Protection of invention via Utility Innovation

What is Utility Innovation ( UI )

UI is an exclusive right granted to an innovator for a “minor” invention or innovation, which can be a product or a process that provides a new way of doing something or solves a specific technical problem in any field of technology.

In most countries where UI protection is available, patent offices do not examine applications as to substance prior to registration. This means that the registration process is often significantly simpler and faster, taking, on average, six months. With quick registration comes quicker publication, which otherwise takes 18 months post-filing in patent applications. Thus, UI is ideal for products with an anticipated short commercial life.

Quick registration also means that the registered UI can be enforced against potential infringers much sooner than a patent application. UI follows the same legal proceedings as patent litigation. Validity of UI is thus assessed by a civil court or similar body.

Though the requirements for acquiring a UI are less stringent than for patents the requirement of “novelty” is always to be met, that of “inventive step” or “non-obviousness” may be much lower or absent altogether. In practice, protection for UI is often sought for innovations of a rather incremental character which may not meet the patentability criteria.

UI can be branched off a pending patent application. It may claim priority from an earlier patent or UI application. It is also possible to use a PCT application as the basis for a UI application in the national phase.

Also, during a limited period, many countries allow conversion of a patent application into a UI application. Some countries even allow conversion after a patent application has been refused. In some countries, it is possible to obtain and keep both a patent and a utility model for the same invention.

Utility models in international agreements and multilateral agreements

PARIS CONVENTION       – Recognizes Ums as industrial property without defining it.  Accords it a right of priority and national treatment

THE TRIPS AGREEMENT      – Establishes the minimum substantive standards for each of the major IP regimes but fails to mention in clear terms utility model protection. Reference to Art 2(1), TRIPS Agreement, the relevant provisions of the Paris Convention (including Art1(2) ) are extended to all WTO countries.

PATENT COOPERATION      – Aimed at facilitating patent applications in more than one

TREATY                                      country via a simplified and cheaper process. This facilitated

means for patents covers UI as well.

Generally, application for acquiring a UI requires novelty but an inventive step or non-obviousness often is not. It also requires an innovation that makes a “substantial contribution to the art” but there is no need for it to be non-obvious. ( Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81)

 UI in Malaysia

In Malaysia, UI is known as Utility Innovation Certificates and the protection of UI is provided under the Patents Act 1983. It is processed similarly to patents, except it does not require an inventive step and can only cover a single claim per application. Its protection lasts for ten years ( renewable twice for up to a maximum of 20 years of protection ). Renewals of UI requires proof of use within Malaysia. The enforcement of UI is the same as patent.

Differences between UI and Patents

Though the application for acquiring a UI requires only novelty, the courts have however imposed a condition that the Ul must be disclosed in a way that is clear and complete enough for it to be performed by a person skilled in the art. ( Kendek Industry Sdn Bhd v Ecotherm (TFT) Sdn BHd [2010] MLJU 333)

 Advantages of UI 

  • UI may encourage local innovation so that local industries produce more goods
  • UI can protect valuable inventions/innovations which would otherwise not be protected  under the standard patent law or other intellectual property laws
  • This type of protection prevents free-riding of inventions by other predatory firms which expend no R&D costs or investment
  • UI can provide revenue to governments in the form of registration, search, publication, etc. fees
  • Registered UI rights can act as a source of valuable information via published specifications

The existence of a UI may reduce incentives for industry to lobby for the inclusion of minor inventions in the patent regime; this in turn would limit the public domain much more than the less expansive utility model system (shorter terms of protection and exclusivity).

Conclusion 

For small to medium sized enterprises (SMEs), patent protection can be complex and costly. And yet, for many of them, patent protection is a must to maintain their competitive edge. This made UI a better option for the SMEs as it is fast and cheap especially for protecting computer software and mechanical inventions and products which are fast developing.

 

UI could effectively be used to stimulate local innovation in developing countries in the South Asian region in particular those that are predominantly created by SMEs.

This by no means denies that larger enterprises may benefit from this system even though the UI system targets a different class of user. It has also been observed that most of the innovations based on traditional knowledge may effectively be protected under the utility innovation system if they are given modern technological touches.

However, despite the many advantages, a threat of frivolous filing of UI looms large which would in turn make the system a mockery. Therefore, appropriate safeguards need to be placed in order to prevent misuse. Grant of protection for UI without examination could lead to misuse of the system. Therefore, it would be advantageous of having an examination system with proper examination guideline in place for grant and enforcement of UI along with remedies available in case of infringements.
Rerences :

  1. http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm 2
  2. https://ec.europa.eu/growth/industry/intellectual-property/patents/utility-models_en
  3. http://www.youripinsider.eu/patents-utility-models-malaysia/
  4. http://www.author.com.my/information/utility-innovation
  5. http://iswip.com.my/patent/
  6. https://en.wikipedia.org/wiki/Utility_model
  7. http://www.wipo.int/patents/en/topics/utility_models.html
  8. http://www.invents.com/define-a-utility-patent/
  9. http://www.weickmann.de/en/taetigkeitsgebiete/patente-und-gebrauchsmuster/ 
  10. http://www.lexology.com/library/detail.aspx
  11. Patent Law in Malaysia, Cases and Commentary by Dr Ida Madieha Bt Abdul Ghani Azmi
Protection of invention via Utility Innovation