There are myriad open questions and challenges for the Unified Patent Court (UPC) system and the unitary patent, which constitute a new layer to the European patent landscape on top of the existing courts and types of patents. One of those is the question of how this new system will interact with utility models, which seems to have mostly escaped academic scrutiny so far. This chapter explores this interaction, focusing predominantly on the consequences of the new unitary patent and the UPC for strategies surrounding patents and utility models, including the division of judicial competence. By considering, amongst other things, the complicated relationship and overlap of these rights, the limited but influential mandate of the UPC, the fragmented landscape for utility models, and the different sources of law governing a unitary patent, this chapter examines how litigation before the UPC may affect (strategies involving) utility models.

In Kenya, Utility Model Certificates (UMCs) are relatively popular with local applicants, and have been gaining in popularity over the past decade. The Kenyan UMC system is used largely as a replacement for the patent system, in contrast with other jurisdictions in which the two may be used strategically in combination. While a majority of patent applicants are foreign entities, nearly all UMC applicants are local entities, indicating that the UMC system is better designed to serve the local population of innovators.

Utility models fall within the definition of “Industrial Property” provided for by Art. 2 of the Industrial Property Code (IPC) enacted by legislative decree 30/2005. Accordingly, their protection follows the general rules established by the Code for all industrial property rights (Art. 1-6; Art. 117 ff.), the provisions specifically dedicated to utility models (Art. 82-86), as well as the rules governing patents to the extent they are compatible with the specificities of utility models. Of limited relevance appear Articles 2592 and 2594 of the Civil Code, which offer a summary of the basic rules governing this intellectual property right.

Since 1985, when China’s first Patent Law came into effect, China has established a legal protection system for utility models. At present, after four revisions of the Patent Law, China’s utility model patent legal system has also been improved. However, among the authorized utility model patents, those that fully meet the necessary conditions of novelty and inventive step might be in the minority. Of course, this phenomenon is not unique in China. The purpose of this chapter is to illuminate the ongoing optimization of the Chinese utility model patent system in the context of the development of China’s overall patent system. Accordingly, Part Ⅰ traces the emergence of China’s Patent System, including the Chinese utility model patent-based subsystem. Part Ⅱ centers on the basic contours of the Chinese utility model patent system. Part Ⅲ then summarizes existing deficiencies of the Chinese utility model patent system and future development trends. It concludes with a discussion of potential implications of proposed revisions to the Chinese utility model patent system.

In Denmark, a specific Act for the protection of utility models was introduced in 1992. The regulation of utility models in Danish law has been elaborated in close connection with the Danish patent law. Even though the rules are enacted separately, the wording of the Patent Act and the Utility Model Acts is similar. The interaction between the two systems is built into the design of the Acts. For example, branching-off from a patent application or patent under opposition to a utility model application is permitted. The core area for utility models is the protection via registration of “minor inventions”. These differ from “real patents” mainly by having a lower threshold for “inventive step”. Whereas an “invention” to be patentable must differ “essentially”, a “creation” should only differ “distinctly” from the state of the art. Moreover, utility model protection can be obtained without substantive examination whereas patent protection always requires a full evaluation both of the formal and substantive requirements. The term of protection for utility models is less than that of a patent. Since 1998, there has been a decline in the demand for utility model protection in Denmark.

This chapter draws on empirical research that demonstrates that utility model protection can address differential capture or appropriability needs for a firm’s portfolio of inventions in terms of time and cost. We propose that a “zone of appropriability preference” exists when utility models and standard patents overlap, and this zone provides important opportunities to firms with global intellectual property portfolios. Using the European Patent Office’s PATSTAT patent data and a novel experimental construct that tracks inventions that are pursued as a utility model instead of a standard patent, we demonstrate that firms appear to seek utility model protection when their overall appropriability needs differ by region. We make the case that a firm may choose standard patent protection in one region and utility model protection in another, even though standard patent protection is available in both settings

In Germany, the utility model is a type of intellectual property right that provides protection for novel and useful inventions. It is governed by the German Utility Model Act (“Gebrauchsmustergesetz” – GebrMG) which was enacted in 1891, making it the oldest still-existing utility model system in the world. Utility models grant the right holder exclusive control over the use and commercialisation of an invention for a period of ten years from the date of filing, subject to the payment of annual renewal fees. In a way, the utility model is the “little sister” of a full-fledged patent (also called a “petty patent”), protecting the same type of subject matter (technical inventions) with a more limited scope.

While national rules regarding the scope, availability and issuance of utility models vary from country to country, most utility model regimes offer protection for tangible products, with many, but not all, jurisdictions excluding processes, biological materials and computer software from the scope of protection. The duration of utility model protection ranges from five to fifteen years, with most countries offering ten years of protection. In most countries, utility model applications are not formally examined and must simply disclose the product in question. Given the lack of examination, obtaining utility models is generally viewed as faster and cheaper than obtaining patents. This combination of speed and cost, in theory, makes utility models potentially attractive to small and medium enterprises (SMEs) that cannot afford to obtain full patent protection. Similar considerations have also been raised as advantageous to innovators in low-income countries.

This chapter charts the historical evolution of second-tier patent systems in Australia – looking at the establishment of the petty patent system, the rise and fall of the innovation patent, and the new focus of the Albanese Government upon breakthrough inventions. In terms of its methodology, this chapter provides a historical study of intellectual property reform in Australia. It also uses socio-legal methodologies to highlight the gap between the aspirations for the innovation patent system, and the operation of the system in practice. The chapter also draws upon empirical research into intellectual property registration data. This work is an investigation of litigation in respect of innovation patents – the so-called ‘patent wars’. As well as exploring intellectual property, this chapter also considers Australia’s innovation policies – particularly in respect of small-to-medium enterprises and lone inventors. It highlights the tensions between the nationalistic vision of Australian policy-makers, and the larger forces of globalization.

Utility models, like patents, are increasingly being declared as “essential” to global industry standards, licensed together with standards essential patents (SEPs), and now even enforced in litigation. This study finds that nearly 1,000 standards-essential utility models (SEUMs) have been declared essential to broadly adopted industry standards. And though far less than other SEPs, SEUMs have been subject to litigation in China and Germany, and there appears to be no structural barrier to their litigation in other jurisdictions. These findings raise questions concerning the legal requirement to disclose and license SEUMs, the value of SEUMs for purposes of calculating FRAND royalty rates for individual firm portfolios and for determining top-down aggregated royalty rates for standards, as well as larger questions concerning the use of UMs to protect complex technological inventions that are also covered by patents.

Empirical evidence on the functioning of utility model (UM) systems is scarce compared to patent systems. This chapter applies the framework introduced by Heikkilä (2023a) to the empirical analysis of the Finnish UM system and its interaction with the Finnish patent system. The findings suggest that the UM system has promoted flexibility and inclusiveness of the Finnish patent system. There are systematic differences between Finnish UMs and patents: 1) UMs are members of smaller patent families, 2) UMs have smaller inventor teams, 3) grant lags of UMs are significantly shorter and 4) both Finnish patents and UMs receive few citations, but UMs receive systematically less. The aforementioned average differences between Finnish patents and UMs were much larger before Finland joined the European Patent Convention in 1996 which emphasizes the need to consider European integration and the evolution of European IPR institutions when evaluating UM systems.

This chapter describes the issuance and litigation of utility models (UMs) in Brazil. Although considered patents in Brazil, UMs have a different treatment from patents of invention (PIs), having some specificities such as those related to the requirements for protection and the term of duration. This chapter will provide an overview of the Brazilian Patent System by outlining the scope of protection and requirements to obtain a UM patent in comparison with PIs, and by commenting on the enforcement of these rights in the judicial and administrative spheres.

This chapter explores the policy framework within which utility model systems are constructed. The chapter suggests several policy arguments which may help developing and low-income countries adopt a utility model regime which suits their national development phase. It encourages pushing the flexibility boundaries of such rights in relation to the justification and nature of the right.

Japan introduced its utility model system in 1905, twenty years after the introduction of the patent system. Although the utility model system is still in effect, its content and use have changed considerably over the past century. Japan’s utility model system played a major role in the development of Japanese industrial technology through the 1970s. Until the 1970s, the number of applications for utility model registrations exceeded that for patents. However, with the improvement of Japanese industry’s technological capabilities and other factors, patent applications began to outnumber utility model applications around 1980, and the number of utility model applications declined sharply from 1985 onward. In response, the utility model system was extensively revised in 1993, including the abolition of substantive examinations, with the aim of making the system more attractive by ensuring that the system provides early protection for technologies with short life cycles. However, this revision caused problems, such as the loss of stability of rights, and the number of utility model applications has continued to decline.

The global landscape for existing utility model rights is a helpful starting point to the discussion on utility model innovation policy at the country-level as well as firm strategy. WIPO data indicates that approximately 3.0 million utility model applications were filed globally in 2022, a growth rate of 2.9% from the previous year and close to the global total of 3.5 million applications for standard patents. Only about one-half of the world’s countries provide for utility model systems, yet companies from around the world acquire these rights. Utility models are important players in the IP environment, and the unique qualities of the system and differential representation require specific analysis. In this chapter, we review existing empirical data and present additional data regarding UM filings and litigation worldwide. Our purpose is to provide background and context for the more detailed discussion in the remaining chapters in this book.

To obtain a utility model registration in Korea, a device must be industrially practicable, novel, and nonobvious, which is equivalent to the requirement for patent registration. The only difference is that the nonobviousness of utility model devices may be lower than that of patentable inventions. Although the level of nonobviousness is described differently under the statutory provisions, neither examiners nor judges know how to distinguish the level of nonobviousness of utility model devices from that of patentable inventions.

This chapter starts by providing historical perspective on the evolution of the Polish regulatory framework for the protection of utility models. Interestingly, the draft IPL takes us to legislative solutions already tested in the past. One might even say nihil novi sub sole (there is nothing new under the sun). The chapter presents data about the functioning of the regime currently in force. This is followed by a more general discussion, drawing on experience from other jurisdictions, of how various aspects of the regulatory framework might affect the ability of the system to promote innovation. Then, the current legislative framework is presented against the backdrop of the solutions proposed in the draft IPL.