At this previous article In our blog, we explain why it is very important that, if you have developed a product or process that you believe can be patented, you should not disclose or publish it before consulting a specialist (a industrial property agent or a patent attorney) to advise you on whether your invention can be protected as patent or as utility model.
You've probably heard of these two figures. In today's article, we explain the main differences between a patent and a utility model, with Spanish regulations in hand.
What is a patent?
The Law 24/2015, on Patents, does not define what a patent is. It states, in Article 4, that “inventions that are new, involve inventive activity and are susceptible to industrial application”.
As we explained in our Frequently Asked Questions, A patent is a form of industrial property protection granted for an invention. The protection afforded by a patent constitutes a genuine legal monopoly in favor of its owner, who has an exclusive right to that invention in the country where it has been protected.
The mechanics of patent protection are easily understood if reflected as a contract between the State and the inventorLet's say that an inventor has devised and developed an invention that has taken time, effort, and, in most cases, a more or less significant financial investment. It is reasonable that they would want to protect their invention from third parties who have not invested that time and effort. However, granting the inventor indefinite protection would paralyze technological progress and block the market to the detriment of consumers. For this reason, the State grants a legal monopoly for a limited period of time (in the case of Spain and Europe, generally a maximum of 20 years), after which the patent falls into the public domain and can be freely exploited (and commercialized) by anyone.
But the obligations of this contract with the State do not end there. Given that it is difficult for an invention to be studied and developed in a short period of time, it would also constitute a barrier to technological progress if the inventor's competitors were unable to access clear and complete information about the invention (except by reverse engineering, which is complicated in many cases), so that they could improve it or make new inventions with different or more useful industrial applications based on the first. That is why the State requires (as an inexorable condition for the conclusion of the “contract”) that the patent, when applied for, is drafted in a descriptive report in such a way that any expert in the field can execute it; so that, on the one hand, it can be improved without being infringed during its term of validity and, on the other hand, when it falls into the public domain, it does not take an excessive amount of time for competitors to begin developing and/or marketing it, if they are interested in doing so. Thus, it is the inventor himself who must explain as fully as possible what his patent consists of, in which field of technology it operates, what its function is, what problem it improves or solves, and what already exists in the state of the art on which it is based.
What requirements must an invention meet in order to be registered as a patent?
An invention is patentable if it meets three basic requirements: novelty, inventive activity y industrial application.
- New: an invention is new when it is not included in the state of the art. In general terms, the state of the art consists of everything that has been made available to the public in Spain or abroad prior to the date of filing of the patent application (i.e., internationally) by a written or oral description, by use, or by any other means. Therefore, it is vitally important that if you have an invention that may be patentable, you do not disclose or publish it prior to the date of filing the patent; otherwise, it will no longer be novel at the time of filing, even if such disclosure was made by the inventor himself.
- Inventive activity: an invention has inventive step if it is not obvious to an expert in the field from the state of the art. This means that the invention that is the subject of the patent application may not actually exist in the prior art, but it may be obvious to an expert in the field, in light of the existing prior art, that the conclusion reached by the inventor could have been reached, particularly by combining existing inventions.
- Industrial application: the industrial application of an invention is fulfilled when the object of the invention can be manufactured or used in any kind of industry.
What are the differences between a patent and a utility model?
For an invention to be protectable as utility model, these three requirements must also be met, albeit with some nuances. The main differences between a patent and a utility model are:
- Object of protection: while a patent protects an invention that could be described as more “absolute” or more complex (for example, a vaccine against coronavirus), a utility model protects inventions that consist of a useful improvement to something that already exists (for example, including a thread on the mop handle so that the mop head can be changed). Article 137 of the Patent Law specifies that inventions that “consist of giving an object or product a configuration, structure, or composition that results in any practically appreciable advantage for its use or manufacture”Also known as “minor patents,” utility models protect inventions that do not reach a sufficient level of inventiveness to constitute a patent.
- Inventive step required: New inventions with industrial application are considered protectable as utility models, provided that they do not result from the state of the art in a manner very obvious to an expert in the field (Article 140 of the Patent Law). The difference is subtle compared to the inventive step required in the case of patents, but the fact is that the inclusion of the adverb “very” relaxes the degree of inventive step required in this figure.
- Duration: as is logical, the maximum duration of a utility model is shorter than that of a patent. In the case of patents, the maximum duration of protection is 20 years (Article 58 of the Patent Law), while in the case of utility models, the maximum duration is 10 years (Article 148 of the Patent Law). In both cases, annual fees must be paid to the registration office to maintain protection.
- Proceedings before the Spanish Patent and Trademark Office (OEPM): although a descriptive report must also be drafted for utility models (which differs from that for patents in that it does not have a summary; however, in essence, the format of the report is the same), The process of obtaining a utility model from the OEPM is much faster, cheaper, and simpler than in the case of patents., since the request for a Prior Art Report (IET) is not mandatory, and the OEPM does not carry out a substantive examination, i.e., it does not examine the novelty and inventive step of the invention. This means that if the utility model application is formally correct and no oppositions are filed, the SPTO simply grants the application, even if an invention identical to the one applied for as a utility model has already been disclosed in the prior art. This does not mean that the utility model granted is absolutely valid, as it may be subject to subsequent nullity before the competent courts; for example, due to lack of novelty or inventive step of the protected invention, given that the OEPM does not examine these circumstances in the registration procedure. Thus, having a utility model granted without having carried out prior searches in the state of the art to ascertain whether the invention is novel and involves an inventive step (for example, through the application of a Patent Technology Report or PTR) doesn't make much sense, beyond being a marketing ploy for the headline.
- Impossibility of protecting procedural inventions: if your invention consists of a process rather than a product, protection must necessarily be sought by means of a patent, not a utility model. The Patent Law prohibits the protection of process inventions by utility models (Article 137). This may be particularly relevant in the case of computer-implemented inventions (which we briefly refer to in this post).
- Greater difficulty in internationalization: if your invention is protectable as a utility model, you should bear in mind that not all countries in the world recognize this concept. This makes it difficult to internationalize the protection of the model, given that, if you want to opt for certain protection strategies abroad (such as a procedure for international patent PCT, or a European patent), the invention will be treated as a genuine patent and, in the process, the requirement for inventive step will have to be met with the same standards as for a patent; this can be problematic if the invention does not have sufficient inventive step. For this reason, utility model protection could be described as more “local” (for Spain and perhaps a few other countries), but if you want to obtain protection in many territories, the utility model is not the solution. You can find a list of countries that provide utility model protection here. here.
Is a patent better than a utility model?
The choice of one or the other form of protection will depend on the invention itself and the desired strategy; however, If an invention with sufficient inventive step has been developed, it will always be more advisable to pursue the patent route., as the protection is more robust, longer lasting, and offers greater possibilities for internationalization.
If you believe you have an invention that can be registered as a patent or utility model, please write to us at this form or info@bamboo.legal. We will be happy to help you and work with you to develop the most appropriate protection strategy.
