As we know, a utility solution is a technical solution similar to a patent. In some countries around the world, it is referred to as a “utility model” or “petty patent.” Currently, many countries provide a system for protecting utility models, while there are also many that do not offer such protection. In this article, we will focus on issues related to utility models in Vietnam.
WHAT IS A UTILITY SOLUTION?
A product or method developed from a technical solution can be protected as either an invention or a utility model. In Vietnam, if the solution meets the criteria of novelty worldwide, inventive step, and industrial applicability, it is granted a patent for invention. However, if the solution only meets the requirements of novelty and industrial applicability, and is not considered common knowledge, it is granted a utility model. In other words, a utility model is a technical solution with a lower level of creativity compared to an invention.
NON-PATENTABLE SUBJECT MATTER
Similar to inventions, the subject matter of protection for utility models includes products or processes. However, the following subject matters are excluded from protection:
- Discoveries, scientific theories, mathematical methods;
- Schemes, plans, rules, and methods for performing mental activities, training animals, conducting games, and business; computer programs;
- Methods of presenting information;
- Solutions that only have aesthetic features;
- Plant varieties and animal breeds;
- Biological processes for the production of plants and animals that are not microbiological processes;
- Methods for the prevention, diagnosis, and treatment of diseases in humans and animals.
PROTECTION CRITERIA
A patent for invention will be granted for a technical solution if it meets the requirements of novelty worldwide, inventive step, and industrial applicability. However, a solution is only granted a patent for utility if it meets the requirements of novelty and industrial applicability, and is not common knowledge.
PROCEDURE FOR ESTABLISHING RIGHTS
Similar to a patent for invention, applicants who want to establish protection rights for utility solutions must file a utility solution application. However, for applications requesting a patent for invention, applicants may convert the patent application to a utility model as long as it is before the Intellectual Property Office issues a decision on refusal of formality acceptance, or to grant a patent, or decision on refusal to grant a patent for that patent application. The converted utility solution application receives a new application number and maintains the filing date of the original application and the priority date of the original application (if any).
To be examined in the substantive examination stage, the applicant must submit a substantive examination request for the utility solution application. However, the time limit for submitting a substantive examination request for a utility solution is 36 months, while for an invention, it is 42 months from the earliest filing date. In Vietnam, utility solution applications must also undergo the same substantive examination process as patent applications within the same time frame. However, in terms of procedures, the examination of utility solution applications is simpler than that of patent inventions because utility solution applications are only examined for their novelty compared to the world and their industrial applicability, while patent applications must be examined for their level of inventiveness. As a result, the examination of utility solution applications is less complex and, consequently, the examination time is shorter than that for inventions.
TERM OF PROTECTION
Once granted, a utility solution allows the owner to prohibit others from exploiting and using the utility solution for commercial purposes without permission. Specifically, a patent for utility solutions is valid from the date of issuance and lasts for 10 years from the date of filing, while a patent for invention is valid for 20 years. Similar to a patent, to maintain the validity of a utility solution patent, the owner of the patent must pay annuity fees after the patent is granted.
CONCLUSION
Compared to a patent for invention, although the filing fees are not different, the prosecution for utility solutions is simpler and the term of protection is shorter. Therefore, utility solutions become the ideal choice for products with short technological life cycles. In addition to encouraging creativity, it also recognizes and honors the innovative efforts of inventors, allowing them to recover capital from their investments. Depending on the business strategy and product exploitation method, applicants should carefully consider the most suitable form of protection to optimize the economic efficiency of their products.
By Dao Thu Trang
Deputy Director of VNNA & ASSOCIATES
