Do you have an innovative idea that could make a difference, but you don’t know how to protect it without getting into a mess of paperwork and expenses? Don’t worry, there is a much more agile solution than a patent: the utility model. This system allows you to shield your invention quickly, economically, and securely. Especially if you are part of a small or medium-sized enterprise or if you are an entrepreneur who wants to take care of their innovation from the very beginning.
In this post, we are going to look step by step at how you can protect your creation using a utility model. But first, you need to fully understand what it consists of and why it might be the best option for you.
What is a utility model and why should you keep it in mind?
Imagine you have just designed an object that improves an existing product or you introduce a technical novelty that facilitates a specific task. Of course, it is not a global revolution, but it does represent an important advance. For these types of innovations, the utility model is perfect.
In short, a utility model is an exclusive right that allows you to exploit your invention and, most importantly, prevent others from manufacturing, selling, or using your creation without your permission. It’s that simple! In fact, it is not so much about you having to manufacture or commercialize the product, but rather that you have the power to exclude others from doing so. This exclusivity gives you the room to negotiate licenses, seek investors, or directly launch your invention to the market with total peace of mind.
The best part? The utility model is faster and less costly than the traditional patent procedure. Certainly, if you are concerned about the expense or the number of requirements for a patent, this alternative may be the answer you were looking for.
Furthermore, it is ideal for those technical improvements which, although they don’t change the world, do provide significant value. So if your invention fits that definition, don’t hesitate: betting on a utility model is a smart move.
What you should know before starting: conditions and characteristics
Before filing your application, there are some important things you need to know:
- Form and utility. As we mentioned, to protect your invention through a utility model, it must involve a technical advantage that stems from its configuration, structure, or composition. This is set out in Article 137.1 of the Patent Law.
- What cannot be protected. Procedures, inventions related to biological matter, and medicines are not protectable through a utility model. Neither are plant varieties.
- Limited duration. Utility model protection lasts for 10 years from the filing date. It cannot be renewed or extended, but that decade gives you a good margin to exploit your invention.
- Provisional protection. Indeed, from the moment your application is published, you can already start demanding compensation if someone uses your invention without your permission, even before the model is formally granted. This gives you additional support while you wait for the final resolution.
- International extension. Just as with patents, you can take advantage of the 12-month priority right to apply for protection for your invention in other countries. This way, you first register it in Spain and then decide if you want to protect it in Europe or worldwide.
- Cost and speed. Registering a utility model is not only cheaper than a patent, but the process is also much more agile. However, although a substantive examination of the state of the art is not required, anyone can file oppositions before it is granted.
- Optional examination. It is not mandatory, but you can request a state of the art report if you want to have a clearer idea of how your invention stands in relation to others already registered.
What should you do before applying for the registration of your utility model?
Having the idea is the first step. Protecting it well is the next. However, before making your application you must take into account the following actions and precautions:
1. Perform a prior search. Before starting, make sure your invention is not already protected. You can perform a free search in databases such as:
- INVENES: if you want to search in Spanish.
- Espacenet and Patentscope: for searches on a worldwide level.
Moreover, those who want something more exhaustive usually request Patent Technological Reports (ITP) from the Spanish Patent and Trademark Office (OEPM). If you choose this option, for a reasonable public cost, a specialized technician will review worldwide databases and provide you with a detailed report.
2. Keep your invention secret. Very important: do not publish or tell your idea before registering it. In this regard, any prior disclosure can destroy the novelty of your invention and void the possibility of protecting it. This includes publications on social networks, blogs, newsletters, conferences… It is better to be cautious and keep the secret until you have the utility model in process.
3. Define the geographical scope. Think about where you want to protect your invention. Only in Spain? In Europe? In other continents? This decision will help you choose the best protection strategy: national utility model, European patent, or international application (PCT).
4. Take advantage of the priority right. When you file your utility model in Spain, you will have 12 months to extend that protection to other countries if you so wish. Precisely, this period gives you time to assess the market acceptance of your invention before investing in more expensive international registrations.
How to register a utility model? The process step by step
Registering a utility model can seem like an obstacle course if you don’t know where to start. Even so, don’t worry; with a little organization and by following the right steps, you will achieve your registration without any shocks. Let’s see, clearly and directly, how to do it.
Prepare the initial documentation
Before filing your application, you must gather a series of essential documents. It is like preparing your backpack before an excursion: if you forget something important, you could be left halfway.
- Descriptive report: In this document you will explain in detail what your invention consists of and how it is carried out. For these purposes, think that whoever reads it must understand it perfectly, even without knowing your sector.
- Claims: These are the elements you want to protect. Define well which parts of your invention are the ones you don’t want others to copy.
- Summary: A small summary that serves as a cover letter for your invention.
- Drawings: They are not always mandatory, but if your model is technical or visual, it is in your interest to include clear diagrams or illustrations.
- Proof of fee payment: Just as important as the rest. Without it, the process comes to a halt.
File the application with the OEPM
With everything in order, the next step is to file the application with the Spanish Patent and Trademark Office (OEPM). You can do it online or in person, as you prefer. At this moment, the clock starts ticking.
The filing date, your starting point
Once you deliver the documents, the OEPM reviews if everything is in order to give you a filing date. Without a doubt, this is a key moment, because it marks the birth of your rights. To be granted one, you need to meet three basic requirements:
- Indicate that you are applying for a utility model.
- Provide sufficient information to identify yourself.
- Attach something that looks like a description of the invention.
If anything is missing, they will notify you and you will have two months to correct it. Otherwise, the application will be considered as not filed. Practical tip: although it is not mandatory to submit the claims in this initial phase, doing it from the beginning makes things much easier.
Ex officio examination
After validating the filing date and confirming the payment of fees, the OEPM performs an ex officio examination. In reality, it is not a difficult exam, but it is rigorous: they check that your application has no errors and that it does not affect national defense. If they detect a problem, they will notify you so that you can correct it within two months. Failure to respond is equivalent to abandoning the application.
At this point, it is important to mention that any communication must indicate the application number, so that everything is correctly recorded.
Publication of the application
If all goes well, your application is published in the Official Intellectual Property Gazette (BOPI). The main data, claims, and drawings (if any) will be made public. Likewise, a brochure is edited where all the relevant information of your utility model is collected.
Opposition period
From the time of publication, anyone who considers that your model does not meet the requirements (for example, lack of novelty or inventive step) has two months to file an opposition. By the way, this is normal and is part of the process. If an opposition is filed:
- You will have the opportunity to defend your model, either by modifying the claims or by presenting allegations.
- However, modifications cannot expand the original scope of the invention.
Afterward, the OEPM will give a turn to reply to whoever filed the opposition, following a process very similar to an exchange of arguments in a debate.
Final resolution
When the opposition period ends (or if there were none), the OEPM dictates its resolution. If all has gone well, you are granted the utility model title, and with it, the exclusive right to exploit your innovation. In the event of oppositions, the resolution will take into account the arguments of all parties before deciding.
In this way, after completing these steps, your utility model will be registered and protected. At first glance, it may seem like a long process, but by following the right path everything becomes much simpler.
ISERN, your ally to register your utility model
At ISERN we have spent over 100 years accompanying inventors and companies on the challenging path of protecting their ideas. We help you decide whether the best thing for you is to apply for a patent or a utility model. In this sense, we offer you all the information you need to make the best decision, in a clear and personalized way.
Our team of specialists accompanies you at every stage: from the preparation of the application to the defense of your rights if necessary. We take care not only of processing your registration, but also of monitoring that no one uses your invention without permission, acting quickly and firmly if any problem arises.