Utility Models in India: A Probable Reality

12 September 2012

India’s Department of Industrial Policy & Promotion (DIPP), which falls under the Ministry of Commerce & Industry, is responsible for formulating and implementing intellectual property rights policies in India. Recently, DIPP has put a discussion paper on its website inviting suggestions and feedback on 10 resolutions pertaining to utility model legislation. The most important and fundamental question was whether India needs a utility model protection.

There have been several amendments to the Indian Patents Act, in 1995, 2002 and 2005, with the 2005 amendment being particularly designed to include a higher threshold for inventive step. A higher threshold for inventive step is seen as inhibiting the protection of creeping and incremental innovations, which are no less worthy and useful to society.

Presently, inventive step is a subjective criterion; determining its presence is known to be very difficult for examiners and attorneys alike. So, are we making their job even more difficult by adding to the dreadful question: ‘If the inventive step is present, then how much of it is present? Is it a patentable inventive step or a utility model inventive step?’ Or, are we making their job easier by providing them with a midway, fuzzy logic option?

According to DIPP, utility model protection will be a framework for providing limited protection to those innovations which may not meet the standards of the Patents Act and yet are commercially exploitable and socially relevant. The paper, very aptly, refers to jugaad in the same context. In Indian parlance, jugaad may refer to small incremental workshop changes which are born as result of the necessity to solve an instant momentary problem.

The question may then be rephrased: Can anyone claim a monopoly on the jugaad?

I am a student of law and shall remain so throughout my life. Law does not appreciate monopoly and inhibitions to social equitability. The price for getting a patent granted – a monopoly – is the complete disclosure and enablement details of the invention which helps promote further research and development, or quid pro quo.

A lot of countries have successfully implemented a utility model protection system parallel to their existing patent law. In line with the same, it is understood that the protection period for utility models will be less than that for patents. Analogically, it is like settling for a lesser reward for a lesser invention – or, weaker inventive step.

Is monopoly the only way that these innovators may be rewarded?

On the flip side is a suggestion to let the utility model and patent prosecution run simultaneously at the discretion of the applicant. Following is the framework suggested by author.

Temporary utility model rights may be granted based upon a preliminary novelty search. The applicant/owner of the utility model may send infringement notices to the alleged infringer. The alleged infringers can then file their replies with citations of prior art and help the examiner in deciding the case. Apparently, a failure of novelty test will deem even the patent application rejected. Again, the owner of the temporary rights is given an option of filing for an express utility model examination report at a premium rather than getting into an infringement suit. The same is represented in the flowchart at the lower left.

This system will not only increase the speed with which one can obtain protection, but will also save the patent office a lot of examination time.

Krishna & Saurastri

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