Utility Model Patent

By implication of law, a utility model is a device, i.e. man-made object (notion, mechanism, design, installation) with a complex internal structure, created to perform certain functions).
The law defines two conditions for granting a device the status of an utility model and the corresponding legal protection status.
The first condition is the novelty of the utility model. It is recognized as new if its material cumulative feature is not known from the prior art (part 2 of section 1351 of the Civil Code of Russian Federation). In fact, this means that, in contrast to the invention, a utility model may already be known to the public, however, its construction is fundamentally different from similar existing models.
By "prior art" any information that has become generally available in the world prior to the utility model priority date is meant. The prior art also includes (subject to an earlier priority) all applications for a patent for an invention, utility model or industrial design, which are filed in the Russian Federation by other persons and with documents accessible by any person, as well as inventions and utility models patented in the Russian Federation. Please note, that when determining the utility model's novelty, the information is taken into account about a similar device use not only in the Russian Federation, but also abroad - if this information has been published.
The second condition is industrial applicability, i.e. the possibility of use in industry, agriculture, healthcare, other sectors of the economy or in the social sphere.

Following objects are not protected as utility models:

• discoveries,
• scientific theories and mathematical methods,
• solutions concerning only the appearance of products and aimed at satisfying aesthetic needs,
• rules and methods of games, intellectual or economic activity,
• software,
• solutions consisting only in the presentation of information.

At the same time, it is important to bear in mind that the law excludes the possibility of classifying these objects as utility models only if the utility model patent application relates to these objects as such. That is, devices that meet the relevant requirements and are this way or another related to these objects can be patented.

Following objects are not protected as utility models:

• plant varieties, animal breeds and biological methods of their producing, entirely consisting of crossbreeding and selection, with the exception of microbiological methods and products thus obtained;
• topologies of integrated circuits.

There are several fundamental differences between a utility model and an invention or an industrial design. They are differentiated by:

1. The object of protection.
2. In the invention, a fundamentally new technical solution protected by law relates to a product (not only a device, but also a substance, a strain of microorganisms, a culture of plant or animal cells) or a method (the process of performing actions on a material object using material means), in an industrial model – it relates exclusively to the device. In the industrial design, the object of intellectual protection is not a technical, but an artistic, engineering or design soltion that determines the appearance (design) of the product.
3. By the exclusive right term:
4. - twenty years - for inventions;
5. - ten years - for utility models;
6. - five years - for industrial designs.
7. By the requirements for registration
8. Utility models have less stringent requirements than inventions. The most significant difference is the absence of non-obviousness criterion (inventive step). Differences in the scope of requirements for registered objects of patent law, in general, can be presented with the following graph.

There are other differences, for example, in registration terms (for a utility model, it is generally shorter) and the amount of fees for obtaining and maintaining the rights to these objects (we will talk about this below).

The law provides an opportunity to convert an application for an invention (with the exception of those withdrawn or recognized as withdrawn) into an application for a utility model.
It is possible to do it before the publication of invention application information, but no later than the date of the decision to register a patent for invention by filing a corresponding application with Rospatent.
An application for invention shall not be transformed into an application for utility model if, when applying for a patent for invention, attached to the application documents is the statement, that, in the case of the patent is granted, the applicant agrees to conclude an agreement on the patent alienation according to the established practice, with any citizen of the Russian Federation or a Russian legal entity, who was the first to express such a desire and notify the patent holder and the federal executive authority on intelligence property.
Upon receipt of the request for application conversion, the expert body checks the correctness of its execution and sets the deadline for submission.
A fee is charged for converting an application for an invention.
If the application for the application conversion is submitted within the prescribed time, executed in accordance with the established requirements and supported with the fee payment receipt, the applicant is notified of the conversion. Further cons application is carried out in accordance with the procedure for the utility model application.
In the event that, at the date of the application for conversion receipt the applicant has submitted additional materials correcting or clarifying the invention application documents, including the claim, the verification of the mentioned materials is executed in accordance with the procedure for the invention application.
The applicant is informed of the application conversion consideration results by means of notification.
The applicant may withdraw the request for application conversion. The withdrawal request must be received by the expert body before the conversion notification is sent to the applicant. In this case, the conversion is considered to remain undone and the fee paid can be returned to the applicant or set off in the prescribed manner.