When it comes to protecting inventions, it is important to be familiar with the different types of intellectual property (IP) titles available. Some may think that they are protected by a patent, but soon realise that they actually needed a utility model; others, meanwhile, do not know what type of protection is most suitable for their invention. Understanding the differences between patents and utility models can help creators ensure that their innovative works are duly registered for legal protection and defence. In this blog post, we will discuss the important distinctions between these two common forms of IP titles.
Patent and utility model: definitions of each concept
Law 24/2015 on Patents does not specifically define what a patent is, but it establishes certain criteria such as novelty, inventive step and industrial applicability to determine whether an invention is patentable. By filing a patent, the holder obtains a legal monopoly over the invention in the country in which it has been filed. This gives them the exclusive right to exploit the invention and to take legal action against those who try to use it without their consent.
A utility model, on the other hand, is a form of protection granted to an invention that submits a practical advantage in its use or manufacture. To be considered a utility model, the invention must be new and have an inventive step, but the requirements are less strict than those for a patent. Therefore, they are used as an alternative to protect inventions of a lower inventive level. In general, utility models are used to protect minor innovations that would not meet the criteria for patentability.
Differences between patent and utility model
Although patents and utility models share some similarities, there are important differences that make them unique and suitable for different types of inventions. Let’s look at some of them, taking into account different criteria:
Object of protection
A patent is granted for a completely new invention, while a utility model protects an improvement on something that already exists. Considered as ‘minor patents’, the regulation of utility models differs slightly, but they are still a valuable tool for protecting intellectual property.
Duration
Patents for inventions have a maximum duration of 20 years, while utility models have a maximum duration of 10 years. It is important to emphasise that in both cases, annuity payments must be made to the registry office to maintain protection of the invention.
Different procedures when registering a patent and utility model at the OEPM
If you are thinking of protecting an invention, it is important that you know the differences between a patent and a utility model in terms of the procedure before the Spanish Patent and Trademark Office. One of the most relevant is the registration process itself, because while the utility model is quicker, cheaper and more accessible to register, the patent is subject to a more rigorous analysis by the OEPM. In addition to filing a report, in the case of the utility model it is not necessary to request the report on the state of the art, nor to obtain the prior examination of novelty.
Level of difficulty in outsourcing the invention
If you have an invention that can be protected as a utility model, it is important to know that not all countries recognise this type of protection. This lack of homogeneity can make it difficult to protect your model when it comes to internationalisation. If you want to protect your invention abroad, through a PCT procedure or a European patent, you will have to comply with the requirements of the patent. This can be a challenge, as your invention would have to live up to a patent with higher requirements in terms of inventive step.
Restrictions on registering a utility model
Finally, another of the most important aspects to bear in mind is that while the patent law protects both products and procedures, the utility model only protects products. In fact, the Patent Law expressly prohibits protection by utility model of procedural inventions.
Any more questions about registering patents and utility models? At ISERN we can help you
In conclusion, whether you are applying for a patent or a utility model, knowing the differences between the two can help you determine which option is best suited to your invention. Although the patent route is usually more solid and has greater international possibilities, each invention must be evaluated individually in order to make the best decision.
At ISERN we are committed to helping inventors decide which is the best option and to providing them with the necessary knowledge. If you have an invention that meets the requirements for patent or utility model registration, do not hesitate to contact us and start protecting your intellectual property today.