When we talk about obtaining intellectual property rights on a new product or a process, we usually direct those rights to patents. Patent rights is a type of intellectual property rights in which the owner of an invention is awarded with a monopolistic ownership of the product or a process for a given period of time, after which the invention goes into public domain. It is also known that patents are a way to encourage invention by providing exclusive ownership and exploitation rights of a creation.
Recently, we have been receiving an increased interest in utility innovations. What are Utility Innovations? How is Utility Innovation different from Patents?
There are two types of patent protection in Malaysia, i.e. Patents rights and Utility Innovation (UI) rights. In order to file for a patent application, the applicant will need to fulfill three requirements, i.e. novelty, inventive step and industrial applicability.
A term of protection for patents is 20 years from the date of filing. A UI is an exclusive right granted for a “minor” improvement which does not need to satisfy the inventiveness as required of a patent. Novelty requirements for UI are the same as patents.
In particular, novelty means that, before the date of filing, no identical invention has been publicly disclosed in publications or has been publicly used or made known to the public anywhere in the world. A term of protection for an UI is 10 years from date of filing and can be extended for two more terms of five years “5 + 5 years” subject to use of the invention as claimed in the UI.
Let’s say you have invented a pencil with an eraser embedded to the tip of the pencil. Can the invention be protected by Patents?
Assuming the pencil with embedded eraser is novel, the next criteria that needs to be fulfilled is inventive step?
Adding an eraser to the tip of the pencil, does it solve a technical problem?
The figure above shows a significant difference on how the eraser is being embedded to the tip of pencil. The first figure shows that the eraser is directly being connected to the tip of the pencil, which shows that the invention is new. This idea seems to be obvious for those people who are involved in the pencil manufacturing industry. Further, it is an obvious step for an ordinary person.
However, the second figure shows that the eraser is being embedded in a way that solves a technical problem wherein the eraser is attached to the tip in a way that is not easily removable. Hence, the first figure shows that the pencil fulfills the UI requirements, new and industrially applicable whereas the pencil in the second figure solves a technical problem and provides a new product that fulfils the patentability requirements, i.e. new, inventive and industrial applicable.
WHY UI IS IMPORTANT?
In short, it is because it is quicker and easier to obtain. Many countries have adopted some form of utility innovation protection.
Various terms such as utility innovation, utility certificates, utility solutions, petty patents and short-term patents may be used in different countries. In many countries the UI is likely to be granted without substantive examination and it often has a shorter lifetime but it gives the same exclusive rights as patent does.
In Malaysia, UI is examined by the examiners in MyIPO to determine whether it fulfils the two requirements, novel and industrial applicability and the UI in Malaysia is protected for 10 (ten) + 5 (five) + 5 (five) years from the date of filing subject to use. The only limitation of UI in Malaysia is that only one claim is allowed for any field of technology.
In comparison with Indonesian’s patent law, the UI is known as Simple Patent and the Simple Patent is only allowed for inventions related to vendible products and mechanical devices. Inventions related to processes, uses and compositions are not allowed to be registered as a Simple Patent. In Indonesia, the Simple Patent application is limited to one independent claim and there is no limit on the dependent claims.
The option for filing a utility innovation application can be particularly interesting where an enforceable right is rapidly sought or when a patent examination report of Intellectual Property Corporation of Malaysia (MyIPO) or an International Search Report and/or Written Opinion of the International Searching Authority indicates that the Malaysian application or international application might fail to meet the inventive step requirements of obtaining patent protection.
This provides an opportunity for the applicant to convert the patent application to an utility innovation in those countries which allow UI protection.
Research has revealed that UI protection promotes certain local industries by offering rapid and inexpensive intellectual property protection. UI provides protection against massive copying and limitation, especially if the protection for such copying is not available through unfair competition laws. Incremental innovations can be encouraged by UI and those breakthrough innovations such as those in the biotechnology and pharmaceutical industry can be protected by ways of patents rights.
ADVANTAGES AND DISADVANTAGES OF UTILITY MODEL VERSUS PATENTS
Below is the comparison between the patents and utility innovations in Malaysia:
|Requirements: Novel, inventive step and industrially applicable||Requirements: Novel and industrially applicable|
|No limitation on the number of claims||Only one claim|
|The term of protection is 20 years from the date of filing.||The term of protection is 10 years from the date of filing and can be extended 5 + 5 years subject to evidence of use submitted to the IP Office.|
As shown, UI is a useful tool for improving competitiveness of Small Medium Enterprises (SMEs). This lesser known sibling is cheaper and quicker to obtain and more importantly, has the same lifespan as a patent does (as long as our Patents Act is not amended anytime soon).
Mayuri Nanjappan is the Manager of Patents Division of KASS International, an established IP boutique firm with offices in Malaysia, Singapore and Indonesia. For more information, visit www.kass.com.my or drop an e-mail to email@example.com.
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