What and how to protect with a utility model?
What can be protected with a utility model?
A utility model is a form of legal protection for new industrially exploitable technical solutions resulting from the activity of an inventor in any field of technology.
The rights and obligations arising from the creation and application of utility models are regulated by Act No. 517/2007 Coll. on utility models and on amendments and supplements to certain acts, as amended (zákon č. 517/2007 Z. z. o úžitkových vzoroch a o zmene a doplnení niektorých zákonov v znení neskorších predpisov).
In particular, the following shall not be regarded as technical solutions under this Act
a) discoveries, scientific theories and mathematical methods,
b) aesthetic creations,
c) plans, rules and methods for the conduct of intellectual activity, games or commercial activity,
d) computer programs,
e) the mere giving of information.
A utility model may not protect
a) technical solutions the use of which would be contrary to public policy or good morals; whereas the mere prohibition by law of the use of a technical solution shall not be deemed to be contrary to public policy or good morals within the meaning of this provision,
b) varieties of plants and breeds of animals,
c) essentially biological ways of creating plants or animals,
d) surgical or therapeutic methods of treatment of the human body or animal body and diagnostic methods and methods of prevention of disease employed on the human body or animal body,
e) technical solutions relating to products consisting of or containing biological material or to the means by which biological material is produced, processed or used,
f) methods for the production of chemical substances,
g) methods for the production of pharmaceutical substances; and
h) medical uses of substances and mixtures of substances.
i) solutions relating to the processing of data for administrative purposes, business purposes, financial purposes, managerial purposes, surveillance purposes, predictive purposes or other non-technical purposes.
Which form of protection to choose?
When protecting a technical solution, it is always necessary to decide whether patent, utility model or both at the same time will be the appropriate protection.
In answering this question, there are a number of relevant factors to consider:
- the duration and legal certainty of the protection acquired,
- the length of the proceedings before the Industrial Property Office of the Slovak Republic (hereinafter 'the Office'),
- financial costs,
- whether the solution was disclosed prior to filing, since the state of the art is not such disclosure of the results of the work of the applicant or his predecessor in title as occurred in the last six months prior to the filing of the application.
Required effect of the protection, duration and intensity of the protection acquired
There is no difference between a utility model and a patent as far as the effects of protection are concerned. The term of protection of a utility model lasts only four years, but it can be extended twice for three years at the request of the owner. The maximum duration of a utility model is 10 years. This protection is therefore ideal for items with a shorter lifetime.
Proceedings before the Office
The Office shall subject each utility model application to an examination, whereby utility model applications that are not technical solutions, are not industrially exploitable (cannot be repeatedly used in economic activity) or fall within the exclusions from protection are excluded from further proceedings. After the formal and substantive deficiencies of the utility model application documents have been eliminated, the Office shall carry out a state-of-the-art search on the subject matter of the technical solution. The Office shall notify the applicant of the result of the search and shall publish the application together with the result of the search; the publication shall be announced in the Gazette. After publication of the application, any person may, within a period of three months from such publication, file with the Office objections to the registration of the utility model; the objections shall contain a statement of the legal and factual grounds for the objection, as well as the evidence and, where appropriate, an indication of the evidence to be submitted by the objector.
If the application proceedings have not been discontinued or the application has not been rejected in the examination and no opposition has been filed against the registration of the utility model or the opposition to the registration of the utility model has been rejected or the opposition proceedings have been discontinued, the Office shall enter the utility model in the Register and the applicant shall become the holder of the utility model.
The Office shall issue a certificate of registration of the utility model (registra) to the holder of the utility model and shall announce the registration of the utility model in the Gazette.
At the request of a third party, the Office shall delete the utility model from the register on the grounds provided for by law.
Time of proceedings before the Office
The procedure for filing a utility model application is simpler and shorter, especially if the application documents have already been competently prepared at the time of filing.
The filing of a utility model application is subject to an administrative fee of 68 € and, if the applicant is solely the originator, 34 €.
How to obtain protection by utility model?
The registration of a utility model in the register may be applied for on the prescribed form (tlačive) of the Industrial Property Office of the Slovak Republic in paper form in person or by post to the address of the Office in Banská Bystrica or also electronically. The application for registration of a utility model in paper form must contain an application for registration in the Register of Utility Models with the name of the technical solution in one copy, a description of the technical solution or drawings, at least one claim for protection and an annotation in triplicate, identification data of the applicant or co-applicants, identification data of the originator or co-originators and proof of acquisition of the right to protection by the utility model, if the applicant is not the originator. The application and one copy of the description, claims and drawings shall be signed by the applicant or his representative. Instructions for amending the application are given in the Instruction (Inštrukcii) of the Industrial Property Office of the Slovak Republic regulating the uniform form of the utility model application.