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The Utility Model and the protection of incremental innovations

Incremental innovation is defined as the one which reflects small improvements in products, product lines or processes, small gains in benefits perceived by consumers, but which do not significantly change the way the product is consumed or used.

These improvements, often lack, in the light of patentability requirements, the “technical effect” unexpected for an expert in the area, necessary so it may lead to the conclusion that they may be protected by an Invention Patent. This is the detail, which makes all the difference, that may have us think of the Utility Model as a means of protection from those improvements. National legislation is clear as to the fulfilment of this requirement and does not require the solution to have the said unexpected “technical effect”, but simply having to prove itself as being of a practical or technical advantage, and thus representing a less demanding concept of inventive step than that applied in the context of patents. However,, the advantages of this type of protection to inventions do not stop here.

A faster administrative procedure is also another of the interesting features of Utility Models. In fact, we may have the grant of right guaranteed for a period of 9 months – substantially less when comparing the procedure with that of the Invention Patents, and it is not difficult to understand that , given these characteristics, the Utility Model may indeed be a fairly valid option. If we take into account that many of today’s innovations are often incremental, especially those coming from SMEs – or even individual inventors – , mostly in the business framework of many countries, we should therefore, realize why the Utility Models are in a minority when it comes to figures, especially when compared to submissions of Invention Patent applications – in Portugal, Utility Model applications are less than 10% of Invention Patent applications (2015 data) – , which, in a country where SMEs are in the majority, may be something to think about. Which reasons are leading to this kind of situation? Lack of knowledge about the advantages of this modality? Costs? Enforcement?

The difficulty in understanding the sometimes tenuous frontier between a “technical advantage” and an unexpected “technical effect”? Perhaps it is by summing up all these aspects that the applicants often choose the Invention Patent. This is where the work of the Industrial Property Official Agent is crucial, since it is up to him, by virtue of his job, to study the context in which the request for protection of the invention is made. In the first place, understanding the scope of protection appropriate to the market intended for that invention.

One of the usual disadvantages associated with Utility Markets is that such rights are not available in a number of countries, however, those countries where the modality exists – except for the USA – are also countries where most applicants have commercial interests and, therefore, this issue may be overcome with relative ease. Another relevant question is whether we are, in fact, in the presence of an incremental invention and if it complies with the usual patentability requirements, that is, the novelty, the inventive step and the industrial application. That´s because, a good knowledge of the market by the inventor is not always enough to ensure that those requirements will be met. A research to the State of the Art is recommended so as to avoid any possible gaps. As a matter of fact, this exercise may soon help clarify the merits of the technology developed, from the perspective of compliance with the inventive step requirement both regarding inventiveness (the presence of such an unexpected technical effect) or the technical advantage associated with it, proving to be, to that extent, a good instrument to circumvent such an important requirement. Finally, we have the cost issue. One of the benefits of utility models will be to guarantee the granting of Right at a lower cost when compared to the usual applications for an Invention Patent. This assumption should be properly assessed, seeing that costs may vary substantially from jurisdiction to jurisdiction, not only at the time of application but in the maintenance of the right. These factors should be in line with the expected lifetime of the product or process.

Let us say that these are the fundamental assumptions until we reach the conclusion that the Utility Model is really the most suitable option. This modality may indeed meet the actual purposes and needs of the companies, in terms of their innovation results protection, especially the incremental one. However, it is crucial to analyse all variables involved before making a decision. Only in this way will Utility Models serve the purposes for which they were created and may cease to be a tactical subterfuge usually used whenever protection by the Invention Patent proves fruitless, because when in the presence of such a scenario, it means that both technical and financial resources have already been misused.

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