What is an Utility Model Patent?
Utility Model Patent
An utility model is similar to a patent in that it provides a monopoly right for an invention. However, utility models tend to be much cheaper to obtain, the requirements for grant of a utility model are usually less stringent and the term is shorter. Not all countries grant utility models. However, countries granting utility models (or similar/equivalent rights with a different name) do include Germany, France, Spain, Italy, Japan, China and Australia.
Whereas a patent provides protection for up to 20 years, a utility model provides protection for a shorter term, usually between seven and 10 years.
Safeguards against abuse of patent rights:
Safeguards against abuse of the rights granted by patents have been built in under the Patents Ordinance and they apply to short-term patents as well as standard patents.
Remedies for groundless threats:
Where a person by circulars, advertisements or otherwise threatens another person (“aggrieved party”) with proceedings for infringement of a patent (other than an infringement alleged to consist of making a product for putting on the market or of using a process), the aggrieved party may initiate proceedings against the party making the threats if he can prove that the threats were made and that he is a person aggrieved by such threats. However, a notification of the existence of a patent does not of itself constitute a threat of proceedings.
The patent owner may, by way of defence, prove that the acts in respect of which proceedings were threatened would constitute an infringement of a patent; whereupon the aggrieved party shall not be entitled to the relief claimed unless he can show that the patent concerned is invalid in a relevant respect.
The relief available is (a) a declaration to the effect that the threats are unjustifiable, (b) an injunction against the continuance of the threats, and (c) damages.
China Utility Model Patent Registration:
Requirements:
Utility models mean new technical solutions proposed for the shape and structure of a product, or the combination thereof, which are fit for practical use.
Required Documents:
- Patent Documents (Brief description of the appearance design and Drawings
of the designed product) - The name of invention, the name and address of applicant, the name and
address of inventor - Power of Attorney
Affiliated Office and Duration:
State Intellectual Property Office of the People’s Republic (SIPO)
Normal process (9-12 months)
Application→Deficiencies Checking→Publication and Recordation→Issuance of certificate
Protection period:
The duration of the Utility Model patent right shall be 10 years.
*Remark: The patentee should pay annual fees to maintain the right of patent.
Hong Kong Short-term Patent (Utility Model)
Requirements:
The grant of a short-term patent in Hong Kong is based on a search report from an international searching authority or one of three designated patent offices.
Required Documents:
- Patent Documents (Brief description of the appearance design and Drawings
of the designed product) - The name of invention, the name and address of applicant, the name and
address of inventor - Power of Attorney
Designated Patent Office:
- The State Intellectual Property Office, People’s Republic of China
- The European Patent Office, in respect of a patent designating the United Kingdom
- The United Kingdom Patent Office
Affiliated Office and Duration:
Hong Kong Intellectual Property Department (HKIPD)
Normal process ( 3-4 months)
Application →Deficiencies Checking →Publication and Recordation →Certification
Protection period:
A short-term protection under a short-term patent is renewable after the end of the fourth year, up to a maximum term of 8 years.
*Remark: The patentee should pay annual fees to maintain the right of patent after 4th year of registration.
