International Utility Model Protection for Australian Applicants (as at 28 August 2013)
1. Introduction
1.1 There is no kind of protection in Australia with the name “Utility Model”. However, it may be considered that the Australian Innovation Patent (and also possibly the former Australian Petty Patent) is a rough equivalent. Unlike the case of the Australian Innovation Patent though, most countries which have utility model protection available do not permit method claims. Utility models are not available in all patenting countries, but where they are available, they are almost universally less expensive and easier to prosecute than a patent. Utility models may be considered as an appropriate form of protection if, from a commercial point of view, an invention does not warrant the expense of patent protection. Similar considerations apply in deciding whether to pursue an Australian Innovation Patent instead an Australian Standard Patent as to the decision whether to pursue a utility model instead of a patent in other jurisdictions. Alternatively, utility model protection may be pursued where, because of publication of an invention, patent protection is unavailable due to lack of novelty or inventive step. In most countries having utility model protection, there is a different standard of patentability applied to utility models as opposed to patents. Additionally, a 6-month publication grace period often applies permitting the applicant to validly file a utility model application within 6 months of publication of the subject matter of the utility model application by the applicant. Utility models may also be pursued if a product is perceived to have a limited market life. Some countries also have “petty” patents, “small” patents, “short” patent or the like, and these are generally encompassed by this advice.
1.2 Utility models are also referred to by slightly different titles. Hereinafter, I will refer to all such similar types of protection as utility models, even though the standards of examination and allowable subject matter vary significantly from country to country. In many instances, a patent application may be converted to a utility model application.
1.3 Countries where utility model protection is available can be found in the Gazetteer on Utility Models. Please note that since utility models are not comprehensively covered by international directories, my list is almost certainly incomplete. There are several alternative courses of action which may be taken to pursue foreign utility model applications, including the following:
2.1 Australia is a signatory to the Paris Convention which establishes the International Union for the Protection of Industrial Property. It is therefore possible to claim Convention priority under the Paris Convention from an Australian Patent Application for utility models filed within 12 months from the Australian filing date.
2.2 As an approximate guide, typical costs would be of the order of $3,000.00 to $6,000.00 per country per application if using the services of an Australian Patent Attorney. Variations in cost depend largely upon the complexity of the utility model, length of the utility model specification, foreign agents’ charges and translation costs and the like. A regional utility model application for Africa may also be filed, and is discussed below.
3. International Patent Application
3.1 It is possible to pursue utility model protection through an International Patent Application filed under the Patent Co-operation Treaty (PCT). It would be necessary to file utility model applications for non-PCT countries if such are required. The International Patent Application and the non-PCT utility model applications may claim Paris Convention priority. Not all countries having utility model laws permit utility model protection via the PCT, and up-to-date information in this regard is available from the WIPO website.
4.1 Utility model applications may be filed in foreign countries on a country-by-country basis for the same costs as outlined above. If this course of action were to be adopted, it may be advisable that, before proceeding with the foreign applications, critical consideration be given to conducting a comprehensive search of the patent literature to ascertain whether the invention is novel and likely to result in the successful grant of utility models, and at the same time to assess the likelihood of whether the manufacture and/or use by you of the invention would infringe another’s rights in this area.
4.2 In addition to a search of the patent literature, it may be advisable that a supplementary search using publicly available on-line data bases relating to non-patent literature be considered. Professional searching agencies are available for this purpose. Charges for a typical patent search would be in the region of $2,000.00 to $3,000.00 or more depending upon the complexity and magnitude of the search. A non-patent literature search would be of the same order. Another alternative is to request an international-type search from the Australian Patent Office. Please note that such searches can be neither comprehensive nor guaranteed to find a relevant piece of literature.
4.3 The main disadvantage associated with simultaneous multiple country filings is that there is a relatively high initial cost associated with filing the applications, particularly is a large number of countries is involved.
5.1 The above information has been prepared from a number of diverse sources, and the whilst every effort has been made to ensure accuracy, the Webmaster cannot be responsible for any errors or omissions, and specific advice should be sought from a competent legal professional for your particular requirements.
5.2 If foreign utility model protection is to be sought in more than four or five PCT countries then the advantages of the PCT route should outweigh the additional bottom-line cost in ultimately obtaining utility model protection. Although the PCT is primarily for patent protection, a mix of utility model protection and patent protection may be pursued if desired. If foreign utility model protection only is to be sought only in non-PCT or less than four PCT countries, then the Convention period may be relied upon. Please note that some PCT countries having utility model protection do not permit the PCT route to be followed.
5.3 An Australian Innovation Patent is published upon grant or eighteen months from the earliest priority date, which ever is earlier. Australian Innovation Patents are usually granted relatively quickly. Since grant of an Australian Innovation Patent may affect an applicant’s ability to file valid non-Convention applications outside Australia, there may be a need to file applications in non-Convention countries promptly. It may also be possible to delay the grant or commercialisation prior to applying for patent protection in such countries.
5.4 The cost estimates above may serve as a general guide only and considerable variation would be expected for complex cases and cases which do not follow a straight forward application process. Most Australian Patent and Trade Mark Attorney firms structure their service charges competitively compared with the Institute of Patent Attorneys and Trade Mark Attorneys of Australia suggested charging guide.
5.5 Many countries have onerous formality provisions, and as such, cost estimates given above are do not include of such costs relating to notarization, authentication and legalization of forms, the preparation of formal drawings or the provision of extra translations or extra information or tallages.
5.6 It should also be appreciated that the filing of a utility model application begins a process of prosecution which typically involves an annual cost of between 50% and 100% of the application cost over a span of from one to two years, though prosecution may commence at any time from filing and up to two years from filing, and issue fees for an application once granted are typically between 10% and 50% of application cost. Additionally, renewal fees, annuities or extension fees are payable in some countries over the life of a utility model or utility model application, and are typically between 5% and 80% of the application cost.
6. Current Events (as at 28 August 2013)
6.1 The information following has been prepared from information received, and so I cannot accept responsibility for its accuracy or currency.
6.2 The development of utility model law has been, and continues to be, comparatively slow. There are approximately 96 jurisdictions which provide for “second tier” protection for incremental invention in the form of a utility model or something akin to a utility model.
Copyright © 2013 Bill Anderson