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In the context of rapidly evolving innovations and globalization of markets, more and more inventors and companies face the need to protect the results of their intellectual activity in a timely manner and with informed choices.
In today’s article we will discuss when an invention can receive legal protection as a patent and as a utility model, what are their main features and what is the difference between both.
The legal regulation of patents and utility models can be found in the Act on Patents and Registration of Utility Models (APRUM).
The Act provides some exceptions to the possibility for an object to be protected as a patent or a utility model. Exceptions concern: discoveries, scientific theories and mathematical methods, results of artistic creation etc. In addition, objects whose commercial use would violate public order and morals (eg methods of human cloning, methods of altering the genetic identity of the human embryo), plant varieties, animal breeds and others are not registered as patents or utility models.
Main/Key features of the patents
An invention is considered patentable when it meets the following conditions: novelty, industrial applicability and the presence of an inventive step.
Novelty – the invention is considered new when it is not part of the state of the art. The state of the art includes everything that has become publicly available through written or oral description, use or otherwise disclosed anywhere in the world before the filing date, respectively the priority date, of the patent application. The state of the art also includes the content of the national patent applications, the European and international patent applications for which the Republic of Bulgaria is a designated country, as well as the content of the national applications for registration of utility models.
Inventive step – an invention is considered to have an inventive step when it does not follow in an obvious manner from the state of the art for the specialists in the field at the date of filing, respectively the priority date.
Industrial Applicability – Industrial applicable are inventions whose subject can be produced or reused in any branch of industry and agriculture.
Term of patent protection
The patent is valid for 20 years from the filing of the application.
Main/Key features of the utility models
The registration criteria for utility models are the same as for patents: novelty, industrial applicability and the presence of an inventive step, but in the procedure for registration of a utility model there are also certain differences, listed below.
Novelty – utility model, just like the patent, is considered new if it is not part of the state of the art. What is said about the scope of the state of the art also applies to utility models with the difference that the state of the art includes everything that became publicly available before the date of application for a utility model for use in the Republic of Bulgaria (not everywhere in the world), and by written or oral description or otherwise, anywhere in the world.
Inventive step – a significant difference with patentable inventions is that a utility model has an inventive step if a person with ordinary knowledge and skills in the field cannot easily carry it out based on the state of the art.
Industrial applicability – the criterion is the same as for utility models.
Term of protection of the utility models
The term of validity of the registration of the utility model is 4 years from the date of submission of the application, and it can be extended for two consecutive periods of three years each. The total term of protection of a utility model cannot exceed 10 years from the date of submission of the application.
It is clear from the above that the conditions that patents and utility models must meet are formally the same. Both patentable inventions and utility models must be new, inventive, and industrially applicable. The difference between them lies in the criteria for each of these conditions. The criteria for utility models are lowered, which makes the process of registering a utility model faster and easier than registering a patent.
What rights does the registration of a patent or utility model give?
The owner of a patent or utility model has the exclusive right to the invention, which includes the right to use (manufacture, offer for sale, trade), the right to dispose and prohibit third parties from using it without his consent. It is important to know that there are some exceptions to the scope of the patent, for example, the patented invention may be used for non-commercial purposes for personal use, provided it does not cause significant material damage to the patent owner or for experimental or research purposes related to the subject of the patented invention and others.
Another important feature is that the registration of a patent or utility model protects the invention itself as such in its technical essence.
In order to maximize the protection of the intellectual property of your company or your activity as an inventor, you can do a combination of ways: you could protect your company logo by registering a trademark, the appearance of a product – by registering an industrial design, and the invention itself – to protect as a patent or utility model. For example, the Austrian company EREMA Engineering Recycling Maschinen und Anlagen Gesellschaft m.b.H. owns the European brand Intarema, registered for a specific type of goods, including machines for recycling plastic processing and waste treatment, in particular plastic waste, biomass or household waste. The same company has registered several European patents for inventions that use the innovative technology for plastic recycling developed by them.
Applications for registration of patents and utility models are filed with the Patent Office.
When deciding which mean of protection to use and which application to file, it is good to take into account the degree of technological progress of the invention. For this purpose, we recommend you to do a preliminary study of a novelty and inventive step in the Patent Office, which you should do with the help of a good intellectual property lawyer. Other factors that are important are the speed of the procedure, the amount of registration fees (they are lower for the utility models) and the possibility of a territorial scope of protection. You can apply for registration of a utility model for the same invention for which you have previously applied for a patent, referring to the filing date and the claimed priority of the patent application. This means that if the utility model is subsequently registered, it will be protected not from the date on which the utility application was filed, but from the earlier date of filing the patent application. We advise you to consult with an experienced lawyer in the field of intellectual property law.
Murgova and Partners Attorneys at Law has a team of highly qualified and experienced lawyers in the field of intellectual property rights. Our practice is aimed at providing assistance to our clients in carrying out registration procedures, legal representation, as well as at providing legal services and consultations on all issues related to this matter. This article is for information only and should not be construed as legal advice. In each case, the specific facts and circumstances are important and may vary. If you need assistance, you can contact us through www.murgova.com