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The South East Asian Utility Model

Date: 27 November 2019
Author: Paul Whenman, Dae Woong Oh
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There is no equivalent to a utility model in the US. Practitioners are of course well aware of design patents and the fact that they are limited to the protection of the ornamental features of a design and not its functionality.  Protection of functionality is reserved for utility patents. A US applicant therefore may only choose protection for an innovation by filing an application for either a design patent or a utility patent. Assuming the innovation is functional, a utility patent is the only alternative.  If the innovation does not meet utility patent requirements, protection will be lost.

The utility model alternative

Unlike the US, there are a number of jurisdictions that offer a viable alternative to either protection as a design or as a patent. Here we focus on the utility model requirements for the high growth jurisdictions of South East Asia. In particular, we refer to Indonesia, Malaysia, the Philippines, Thailand and Vietnam. To date, there is no equivalent to a utility model in Singapore. This may well change as Singapore continues to grow and strengthen its focus on intellectual property rights.

Requirements

Indonesia
  • A utility model is referred to as a simple patent in Indonesia.
  • A simple patent is granted for products or devices which are novel and have a practical use, but do not require an inventive step.
  • Due to the new regulation introduced in December 2018, a patent application based on PCT Application cannot be filed as a simple patent.
  • Once issued a simple patent provides 10 year protection from the filing date.
Malaysia
  • A utility model is referred to as a utility innovation in Malaysia.
  • A utility innovation is granted for products or processes which are novel and industrially applicable, but do not require an inventive step.
  • Once issued a utility innovation provides 10 year protection from the filing date and possible two 5 year renewals.
The Philippines
  • A utility model is granted for products or processes which are novel and industrially applicable, but do not require an inventive step.
  • Once issued a utility model provides 7 year protection from the filing date.
Thailand
  • A utility model is referred to as a petty patent in Thailand.
  • A petty patent is granted for products or processes which are novel and industrially applicable, but do not require an inventive step.
  • Once issued a petty patent provides 6 year protection from the filing date with possible two 2 year renewals.
Vietnam
  • A utility model is referred to as a utility solution in Vietnam.
  • A utility solution is granted for products or processes which are novel and industrially applicable, but do not require an inventive step.
  • Once issued a utility solution provides 10 year protection from the filing date.

Conversion of patent applications

Advantageously, it is possible to convert between a patent application and a utility model. This provides an applicant with even greater flexibility in securing intellectual property rights.

Indonesia Conversion of a patent application into a simple patent application or vice versa is only allowable for patent applications based on non-PCT applications. Thus, a patent application based on a PCT application cannot be converted into a simple patent application.
Malaysia Within six months from the issuance of a first substantive examination report, conversion of a patent application into a utility innovation application or vice versa is allowable.
The Philippines At any time before the grant or refusal of a patent, conversion of a patent application into a utility model application or vice versa is allowable.
Thailand Prior to the publication of a patent application conversion of the patent application into a petty patent application is allowable. Prior to registration of the petty patent conversion of the petty patent application into a patent application is allowable.
Vietnam At any time before the grant or refusal of a patent, conversion of a patent application into a utility solution application or vice versa is allowable.

Conclusion

Whenever an innovation qualifies as patentable subject matter, an applicant should always pursue a patent application. However, if an innovation is of a functional nature, which does not satisfy patent requirements, a utility model is a valuable alternative source of protection. As noted above, some jurisdictions permit conversion from an application for a patent to a utility model. Such a possibility allows for a situation where it becomes apparent that a patent grant will not be achieved.

 

Tags:  South East Asian utility model, South East Asia, IP, utility model, patents, simple patent, utility innovation, petty patent, utility solution

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