Shamnad had discussed the use of utility model (UMs) applications in a previous post here. The Department of Industrial Policy and Promotion (DIPP) recently posted a discussion paper on the possibility of granting patents for UMs on its website, available here. The DIPP seeks specific views and suggestions on Section X of the paper entitled ‘Issues for Resolution’ and any related issues. The objective is to develop a suitable framework for protecting utility models, in the event it is felt that it is desirable.
The DIPP has specifically invited comments/views and suggestions backed up by facts, figures and empirical evidence by June 30, 2011 on Section X. We encourage our readers to post their comments to the issues listed below. Section X lists out the followings issues:
1. Does India need a Utility Model Law?
2. What should be the scope of protection of such a law? Should it be restricted to mechanical devices?
3. What parameters should be adopted in the law with respect to inventive threshold, substantive examination, grace period, exhaustion, protection period and registration procedure ?
4. What novelty criteria should be adopted? Should they be absolute or relative ?
5. What should be the nature of linkages between this law and the existing Patents Act? How do we ensure that the existing Patents Act, which is a bulwark against the ever greening of patents , remains undiluted ?
6. What legislative route should be adopted? Should a separate law to protect utility models be enacted ? Or should the Patents Act be suitably amended ? Or should the Designs Act be amended ?
7. Should the facility for temporary protection of an invention as a utility model pending grant of a patent be built into the legislation? Should it be specifically mandated that only one form of protection would be available at any time?
8. Should applications for patents be transmutable to utility model applications and vice versa whenever the applicant so desires ?
9. Should any specific provisions be introduced in the proposed utility model law to promote domestic filings as well as applications from SMEs? Can we use this model to protect some part of our traditional knowledge?
10. What enforcement procedure should be put in place? What should be the dispute resolution mechanism? Who should be the adjudicating authority?
11. To obviate monopolistic dominance, should the adjudicating authority be empowered wherever public interest is involved, to award compensation/royalty in lieu of restraining the infringement?
The DIPP discussion paper is not quite accurate as regards Belgium and The Netherlands: both countries have abolished their 6-year patents as legal certainty is better served by patents that are granted after a novelty search plus written opinion have been drawn up.
Each advantage of the utility model system is also a drawback for third parties.
– If patents are only granted if the invention is both novel and non-obvious, a third party is free to do whatever is old and/or obvious. That freedom is taken away if utility models are granted for innovations that do not meet the absolute novelty test or that are obvious.
– If patents are only granted after a substantive examination has shown that the invention meets the patentability criteria, legal certainty is served both for the patentee and third parties. However, if by means of a utility model system an e.g. 10 year exclusive right is granted without substantive examination, third parties do not know whether this utility model is merely a piece of paper without value, or a serious weapon they need to respect for the next e.g. 10 years.
The fact that a utility model only has a maximum life-term of e.g. 10 years does NOT distinguish a utility model from a patent, as most patents are abandoned well before the maximum term of 20 years.
Finally, because the Paris Convention does not allow treating foreigners differently from locals, not only Indian applicants will benefit from a utility model system, but also foreigners.
Anonymous your comments raise genuine issues about UMs. However consider that the countries where UMs have the most acceptance, namely China, Korea, and Germany, are countries where there is a “substantial difference” in the patentability standards for UMs and regular applications. In other words it would not benefit us if we adopt the model from any one country directly. We may need to mix and match the best from other systems for our country.
There is empirical evidence that in China, Korea and Germany-UMs are used maximum by local residents rather than the other way around.
Dear Rajiv,
I would put my deliberations later, but few quick observations…….
you saying “empirical evidence that in China, Korea and Germany-UMs are used maximum by local residents rather than the other” is it not important to see the ratio of patent filing by domestic applicants also…………in India patents by public players itself is very low……imperial relations may not hold good here
secondly, are we planning for UM just because it is available in other few countries or we really need it ????? are we really that matured and established in terms of patents system???…………
SD
Dear Anonymous/SD: The point I raised was that we should tailor our laws to meet our requirements first keeping in mind best practices. We should not copy the laws from any other country blindly.
The reality is that small inventors in our country can ill afford the cost of a patent application drafting/attorney fees. It is for the small inventor that this proposed law should help. If the benefits reach other strata (like corporations) etc., so be it.
A utility model application needs to meet about the same requirements as a patent appliaction as regards sufficiency of disclosure as well as clarity and conciseness of claims. So, if you want something that has value when used in court, you better hire a patent attorney to draft and file the utility model application. A person who has no experience-based skills in drafting patent claims, cannot draft a utility model application either. So, any cost advantages for small applicants only result from the absence of a substantive examination, with the downside that the UM owner does not know whether his UM is only a nice piece of paper with an official stamp, or something that has real value. If only in court it appears that the UM is only a nice piece of paper, the UM owner may have to pay a lot of litigation costs (including costs of the other party).
Anonymous @ 7:22 PM: “..about the same..” This situation exists in Australia where there is little difference in UMs and regular patents. This is also the reason why UMS are not popular in Australia.
China and Korea file the largest number of UMs – empirical data from WIPO statistics and practitioner views suggest that it is because there is a huge difference between a UMS and a regular application-UMs are much cheaper to file; have a shorter life span; patentability requirements are low-limited search etc. and enforcement measures are limited to a few select ones.
At the time of litigation, there is an option for the UM patentee to convert the application to a regular one.
I think China and Korea must be doing something right to support both regular and UM applications.