Peculiarities of a utility model patent invalidation in Ukraine
Mariya Ortynska, patent attorney, Patent Law Company IPStyle
Alina Gladun, assistant, Patent Law Company IPStyle
A Utility model means a result of intellectual activity of a human being in any field of technology. A product, process, or a new use of a known product or process can be patented as utility model. For example, such articles as pumps, seals, pharmaceutical compositions, methods of treatment of diseases and ways informing consumers may be patented as utility models. The number of utility model applications is twice as large as applications for inventions in Ukraine. Thus, in the first quarter of 2012 was filed 2705 applications for utility models, while for inventions - only 1238.
The main differences of a utility model and invention are:
1. A Criteria of patentability.
In order to obtain a patent for a utility model, the solution should be new and industrially applicable. Among the other conditions, the invention should have an inventive step. The presence of inventive step means that a technical solution is not obvious for a specialist.
2. Conducting an examination.
An application on obtaining a patent to a utility model passes only a formal examination, where is cheked all filled documents and objects reffering to objects of technology. We can say that a patent for a utility model is declarative and issued under the responsibility of the applicant as a technical solution is not verified in fact.
A patent application for the invention is passing in two examination – formal and substantive (in fact), which are examing the confirmity of technical solution and patentability.
3. Patents Duration.
The term of validity of a utility model patent is 10 years from the date of filling an application, the patent for the invention - 20 years. During this period the patent owner has a monopoly rights on it, but at the end of validity a patent can be used by third party without permission. For example, a well- known patent on phone by Alexander Bell can be used without any limitation.
4. The protection reliability.
To dispute the patent for a utility model is much easier than an invention patent as the first have a declarative form. In order to obtain a patent for an invention a technical solution is examined on availability of novelty, an invention step and industrial applicability.
As you can see, a patent for the invention has much more advantages than a utility model patent. But to obtain an invention patent is not possible in all cases. The reason is that no one can give the assurance on reffering of technical solution to criterion of world novelty. In such cases, there is a decision - simultaneous filling of an application on a utility model and invention.
As we can see it is fairly easy and cost effective to get a patent for a utility model, whereas the application passes only formal examination in contrast with obtaining a patent for invention. According to the Part 9. Art. 16 of the Law of Ukraine "On the Protection of Rights to Inventions and Utility Models" during the formal examination occur's as follows:
Quite often, these patents are obtained precisely for speculation in the market - for example, on purpose to offer a real developer or its competitors to buy the exclusive rights on the patent.
In case of disagreement, the patent holder has the right to prohibit such use. Quite often productive companies get claims about some “ Infringement of patent rights”on the already known technology. From a formal point of view, when a patent is received already, the company uses a utility model without the permission of the patent owner, and therefore there is an infringement of rights. But what if the technology is well-known yet long before the filing of the application?
In such cases it is necessary to understand that concordantly to Part 1 article 25 of the Law of Ukraine "On the protection of rights to invention and utility models" a patent on a utility model is given out under responsibility of his proprietor for accordance of utility model to the terms of patentability. In case of disparity of the patented utility model to the terms of patentability such patent in obedience to an article 33 of the law, can be confessed as invalid by the judicial order. For this purpose, any person can fill a petition about examination of the patented utility model to Ukrpatent. The filling of such a petition doesn't have any preconditions, for example, the existance of a lawsuit concerning patent infringement.
In order to understand in what cases it is advisable to apply for the examination, let's consider the main conditions for recognition of a patent invalidation.
A patent can be accepted as invalid in the court order in full or in a part, if:
Due to the fact that a whole patent or a part of it is considered to be invalid, and which aren't come into force yet from the date of publication about the patent granting.
It should be remembered that even if you got the decision of examination according to which the utility model does not match on one of the measure, the patent may be declared invalid only by a court decision. Also the Supreme Economic Court of Ukraine expressed foregoing position in the scoping letter "On the practice of economic courts of law on protection of the rights of intellectual property" from 30.06.2009 № 01-08/411/1.
Applying to the court with a lawsuit to invalidate a patent you need pay attention to position which indicated in the above letter, according to which, experts conclusions gotten from state department “ Ukrainian Institute of industrial property” does not mandatory neither for a person who goes to a court nor for the court which is considering the corresponding case. As a result, according to obtained conclusions about the discrepancy of a utility model to criterion of novelty, as example, does not insurance a utility patent invalidation.
Alina Gladun, assistant, Patent Law Company IPStyle
A Utility model means a result of intellectual activity of a human being in any field of technology. A product, process, or a new use of a known product or process can be patented as utility model. For example, such articles as pumps, seals, pharmaceutical compositions, methods of treatment of diseases and ways informing consumers may be patented as utility models. The number of utility model applications is twice as large as applications for inventions in Ukraine. Thus, in the first quarter of 2012 was filed 2705 applications for utility models, while for inventions - only 1238.
The main differences of a utility model and invention are:
1. A Criteria of patentability.
In order to obtain a patent for a utility model, the solution should be new and industrially applicable. Among the other conditions, the invention should have an inventive step. The presence of inventive step means that a technical solution is not obvious for a specialist.
2. Conducting an examination.
An application on obtaining a patent to a utility model passes only a formal examination, where is cheked all filled documents and objects reffering to objects of technology. We can say that a patent for a utility model is declarative and issued under the responsibility of the applicant as a technical solution is not verified in fact.
A patent application for the invention is passing in two examination – formal and substantive (in fact), which are examing the confirmity of technical solution and patentability.
3. Patents Duration.
The term of validity of a utility model patent is 10 years from the date of filling an application, the patent for the invention - 20 years. During this period the patent owner has a monopoly rights on it, but at the end of validity a patent can be used by third party without permission. For example, a well- known patent on phone by Alexander Bell can be used without any limitation.
4. The protection reliability.
To dispute the patent for a utility model is much easier than an invention patent as the first have a declarative form. In order to obtain a patent for an invention a technical solution is examined on availability of novelty, an invention step and industrial applicability.
As you can see, a patent for the invention has much more advantages than a utility model patent. But to obtain an invention patent is not possible in all cases. The reason is that no one can give the assurance on reffering of technical solution to criterion of world novelty. In such cases, there is a decision - simultaneous filling of an application on a utility model and invention.
As we can see it is fairly easy and cost effective to get a patent for a utility model, whereas the application passes only formal examination in contrast with obtaining a patent for invention. According to the Part 9. Art. 16 of the Law of Ukraine "On the Protection of Rights to Inventions and Utility Models" during the formal examination occur's as follows:
- – Setting the date of filing of an application;
- - The object which is claimed in the application is determined whether it belongs to the objects of technology;
- – An application is verifiying in accordance to the formal requirements;
- – Checking the document on payment of official fee for the filing an appliсation
Quite often, these patents are obtained precisely for speculation in the market - for example, on purpose to offer a real developer or its competitors to buy the exclusive rights on the patent.
In case of disagreement, the patent holder has the right to prohibit such use. Quite often productive companies get claims about some “ Infringement of patent rights”on the already known technology. From a formal point of view, when a patent is received already, the company uses a utility model without the permission of the patent owner, and therefore there is an infringement of rights. But what if the technology is well-known yet long before the filing of the application?
In such cases it is necessary to understand that concordantly to Part 1 article 25 of the Law of Ukraine "On the protection of rights to invention and utility models" a patent on a utility model is given out under responsibility of his proprietor for accordance of utility model to the terms of patentability. In case of disparity of the patented utility model to the terms of patentability such patent in obedience to an article 33 of the law, can be confessed as invalid by the judicial order. For this purpose, any person can fill a petition about examination of the patented utility model to Ukrpatent. The filling of such a petition doesn't have any preconditions, for example, the existance of a lawsuit concerning patent infringement.
In order to understand in what cases it is advisable to apply for the examination, let's consider the main conditions for recognition of a patent invalidation.
A patent can be accepted as invalid in the court order in full or in a part, if:
- he discrepancy of patented utility model to conditions of patentability as defined in article 7 of the Law of Ukraine “ On the protection of rights to invention and utility models”,
- the presence of features in claims of a utility model, which were not filled in the application,
- the violation of requirements of the second part of article 37 of the Law of Ukraine “ On the protection of rights to invention and utility models”,
- whether filling an application the patent obtained in violation of the rights of other persons.
Due to the fact that a whole patent or a part of it is considered to be invalid, and which aren't come into force yet from the date of publication about the patent granting.
It should be remembered that even if you got the decision of examination according to which the utility model does not match on one of the measure, the patent may be declared invalid only by a court decision. Also the Supreme Economic Court of Ukraine expressed foregoing position in the scoping letter "On the practice of economic courts of law on protection of the rights of intellectual property" from 30.06.2009 № 01-08/411/1.
Applying to the court with a lawsuit to invalidate a patent you need pay attention to position which indicated in the above letter, according to which, experts conclusions gotten from state department “ Ukrainian Institute of industrial property” does not mandatory neither for a person who goes to a court nor for the court which is considering the corresponding case. As a result, according to obtained conclusions about the discrepancy of a utility model to criterion of novelty, as example, does not insurance a utility patent invalidation.
