Comparative Analysis of the Legal Status of Inventions and Utility Models in Ukraine
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In most countries technical decisions are protected as patents of Inventions. However, in some countries there is such an object as a Utility Model. Utility Models can be patented in CIS countries, some European Union Countries (Italy, Hungary, and Germany); as well as other countries including Chile, Taiwan, Kuwait and Peru. Though it must be noted that each country has its own requirements with regard to different objects of Utility Models and the terms of patents. Also, there are many disputes concerning the expediency and possibility of Utility Models. On one hand, the advantage of an object is the speed of patenting. On the other, there is no qualification examination for a Utility Model, and this makes it a favorite tool for patent trolls. Therefore a patent of Utility Model is easy to invalidate than patent of Invention, but nevertheless many applicants file applications for obtaining a patent for a Utility Model. For example, during September 2013 there were 7,500 applications filed for Utility Models, which was three times more than Inventions.
In this article we will consider the main features of the legal status and differences between Utility Models and Inventions in Ukraine. According to Article 1 of the On the Protection of Rights to Inventions and Utility Models Act of Ukraine an Invention/Utility Model means a result of intellectual activity of a human being in any field of technology. In Ukraine the object of an Invention/Utility Model to which legal protection is granted may be a product (device, substance, microorganism strain, plant or animal cells culture, etc.); a process/method as well as the novel use of a known product or process. In comparison to many countries, especially Russia, only products can be protected as Utility Models; that is why many Ukrainian applicants face difficulties with patenting a Utility Model in different countries. An example of this would be a patent application of a Utility Model in Ukraine for a method of data processing. In Russia the applicants could only file an application for Invention for this method or they should rewrite the application from the method to device of data processing.
Therefore, Ukrainian legislators have provided one definition of Inventions and Utility Models. While in contrast to legislation of other countries there is no difference between objects that could be protected as Inventions and Utility Models. In spite of this there is a big difference between the legal statuses of these objects:
1) Patentability Requirements: According to Article 7 of the above-mentioned law an Invention should be new, involve an inventive step and be industrial applicable. In contrast to an Invention, a Utility Model does not necessarily have to involve an inventive step. In other words, a Utility Model could be obvious to a person skilled in the art, but should be new and industrial applicable. This is why Utility Models are very often referred to as small Inventions.
2) Substantial Examination: Application for patenting a Utility Model will pass only a formal examination in which it shall be determined the date of filing the application; whether the claimed object belongs to technology and the application shall then be examined for conformity with formal requirements. In comparison to a Utility Model, after formal examination of the Invention it should pass a substantial examination in which experts should determine if the technical decision is new, industrial applicable and has an inventive step. In this way it is possible to patent an object that is not new or is not industry applicable. Additionally, dishonest applicants very often use this lapse and patent unoriginal decisions with different goals; such as for a marketing instrument (Promotion of Products), or as an instrument to compete with competitors. Nevertheless, such applicants more often obtain patents of Utility Models in order to register an object in the Customs Register of Intellectual Property to block the export and import of patented products. This opportunity has appeared with the coming into force of the Customs Code.
It should be noted that if a person considers that a patented object is not new or industrially applicable, he/she could invalidate it through court proceedings. Also, according to Part 2 of Article 33 of the above-mentioned law there is a possibility to require the Patent Office of Ukraine (Ukrpatent) to examine a Utility Model for meeting patentability requirements. However, a decision of Ukrpatent could not automatically invalidate a patent. It is also important to remember the position expressed in a letter of the Supreme Arbitrary Court of Ukraine No.01-08/411/1 of 30 June 2009, according to which an expert conclusion is not mandatory for the plaintiff or for the court. In other words, the examination decision that a Utility Model doesn’t meet patentability requirements is not a guarantee of invalidation of such Utility Model.
3) Terms of Patent Registration: As there is a simplified expertise of the Utility Model process for obtaining a patent is on average 6 months with an accelerated procedure it only takes approximately 2 months; whereas the patenting of Inventions can take nearly 2 years.
4) Requirement of Unity of Invention: According to Article 12 of the On the Protection of Rights to Inventions and Utility Models Act of Ukraine an application for an Invention shall relate to only one Invention or to a group of Inventions so linked as to form a single general inventive concept, but the application of a Utility Model shall relate to one Utility Model. In other words, if you want to patent an active substance and method of receiving it, you could do this in one application for Invention and in two different applications for Utility Models.
5) Patent Terms: The term of a patent of an Invention shall be 20 years from the date of filing of the application with the Office and the patent of a Utility Model is only 10 years from the date of filing of the application. That’s why it is advisable to file the patent application of a Utility Model for objects that quickly become outdated and are not relevant, for instance, in the sphere of Information Technology. Yet, in the food and pharmaceutical industries in which decisions are topical for a longer term, it would therefore be advisable to file an application of Invention. Note: according to Part 4 Article 6 of the above-mentioned law, the term of the patent for an Invention (not Utility Model), is the object of which is a drug, means for the protection of animals, means for the protection of plants and for the use of which permission of the relevant authorized body is required, may be extended at the request of the owner of this patent for a period that is equal to the time between the date of filing of the application and the date of receipt of such permission, but not more than 5 years.
Despite these differences, there are many common characteristics. First of all the patent of a Utility Model and the patent of an Invention gives their holder rights of using patented objects, exclusive rights for giving permission and forbidding such usage. Moreover, holders of both types of patents have the same obligations. So, according to Article 29 of the above-mentioned law — one shall pay the respective fees for maintaining the validity of a patent and use honestly the exclusive right deriving from the patent.
Thus, if an applicant needs to obtain a patent fast for a technical decision that would be definite on a relatively short term then it is advisable to file an application for a Utility Model patent. If a technical decision would be needed long term then it is advisable to file an application for an Invention. It is also important to remember that an applicant could convert a Utility Model application to an Invention application and vice versa. Note: terms of such conventions are limited to requests for such actions and should be filed until obtaining a decision of patent registration or refusal of it. In conclusion, each type of patent has its own advantages and disadvantages; the main goal for an applicant and/or his patent attorney is to choose the right object to patent.