“You can’t always get what you want” sang Mick Jagger on the b-side to Honky Tonk Women. While it’s doubtful he had in mind the outrageous misfortunes we sometimes suffer in patent prosecution, the same principle applies in our line of work. No matter how dearly we want to patent something, there are times when we are unable to convince a patent office that the invention meets that country’s inventive step criteria. Perhaps inventive step is assessed very strictly in that country or perhaps the prior art is just too close. Either way, if the examiner wants to refuse the application with little or no hope on appeal, or if further narrowing of the claims will not leave a commercially useful scope of protection, then it might be time to consider a different sort of compromise, trading off scope of protection and duration of protection to give the best possible protection. In short, why not convert the application to a utility model?
As my colleagues have previously discussed, utility models are a useful second level of protection for inventions that is available in many countries (though not the UK or the USA). In contrast to patents, they have not been harmonized around the world so the precise form of a utility model varies from country to country, to the extent that there is not even agreement on a name: utility models, utility certificates, petty patents, innovation patents, short term patents etc. The common factors that utility models share is that they have a shorter term than a patent, typically 10 years, and are in some sense “easier” to obtain, either by having a lower inventiveness threshold or by allowing certain prior art publications to be ignored when assessing novelty and inventive step.
Some countries allow applicants using the PCT system to enter the national phase with a utility model. This might be a sensible approach if the international preliminary report on patentability throws up inventive step objections that the applicant has no chance in overcoming. Utility models become particularly useful if countries do not require applicants to decide on filing or national phase entry whether they want a patent or a utility model, and instead let them decide later. Some countries, including potentially important markets such as Australia, Brazil, Japan, Republic of Korea and Russia, as well as certain European countries such as Germany and Italy, allow applicants to convert a patent application into a utility model during prosecution or on refusal.
This means if your patent application has been rejected for lack of inventive step or if the prospect of further narrowing a claim is commercially unacceptable, maybe it is time to convert to one or more utility models? If you would like further information on this topic, please contact your Reddie & Grose attorney. You just might find that you can get what you need.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.