A matter arising quite often in patent applicants through the Patent Cooperation Treaty (PCT) is whether they can transform their current patent application into a utility model.

WHEN CONVERTING THE PATENT INTO UTILITY MODEL?

This change in registration category generally arise after receiving the International Search Report informing of possible difficulties in the further processing.

In order to clarify the concept, I leave the following simplified diagram of the process of a patent by the PCT system:

PCT patent

As it is shown, from the ninth month the designated office will issue the result of the International Search Report (IBI). This outcome is not binding because the national/regional offices will be the responsible for carry out the possible objections in view of the report; anyway IBI gives a good orientation of what can be found later.

It is also possible to modify the set of claims about the current application and submit them together with a series of observations trying to save the objections found in the IBI, and even submit them again to review and examination. 

WHY CONVERTING A PATENT INTO UTILITY MODEL?

Still, transforming the international patent application by the PCT into national utility model application may be a good strategy, after the publication of the patent application and always within 30 months from the date of application.

This is due to the lower standards of novelty and inventive step required for a utility model application. This kind of registration is designed to protect the benefits or new enhancements involving an inventive step which are obtained in the configuration, structure or constitution of utensils, tools or devices. Into an international level and comparing both these procedures, we find these main differences:

Patent of invention:

  • Requires international novelty.
  • Submitted to reports or novelty examinations.
  • Long processing periods (overage of 30 months).
  • Gives protection up to 20 years.

Utility model:

  • Requires national novelty.
  • Submitted to mandatory examination only in a few countries. As an alternative, third parties oppositions are opened.
  • Quick processing (about 6-8 months)
  • Gives protection up to 10 years.

The advice of a professional who shall analyse and knowing the case in specific way will be vital in order to make the most appropriate decision.

At this point, it should be noticed that utility model is not contemplated in all countries legislations. In fact, it exists only in a few of them:

Armenia, Australia, Austria, Belarus, Belgium, Brazil, Bulgaria, China, Chile, Denmark, Estonia, Ethiopia, the Russian Federation, Finland, France, Georgia, Greece, Hungary, Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Malaysia, Netherlands, Poland, Portugal, Czech Republic, Republic of Korea, Republic of Moldova, Tajikistan, Trinidad and Tobago, Turkey, Ukraine, and Uzbekistan.

Comparing the above list with the current members of the Patent Cooperation Treaty system:

Germany, United Arab Emirates, Antigua and Barbuda, Albania, Armenia, Angola, Austria, Australia, Azerbaijan, Bosnia and Herzegovina, Barbados, Belgium, Burkina Faso, Bulgaria, Bahrain, Benin, Brunei Darussalam, Brazil, Botswana, Belarus, Belize, Canada, Central African Republic, Congo, Switzerland, Ivory Coast, Chile, Cameroon, China, Colombia, Costa Rica, Cuba, Cyprus, Czech Republic, Denmark, Dominica, Dominican Republic, Algeria, Ecuador, Estonia, Egypt, Spain, Finland , France, Gabon, United Kingdom, Granada, Georgia, Ghana, Gambia, Guinea, Equatorial Guinea, Greece, Guatemala, Guinea-Bissau, Honduras, Croatia, Hungary, Indonesia, Ireland, Israel, India, Iran, Iceland, Italy, Japan , Kenya, Kyrgyzstan, Comoros, Saint Kitts and Nevis, Democratic Republic of Korea, Republic of Korea, Kazakhstan, Lao People’s Democratic Republic, St. Lucia, Liechtenstein, Sri Lanka, Liberia, Lesotho, Lithuania, Luxembourg, Latvia, Libya, Morocco, Monaco, Republic of Moldova, Montenegro, Madagascar, Republic of Macedonia, Mali, Mongolia, Mauritania, Malta, Malawi, Mexico, Malaysia, Mozambique, Namibia, Niger, Nigeria, Nicaragua, Netherlands, Norway, New Zealand, Oman, Panama, Peru , Papa New Guinea, Philippines, Poland, Portugal, Qatar, Romania, Serbia, Russian Federation, Rwanda, Saudi Arabia, Seychelles, Sudan, Sweden, Singapore, Slovenia, Slovakia, Sierra Leone, San Marino, Senegal, Sao Tome and Principe El Salvador, Syrian Arabian Republic, Swaziland, Chad, Togo, Thailand, Tajikistan, Turkmenistan, Tunisia, Turkey, Trinidad and Tobago, Tanzania, Uganda, Ukraine, United States of America, Uzbekistan, Saint Vincent and the Grenadines, Vietnam, South Africa, Zambia, Zimbabwe.

We can deduce where it is possible to transform a patent application by the PCT into utility model and where to file the application for utility models during the first year of international priority of the patent application.

HOW TO CONVERT A PCT PATENT APPLICATION INTO UTILTY MODEL?

In practice, this transformation can be done in 2 different ways:

  1. Using the international priority of the patent application by the PCT during the first year of processing for those states that are not members of PCT system (Kazakhstan, Malaysia, and Republic of Moldova). For that, it will be necessary to provide in the application the priority document issued by the office where the patent was filed.
  2. During the entry into national phases, after the publication with a maximum term of 30 months. In this case, it would be interesting to see whether it is advantageous to make any changes in the original set of claims based on the discussed in the IBI.

In both cases, for what concerns management, you will have to indicate the modality change at the moment of national application, which must be provided in the appropriate official language.

It will be also necessary to have a legal authorized representative to submit such national application if you do not have a domicile in the country of destination, something highly recommended in all cases by the guarantees of advice and quality management that provides the support of a professional team.

Do you need advising to convert a patent into utility model?

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