This article is written by Ajay Kumar, pursuing a  Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Prashant Bvaiskar (Associate, LawSikho) and Dipshi Swara (Senior Associate, LawSikho).

Introduction

Intellectual Property Rights strikes a balance between the owner’s exclusive rights and the social interest. The Intellectual Property Rights in India are recognised under the various Acts like The Patents Act, 1970, The Trade Marks Act, 1999, The Copyright Act, 1957, The Designs Act, 2001, The Geographical Indications Act, 1999, The Protection of Plant Varieties and Farmers’ Rights Act, 2001, The Semiconductors Integrated Circuits Layout – Design Act, 2000. It is explicit that India has plenty of legislation to protect IP Rights. 

While obtaining patents can be a complex process, the utility model is another form of getting one’s inventions protected, the requirements being less stringent. Various countries provide “Utility Model ” protection to safeguard innovations affordably and speedily, such protection is still unavailable in India. This article will cover the Utility Model protection and the requirement of utility model protection in India.

What is a utility model

A utility model is an Intellectual Property Right to protect inventions. This right is available in more than ninety countries and regions. A utility model is similar to the patent but usually has shorter-term (6-10 years) and less stringent patentability requirements. The German and Austrian utility model is called the “Gebrauchshmuster“, which influenced other countries such as Japan. In Indonesia, the utility model is called a “Petty Patent” in France as “Utility Certificate” and in Belgium as “Short term Patent. However, there is no specific definition for the utility model, and it varies from one country to another. Most countries that provide utility model laws require that the invention should be new. However, many utility models or patent offices do not conduct substantive examination and grant the utility model after checking that the applications comply with formalities. Some countries exclude particular subject matter from utility model protection. For example, methods, plants, and animals are generally barred from utility model protection. A utility model is territorial and will be enforced only within the country in which it is granted.

Difference between utility model and patent

Although the Utility model and Patent seem to be the same, there are some differences between them.

• To acquire Patent protection, novelty and nonobviousness requirements, inter alia need to be qualified. On the other hand, to obtain utility model protection, the requirement of novelty is necessary, and the requirement for non-obviousness is comparably low or absent.
• Generally, the term of protection for the utility model is between 6 and 10 years which is shorter than the Patent protection.
• Usually, the utility model applications are not examined before registration, which makes the registration process smoother and quicker. Obtaining a utility model is inexpensive than patents.
• Most countries grant utility model protection only to the products and not for the processes.

Utility model in different countries

Europe

In Europe utility models are limited to the territory, unlike patents; thus, only national utility models are available in European countries. Some European countries that provide utility models are Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Poland, Portugal, Slovakia, and Spain. The utility model is still absent in the United Kingdom.

Germany

German utility model law provides a grace period, which means that prior use or description of the invention based on the applicant’s work does not destroy novelty if it was made six months before the priority date of the utility model. The German utility model does not apply to the whole of Europe and is strictly limited to only Germany. In Germany, applications can be filed for both a patent and a utility model for the same subject matter to get short term and long term protection in tandem.

China

As per the WIPO’s World Intellectual Property Indicators 2020, around 96% of the world’s utility model applications are filed in China. The period of the utility model in China is 10 years, and there is a much lower examination standard. Although there is no substantive examination process for the utility model, the examination for formality is relatively strict; therefore, it is favourable that overcoming all of the formal defects for the utility model applications before filing. The China National Intellectual Property Administration (CNIPA) has been secretly updating the utility model to examine the applications smoothly. The consequence could be more substantial utility model rights if applicants can successfully prepare for and navigate the new rigours of examination.

Japan

The Japanese Utility Model Act (JUMA) provides for a protection period of 10 years. A substantive examination is not required to register a utility model that fulfils the requirements provided under Article (6-2) of the Japanese Utility Model Act.

Need for utility model in India

The Utility model protection system can play an essential role in India. Small and Medium Enterprises (SMEs) and Micro, Small & Medium Enterprises MSMEs acquire a prominent position in a developing country like India. These sectors have a commendable contribution to the Indian Economy. These sectors have been rising at an exponential rate for the last decade. It is evident from the various countries that utility model protection is less cumbersome than the regular patent procedure. Considering these facts, if India opts for a utility model, it could be highly beneficial for the innovators in the country.

The simple, inexpensive and quick procedure of the utility model protection will promote the growth of SMEs and MSMEs and inspire them for more innovations.

How utility model can prove beneficial for India

Apparently, Patent has been a game-changer in technological growth and economic development among all Intellectual Properties worldwide. On the other hand, developing countries have been immensely benefited from the utility model protection. The utility model in developing countries plays a vital role in safeguarding the innovations at a lower cost for a certain period. Being developing and one of the fastest-growing countries globally, India needs to recognise the utility model protection.

The Indian Patents Act, 1970, follows the threefold criteria of novelty, inventive step and non-obviousness prescribed by the Trade-Related Aspects of Intellectual Property Rights (TRIPS) for a product or process to qualify as patentable subject matter. A large number of startups and small innovators are getting registered every day in India. Most of these startups offer innovative services but lack inventive-step criteria for patentability. Due to the absence of the utility model in India, most Indian Startups and small innovators with innovative working models cannot opt for patent protection. And without patent protection, other competitors in the market can copy the technology of innovation which leads to the risk of infringement and market loss. Unfortunately, these startups and small innovators often face such situations.

Small and Medium Enterprises (SMEs) and Micro, Small & Medium Enterprises (MSMEs) in India usually lack funds to conduct tests and trials and pay high patent costs. In that situation, the Utility model protection may be highly beneficial for them. The recognition of utility models in India would assist startups and small innovators by granting inexpensive and rapid enforceable IP protection.

Parameters that need to be considered regarding the utility model framework in India

Inventive Step Threshold

The inventive step threshold criteria prescribed under the Patent Act, 1970 is relatively rigid; to overcome this, India should adopt a utility model with relenting ‘inventiveness’ criteria. The registration process should be smooth, easy and technically less complicated so that the Startups and innovators operate it without any difficulty. More focus should be given to the Novelty and Non-obviousness criteria rather than the Inventive step.

Novelty

The elemental principle of Patent Law is that a patent is granted to an invention that must have utility and novelty. For providing protection under a utility model, the novelty criteria should be the primary criteria. However, selective absolute novelty criteria should be applied to decide whether an incremental invention is eligible for protection under the utility model.

Substantive examination

Like China and Japan, a substantive examination should not be compelled to register a utility model that fulfils the other basic requirements. A formal examination mainly focused on novelty should be conducted. Not only does this saves time, but it also lessens the work burden at the Patent Office.

Grace Period

In most countries, the grace period is usually 6 to 12 months. Innovators should be provided with a grace period (between 6 months to 12 months) to protect their innovation from unauthorised disclosure of their invention. This grace period can be beneficial for protecting the interest of SMEs and individual Innovators who expose their inventions at scientific/commercial conferences or through publication to attract investors.

Protection Period

The protection period under the Patent Act, 1970, is 20 years from the date of filing the application. The protection period under the utility model should be lesser than the Patent Act. It should not go beyond 10 years and preferably should be around between 6 and 8 years. It should provide the provision of renewal of the invention at the exhaustion of two-thirds of the stipulated period.

Registration Procedure

The registration procedure to secure utility protection should be easy, quick and uncomplicated. Therefore, the total period from filing to grant should ideally be around 6 to 8 months. Any formal objection related to the examination report should be complied with within 2 to 3 months from issuance of such examination report.

Should there be a separate legislation for the utility model

The utility model is the need of the hour in India. There should be a separate legislative framework regarding utility model protection. Any attempt to adjust the provisions of the utility model or amendment in the Patent Act and Design Act would dilute the whole Act. A well-drafted specific utility model legislation would provide better protection to the inventors.

Transmutation

The applicants should provide the facility for transmutation from Utility model applications to Patent applications and vice versa. It could be beneficial for small inventors and SMEs. When the inventive step threshold under the Patent Act obstructs the Patent application, they can opt for the cheaper and quicker protection under the utility model through transmutation. The applicants should not be barred from filing a new utility model application if their patent application is rejected due to a lack of inventive step threshold.

Conclusion

India has always been a country of brilliant minded innovators. In the last decade, India has recorded a tremendous growth in grant of Patents, but if we compare the data with other countries, we are still far behind as per our standard. Here innovators may lack resources, but there is no dearth of creativity. Unfortunately, due to the stricter, expensive and time-consuming Indian Patent regime, most of the innovative products/inventions failed to qualify for patent protection. Thus, to overcome this, the utility model should be recognised in India.

Moreover, India should learn from other Asian countries like China and Japan, providing better protection and promoting small innovators through utility models. India should introduce separate legislation for the utility model protection. This model will encourage and motivate small innovators and SME’s for more innovations so that they not only invent but also patent their inventions. Patent inventions will lead India towards self-reliance and help in the overall development of the country.

References

1. https://www.ip-watch.org/2011/07/13/does-introduction-of-a-utility-model-protection-regime-make-sense-in-india/
2. https://ssrana.in/articles/india-does-establishment-of-utility-model-make-sense/
3. https://www.mondaq.com/india/patent/348624/utility-model-patent-road-ahead-?type=mondaqai&score=92
4. https://www.mondaq.com/india/patent/325864/need-for-utility-model-protection-in-india?type=mondaqai&score=80
5. https://www.mondaq.com/india/patent/367138/utility-model-in-india-soon-to-be-a-reality?type=mondaqai&score=77
6. https://www.legalserviceindia.com/legal/article-2338-utility-model-and-its-need-for-protection-in-india.html
7. https://www.applytrademark.co.in/utility-patent/
8. https://www.wipo.int/patents/en/topics/utility_models.html
9. https://www.ipwatchdog.com/2019/07/28/utility-model-examination-china-quietly-changing/id=111451/#:~:text=In%20China%2C%20a%20utility%20 model,then%20for%20 regular%20 invention%20 patents.
10. https://www.jpo.go.jp/e/faq/yokuaru/utility.html
11. https://www.patentregistration.co.in/patent-law-india/
12. https://www.dpma.de/english/utility_models/index.html
13. https://ec.europa.eu/growth/industry/policy/intellectual-property/patents/utility-models_en

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