To protect one’s technical solution, when is it more appropriate to file an application for an invention, and when – for a utility model?
This decision should be made on a case-by-case basis, depending on the subject matter and goals of patenting, as well as taking into account the specifics provided in the table below.
|Object of protection
||Product (in particular device, substance, strain of microorganism, cell culture of plants or animals) or method
||Novelty, inventive step, industrial applicability
||Novelty, industrial applicability
|Term of protection
||20 years (with possible extension up to 5 years for inventions relating to such products as a drug, pesticide or agrochemical, which use requires obtaining the established by law authorization, in case more than five years lapse from the date of filing of the patent application to the date of obtaining of the first authorization)
|Approximate time to obtain a patent
||24 – 30 months
||6 - 12 months
As one can see from the table, only a device can be protected as a utility model. At the same time invention patents grant protection to each of the devices, chemical substances, strains of microorganisms, cell cultures of plants or animals as well as methods. For example, if there is a need to obtain patent protection for a chemical substance, one should file an application for the invention rather than for the utility model.
As far as such patentable object as device is concerned, we should point out that one can obtain a utility model patent easier than an invention patent, since the utility model is not required to have the inventive step (unlike the invention). Thus, in order to get a utility model patent one could take two previously known devices and merely combine them, also proving novelty and industrial applicability. Inventive step is not required in this case.
However, the extent of legal protection of an invention is somewhat broader than the one of a utility model, because the assessment of infringement of IP rights includes equivalents doctrine.
When choosing between a utility model and an invention patent, one should also consider the risk of patent invalidation. Since inventions are subject to additional patentability criterion of inventive step, possible invalidation actions can have additional grounds – lack of inventive step.