What is the difference between a utility model and a utility patent?
A utility model is a type of instant utility patent protection offered in many countries outside the US. Since they are not available in the US, this option would only help IP owners concerned about international patent protection. By applying for a utility model, the applicant gets automatic utility patent protection in the pertinent foreign country without examination. Depending upon each foreign country’s patent laws, the utility model will typically be examined and challenged if and when it is enforced against an accused infringer.
Utility patents in the US are granted after a thorough examination. There are no automatic grants of patent rights. Even a provisional patent application does not grant patent rights, but only a filing date and patent pending status. Given that utility models are not examined, they will be significantly less expensive to obtain than utility patents.
Should you consider dual filings?
One foreign IP strategy is the dual approach of filing both a utility model and a utility patent application concurrently. Filing both simultaneously gives the applicant instant patent rights while the utility application undergoes substantive examination. If and when the utility patent (aka “regular invention patent” in certain countries) is granted, the utility model will typically be abandoned.
In most countries, a utility model cannot coexist with a regular invention patent so the applicant must choose one. Certain countries, such as Taiwan, will require an applicant choosing utility patent protection to end the utility model on the publication date of the invention patent.
Certain inventions that are more difficult to patent in the US may be suitable for utility models in foreign countries. For example, this option may make sense for simpler mechanical devices that would face challenging obstacles at the USPTO. Having instant patent protection in a foreign country where the product will be manufactured may be a huge benefit, even as the utility application process continues an uncertain journey in the US.
How long does a utility model last?
The term depends upon the country, ranging from six to ten years. This is substantially shorter than the utility patent term which is generally 20 years from the priority date.
Where to look up a foreign patent laws
This is a helpful list of countries that offer utility models. IP laws, treaties and regulations of each country may be researched here. Each country has its own requirements, duration, excluded subject matter and priority claim rules.
What types of inventions are eligible?
Each country will have its own rules that may exclude certain types of inventions from being granted utility model protection. Biotech inventions and methods of manufacture are typically excluded. Business processes and computer programs are excluded in certain countries.