Utility Models

What’s a Utility Model?

Utility models constitute an alternative form of protection from patents. They can be used to protect the same inventions as patents except the ones related to biological matter and chemical or pharmaceutical substances or processes.

Article 117th of the C.P.I. establishes that:

‘’1 – New inventions are eligible to be protected as utility models if they imply inventive activity and are susceptible of industrial application.

2 – Utility models seek the protection of inventions through a simpler and faster administrative procedure compared to patents.

3 – The protection of an invention which complies with the conditions established in number 1 can be made, at the applicant’s option, through a utility model or a patent.

4 – The same invention can be the object, simultaneously or successively, of a patent request and a utility model request.

5 – The successive application of requests, mentioned in the above number, can only be admitted in the period of one year following the date of application of the first request.

6 – In the cases laid down in number 4, the utility model expires upon the concession of the patent related to the same invention.’’

Utility Models’ Concession Requirements

In what the concession requirements are concerned, an invention is liable for protection through an utility model if it is new, comprises inventive work and has industrial application, as in the case of patents.

However, in what the inventive activity is concerned, the utility model is less stringent than the patent, since it is sufficient that the invention presents a practical or technical advantage for the fabrication or utilization of such product or process.

The Utility Model can be object of internationalization, as the patent. It should be noted, however, that not all jurisdictions have this legal figure, wherefore the international coverage granted by the Utility Model is more limited compared to the one granted by Patents.

Considering the particularities and limitations of the utility model compared to patents, the option for this way of protection should be carefully examined with our experts, taking into account the patentability of the invention at issue.

Rights

The Utility Model grants its holder the exclusive right to make any use of such invention in any part of the territory for which the model was requested and obtained, and to prevent third parties from manufacturing, offering, storing, introducing to the market, utilizing or importing, without its consent, such object of the Utility Model.

Application

For a Utility Model it is required:

  • Patent or Utility Model Application Form
  • Claims on what is considered new and characterizes the invention
  • Description of the invention’s object
  • Necessary deigns for the perfect comprehension of the description
  • Invention’s summary
  • Figure for publication
  • Payment of the application fees

Upon the request, the Utility Model is granted temporarily if an exam was not required and there was no opposition has been presented (art. 130th of the C.P.I.)

The mentioned exam may be requested during the application phase or for as long as the Provisional Utility Model is valid. It is important to note, however, that if the holder of the Utility Model granted temporarily intends to propose legal or arbitrarian actions for the defense of its rights, it should request, without fail, such exams to INPI (art. 131st og the C.P.I.).

Maintenance of an Utility Model

An Utility Model is valid for 6 years, counting from the date in which the request is lodged extendable for two more periods of 2 years, in a total of 10 years.

Annuities are due starting from the third year counting from the date of the request, under penalty of expiration of the right.