patenting of an invention and the patenting of a utility model, the following considerations should be considered.
1. Purpose of patenting
If it is necessary to protect a rather complicated development (for example, a hardware-software hardware, a system, a complex, a production method or a service delivery method) or the application of a known product or method for a new purpose, then an invention should be patented.
As conceived by the legislator, the institute of the utility model is designed to protect relatively simple (mostly consumer) devices with a short start-up time and is adapted for use primarily by small businesses. Patenting a utility model is simpler, faster, and cheaper than patenting an invention. Until October 1, 2014 there is a declarative procedure for patenting PM, a substantive examination with respect to a PM is not carried out and a patent for a PM is actually issued “on parole” of the applicant. The wave of refusals of Rospatent in patenting as PM systems and complexes has recently been connected with this. This is understandable: in this way, some individuals attempt to patent space communication systems containing satellite constellations, automated defense complexes, power plants based on “cold” thermonuclear reactions, colliders of elementary particles, etc.
')
The utility model is ideal in cases where nominal availability of applications is required and their quality is absolutely not important: for reporting on grants and government orders, for a list of publications in a Ph.D. thesis, for a line in a resume, etc.
2. Geography of patenting
Russia is not the only country in which there is an institute of a patent on a PM, however, the countries in which it is possible to patent the PM are approximately three times less than the countries in which it is possible to patent the inventions. In different countries, patents on PM may be called differently: utility model patent, petty patent or innovation patent. At the time of this writing, patenting of utility models is supported by the following national and regional patent offices :
Albania, Angola, Argentina, ARIPO, Armenia, Aruba, Australia, Austria, Belarus, Belize, Brazil, Bolivia, Bulgaria, Chile, China (including Hong Kong and Macau), Colombia, Costa Rica, Czech Republic, Denmark, Ecuador , Egypt, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Honduras, Hungary, Indonesia, Ireland, Italy, Japan, Kazakhstan, Kuwait, Kyrgyzstan, Laos, Malaysia, Mexico, OAPI, Peru, Philippines, Poland , Portugal, Republic Of Korea, Republic Of Moldova, Russian Federation, Slovakia, Spain, Taiwan, Tajikistan, Trinidad & Tobago, Turkey, Ukraine, Uruguay, Uzbekistan.
Note that in the USA, Canada, most European PM countries are not protected. At PM it is impossible to obtain a conventional European patent (and in the future it will not be possible to obtain a single European patent) or a Eurasian patent.
3. Scope of legal protection
The scope of the legal protection of the PM is formally equal to the scope of the legal protection of the invention (determined by the claims and the PM), however, the interpretation of the formula PM does not apply the doctrine of equivalents, which potentially narrows the actual scope of protection.
4. Resistance to cancellation
In terms of resistance to patent cancellation, the utility model (with a well-written application) is not inferior, and in some cases even surpasses the invention (since the concept of inventive step is not applicable to PM). But usually the PM is patented for reasons of economy and at the same time they save on everything, including the involvement of a patent specialist for the preparation of an application. As a result, an “economical” patent on a PM often turns out to be a “filing letter” and the cancellation of such a patent does not present much difficulty.
5. The rate of receipt and the term of the patent
A patent for a PM has a shorter term (10 + 3 years) than a patent for an invention (20 or 20 + 5 years); temporary legal protection is not provided for a PM until a patent is granted. However, a patent for a PM can be obtained much faster. Sometimes, applicants simultaneously file two identical (or close) substantive applications for an invention and a PM, then quickly receive a patent for a PM and use it to protect their interests until a broader and “long-playing” patent for an invention is obtained.
6. The cost of obtaining a patent
A quality patent for a PM is approximately twice as cheap as a patent for an invention, at least due to lower fees associated with obtaining a patent. It is also cheaper to maintain the patent in force. A nominal patent for a PM when it comes to self-drafting an application and maintaining correspondence is cheap.
7. Conversion and selection of applications
Patent law provides for the possibility of converting an application for an invention into an application for a PM and vice versa. This allows, for example, to first try to obtain a patent for an invention, and in case of failure by an inventive step, convert the application for an invention into an application for a PM and quickly obtain a patent for a PM (if the application for the invention has not yet been published). After the publication of the application for an invention, but before the expiration of the term for filing an objection to the refusal to grant a patent, it is possible to file a dedicated application for a PM and also quickly obtain a patent for a PM. This mechanism provides a kind of insurance in the event that the application is made quite well.
8. Uses for underwater applications
The use of the mechanism of selected applications allows you to implement the strategy of "underwater" applications, when the applicant constantly has one or several unpublished and therefore unknown patent applications to competitors. Since it is possible to pause up to three years before the beginning of the substantive examination with respect to applications for an invention, and with regard to applications for a PM, the examination essentially begins automatically after the end of the formal examination, the use of applications for PM as “underwater” applications is impractical.
Conclusion
With proper selection or combination of inventions and utility models allow businesses to effectively protect their interests. Competent choice implies knowledge of the above and other features of the legal regime of inventions and PM. We add that patents for industrial designs can be an effective tool for protecting commercial interests. But that's another story.
Source: https://habr.com/ru/post/288430/
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