The Case for Utility Model Patents
18 October 2012
In the present day world, the economy of any developing or developed nation is primarily knowledge driven. An innovative society is the backbone of any nation for wealth generation. Such innovative society needs to be supported and nurtured by an effective intellectual property protection system commensurate with its requirements.
Globally, IP protection for inventions is available through patents and for aesthetic visual expression of products through design registrations. Over the years, there has been considerable growth in generation and protection of IP world-wise, with the result that most patent offices of the world are overburdened with a larger number of patent matters than that they can actually handle. This has led to inadvertent procedural delays due to which the time frame for grant of patent rights has increased considerably from what it used to be initially. In India, a patent application typically takes three to five years from its filing to proceed towards grant. Moreover, the period between the filing of a patent application and the subsequent grant thereon is generally devoid of any type of strong protection as enforcement of patent is permissible only after grant.
In developing nations like India, micro, small and medium enterprises (MSMEs), which together contribute 50-75% of India’s gross domestic product, and individual inventors are major contributors of innovations. However, these small innovators, unlike large multinational corporations, cannot afford to bear the exorbitant costs involved in conventional patent procurement procedures. With a view to aid the objective of such small innovators, many countries provide another type of protection mechanism designed to protect petty inventions, which the small and medium enterprises routinely create. Such protection mechanism is commonly known as the innovation patent or utility model patent or short-term patent.
The primary criteria for granting utility model patents is that the invention should be novel, however, the standard for inventiveness or non-obviousness is relaxed to a large extent as compared to normal patent. Particularly, utility model patents are granted on incremental innovations which require short-term IP protection as they are bound to become obsolete within six to 10 years and hence do not require protection for a full term of 20 years, as in normal patent applications. Owing to the relaxed requirements regarding inventiveness, the time involved in prosecution and grant of a utility model patent is considerably less as compared to normal patent applications. Usually, the time taken for grant of a utility model patent from date of filing is in the range of six to 10 months.
Presently, the Indian patent system does not provide for utility model patents. As per the data provided in the annual report of the Indian Patent Office, the number of patent applications filed during the year 2008 09 was 36,812, of which around 6,000 patent applications were filed by Indian applicants. For India, which has a strong technologydriven and educational infrastructure, such small numbers do not reflect the true picture of the number of innovations being generated within the country. Large numbers of innovations are generated everyday in India, a majority being the product of ingenuity of small inventors such as individual inventors and MSMEs. However, in view of the long time and large cost involved in gaining patent rights on inventions, most innovations created by these innovators, generally of petty nature, are left without any IP protection.
This gap in the Indian patent system can be effectively bridged by instituting the utility model patent system. The benefits from the implementation of utility model patents could be best predicted by looking at the utility model patent system in China, where more than 98% of the applications seeking utility model patents are filed by domestic applicants. Only preliminary examination is carried out in respect of an application for utility model to check the eligibility of content for utility model protection before registering the patent. Substantive examination takes place only when an invalidation request is filed by any party or when the patentee wants to enforce a utility model patent against an alleged infringer, thereby saving considerable time in prosecution.
An applicant may choose to file an application for a patent or for a utility model at the time of filing the application. However, the utility model patent may be kept in force till the grant of a normal patent for the same invention in order to increase the duration of its enforceable rights. Moreover, the innovators having the utility model patent on their innovations get an opportunity to evaluate its commercial viability and take further decisions regarding pursuing a normal patent application for the same innovation. Accordingly, the innovator may avoid unnecessary costs on the processing of the normal patent application and subsequent maintenance costs.
To highlight the enforceability of utility model patents, the Chint Group v. Schneider Electric Low Voltage case can be cited. In the suit, the Chinese court ruled in favour of Chint, which alleged that its utility model patent was infringed by Schneider. This case highlights the fact that even incremental inventions are important and need to be protected.
The need for having utility model patents has been making the rounds in executive and legislative circles, but it has not received the necessary impetus as of now. Keeping in view the immense innovation potential likely to be unleashed by the utility model patent system, a change in the IP policy of India seems inevitable in the near future.
Lall Lahiri & Salhotra
LLS House, Plot No. B-28,
Sector - 32, Institutional Area,
Gurgaon - 122001, National Capital
Region, India
T: +91 124 2382202, 2382203
F: +91 124 4036823, 2384898
E: Rahul@lls.in
W: www.lls.in
