A Utility Model (UM) is a form of intellectual property right that provides its owner with an exclusive right over a technical invention. Often considered to be somewhat of an oddity in the IP world, they provide a means of obtaining fast and cheap protection for technical inventions. UMs are also referred to as “short-term patents”, “utility innovations” or “innovation patents”.

In Europe, UMs are available in many but not all countries and are territorial in effect, insofar as the right can be enforced only within the country in which the UM is granted. The EU Commission proposed an EU Directive on Utility Model Protection is 1996, with a view to harmonising UM provisions across the EU, but the proposal was withdrawn in 2006, with the result that the provisions regarding UM protection in Europe differs from country to country.

The Table below provides, for a selected number of EU States that offer UM protection, details of the term and requirements for obtaining a UM. As will be apparent, many differences exist from country to country, including the protection term (6 to 10 years) and the registration process. In addition, some countries allow the conversion of a patent application into a UM application, in particular in cases where a patent application is refused.

All of the countries listed in the Table require a technical invention, and for the invention to be novel and industrially applicable. Interestingly, the novelty provisions for the German UM (Gebrauchmuster) do not require that the invention is novel over public prior use or oral disclosure outside Germany. In addition, Germany applies a six-month grace period for UM applications. In terms of inventive step, some countries require the invention to be inventive (e.g., France and Spain), and some require a level of innovation that is somewhat less than not obvious to a person skilled in the art. As an example, the Irish version of the Utility Model (Short Term Patent) must be novel and not clearly lacking an inventive step to be enforceable.

Apart from Poland and Portugal where Utility Models are subject to substantive examination, substantive examination is not required in the other countries listed in the Table. When it comes to enforcing a Utility Model, many countries require the owner to provide evidence to a Court that the Utility Model meets the local statutory provisions before allowing the UM to be enforced.

The subject matter that can be protected with a UM also differs from country to country. For example, methods and process cannot be protected with a UM in Germany and Italy, and pharmaceutical substances cannot be protected with a UM in Italy and Portugal. Most countries also exclude from patentability subject matter that is excluded by the European Patent Convention, such as methods of treatment and diagnostic methods.

Utility Models undoubtedly provide a fast and cheap method of obtaining protection for technical innovations, and can provide a useful second tier protection for certain technical inventions, especially inventions where there may be doubts about the level of inventiveness of the invention.

Please contact us if you require any further information on Utility Model protection in Europe.

TABLE

Country	Term (years)	Novelty/Inventive Step	Excluded subject matter*	Substantive Examination
Ireland	10	Novel and not clearly lacking an inventive step		No
Germany	10	Novel and inventive	Methods and Processes	No
France	6	Novel and inventive		No
Spain	10	Novel and inventive		No
Italy	10	Novelty and inventive activity	Pharmaceuticals, chemicals, methods and processes	No
Denmark	10	Novelty	Methods and processes	No
Finland	10	Clearly different from the prior art	Processes
Czech Republic	10	Novelty and exceeds scope of the skill in the art	Production processes	No
Austria	10	Novel and inventive		No
Poland	10	Novelty and technical character	Substances or methods of manufacture	Yes
Portugal	10	Novel and inventive	Pharmaceuticals, chemicals and processes	Yes
Greece	7	Novelty		No

 

* Examples of excluded subject matter. In many countries, UM protection is also excluded for subject matter that is excluded from patent protection under the EPC, such as methods of treatment and diagnostics, mathematical methods, etc.

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