The Utility Model I. DESIGNATIONS USED

1. Austria & Germany: Gebrauchsmuster
2. Belgium: Brevet de courte dur?e/Octrooi van korte duur
3. Bulgaria: Полезен модел
4. Denmark: Brugsmodel
5. Finland: Hy?dyllisyysmalli/Nyttighetsmodell
6. France: Certificat d’utilit?
7. Greece: crhsimothitaz (exc. me for lack of Creek characters)
8. Ireland: Short-term patent
9. Italy: Brevetto per modelli di utilit?
10. Netherlands: Zesjarig octrooi
11. Portugal: Modelo de utilidade
12. Spain: Modelo de utilidad

II. IMPLEMENTING THE UM IN BULGARIA

• 1993 the new Patent Act
– In a time, when a couple of states protected the UM.
– Shifting the system of protection after 2006 …
• … when 80 states protected a similar object
+ 16 in ARIPO (Anglo-speaking Africa) - regional UM,
+ innovative patent in Australia.

III. ECONOMIC & POLITICAL FOUNDATIONS OF THE LEGAL FRAMEWORK

1. To promote original thinking. Nowadays patents or know-how are the outcome of astronomical financial resources and complex organizing for R&D.
2. To protect the new findings in the process of innovation, if they go beyond standard engineering. Shortcomings as to the patent or know-how to protect them.
3. Suitable for SME which established enrollment in the economy yet does not need any proof.
4. Aimed at modest improvements and adjustment or adaptation of existing products. Often encountered in the process of innovation.
5. Suitable for national economies with modest capacities and minor financial resources for R&D.
6. Yet some ‘big’ inventions could be protected as UM. Lay-out designs of the integrated circuits – unsuccessful sui generis protection in Bulgaria |Act after the Washington treaty|. Technical effect or application of computer programs?
7. Depending on the sector of industry - in cases of rapid technological development the 20 years of a patent are luxury and the 3-4 years search and examination procedures – serious impediment. |In Germany US medical equipment producers prefer 10 years GebrM than 20 years patent.
8. Dual protection for surety (protection during the patent examination).

IV. GENERAL COMMON FEATURES

1. protection to be feasible for technical results, which could be qualified by lower criteria,
2. protection to be feasible for short-lived technical inventions
3. protection to be obtainable rapidly,
4. protection to be obtainable simply,
5. protection to be inexpensive,
6. publication to be rapid so that the public is informed quickly,
7. transformation & branch-off of patent applications (parallel appl.).

V. UN INEVITABLE COMPARATIVE ANALYSIS REGARDING THE PATENT

1. Specific subject-matter
2. Criteria – lower
3. Procedure – unexamined
4. Time-limits in the procedure
5. Term of protection
6. Revocation and invalidation
7. Granted title – certificate
8. Costs

VI. EXCLUDED SUBJECT-MATTER

• Same as not-inventions \see Art 52 (2) EPC
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
• Human genes
• ‘AS SUCH’ – UM protection of computer programs?

VII. EXCEPTIONS OF PROTECTABILITY

• Same as exceptions of patentability
(a)"ordre public“, human embryo, cloning , etc. bio-issues
(b)plant or animal varieties or essentially biological processes
(c) Methods
• Chemical compounds
• Bio-technology – exclusion of genes isolated by technical process, otherwise patentable
• 3 D model?

VIII. CRITERIA

• NOVELTY
- RELATIVE STATE-OF-ART
- LONG AND WIDE GRACE PERIOD
• INDUSTRIAL APPLICATION not apll. of methods and of substances
• INVENTIVE STEP
• Patents: ‘…having regard to the state of the art, it is not obvious to a person skilled in the art.’
• UM:
1) a person used to the art; 2) easy; 3) carrying out; 4) the relative state-of-art applicable.

IX. MORE ISSUES RELATED TO PRIOR ART

1. NATIONAL (LOCAL) NOVELTY – Spain
2. OTHER KIND OF RELATIVE SoA – Germany
3. WHOLE CONTENTS APPROACH
4. PRIOR CLAIM APPROACH – Germany

X. PROCEDURE

• System of simple applying
– Checking the elements required
• Elements of preliminary examination
– Are the description and the claims correct?
– Unity of UM
– Is there excluded or not protected subject-matter?
• A negative element of substantial examination – isn’t the UM inapplicable on the face of it

XI. FACULTIES

• Demand for search
– By the applicant
– By any other person
• Search report
- Demand for examination
- Report? Legal effect?
• Here are lower criteria to be overcome.

XII. BRANCH-OFF AND TRANSFORMATION

• Different time-limits
- At the end the final dead-line is just before the final refusal of granting the patent.
• Transformation (real subrogation)
• UM and PCT. Unfavorable international preliminary search report
• The time-limits are beyond the priority period – 12 months

XIII. TIME-LIMITS IN THE PROCEDURE

• 12 / 18 months !
Costs
• ? = ~ ? 226


XIV. 2008 Data

2008 Patents UM
Registered 95 149
Existing Up To 393 398

• Domestic right-holders
• 5 non-residents grants only (Italy)


XV. UM REALITIES FOR BULGARIA

1. A new and separate UM Act.
2. Less momentum gained by the patent protection.
3. Well grounded alienation from the patent treatment.
4. Radical curtailing the time-limits for the procedure.

XVI. UM UTOPIA FOR EU AND THE WORLD

• The future belongs to UM type protection
• The patents shall remain for some slow industries
• The UM procedure shall develop from first-to-file toward first-to-post

© 2013 Prof. PhD Emil Markov
Tags: IP