Utility Models

Why Utility Models ?

WHAT CAN BE PROTECTED BY UTILITY MODELS?

Utility model is a form of protection of new technical solutions which are results of an inventive activity from any technical field.

Rights and obligations from creation and application of utility models is governed by the Act No. 517/2007 Coll. (PDF, 135,2 kB) on Utility Models and on Amendment of some Acts.

According to this Act the following shall not be deemed to be a technical solution

1. discoveries, scientific theories and mathematical methods;
2. aesthetic creations;
3. plans, rules and methods for performing mental acts, playing games or trade activities;
4. computer programmes;
5. presentation of information.

The following shall not be protected by utility model:

1. technical solutions commercial exploitation of which would be in contradiction with public order or good manners; prohibition of a technical solution exploitation as such shall not be considered to be in contradiction with public order or good manners within the meaning of this provision;
2. plant and animal varieties;
3. essentially biological processes for production of plants or animals;
4. methods of surgical or therapeutic treatment of human or animal body and diagnostic methods and methods of diseases prevention used on a human or animal body;
5. technical solutions concerning products consisting of biological material or containing biological material or a process by means of which the biological material is produced, processed or used;
6. methods for production of chemical substances;
7. methods for production of pharmaceutical substances; and
8. medical use of substances and compositions of substances.

WHAT FORM OF PROTECTION TO CHOOSE?

In protection of a technical solution it is necessary to choose an appropriate form of protection - patent, utility model, or both.

When answering this question it is necessary to consider several factors such as:

• term of protection and legal certainty of acquired protection
• required level of protection, term of validity and effects of protection granted
• length of proceedings before the Industrial Property Office of the Slovak Republic (hereinafter referred to as "the IPO SR")
• costs
• whether such solution was disclosed before filing, because disclosure of results of activity of an applicant or his legal predecessor, which occurred during last six months before filing an application, shall not be deemed to be state of the art.

REQUIRED EFFECT OF PROTECTION, TERM OF PROTECTION AND INTENSITY OF ACQUIRED PROTECTION

As far as the protection is concerned there is no difference between a patent and a utility model. Term of protection by a utility model shall be four years, but on request of a holder it may be extended twice for another 3 years. Maximum term of protection by a utility model shall be 10 years then. Such protection shall be ideal for objects with a shorter life cycle.

PROCEEDINGS BEFORE THE OFFICE

Every utility model application shall be a subject-matter to an examination procedure by the Office. Those utility model applications, which are not technical solutions, are not industrially applicable (can not be repeatedly used in industrial activities) or belong to exclusions from the protection, shall be excluded from further proceedings. When formal and material irregularities of a utility model application documents are corrected, the Office shall perform a research on state of the art on a technical solution subject-matter. The research result shall be communicated to an applicant, an application together with the research result shall be published and publication shall be announced in the Official Journal. Any person shall be entitled to file oppositions against entry of a utility model into the Register with the Office after publication of an application within three months from this publication. Oppositions shall contain legal and factual statement of reasons, as well as evidence or indication of evidence, submitted by an opponent.

If proceedings on an application has not been suspended or an application has not been refused within examination and no oppositions against entry of a utility model into the Register have been filed or oppositions against entry of a utility model into the Register have been refused, or proceedings on oppositions have been suspended, the Office shall enter a utility model into the Register and an applicant shall become a utility model owner.

The Office shall issue a certificate on entry of a utility model into the Register to an owner and entry of a utility model shall be announced in the Official Journal.

THE OFFICE SHALL CANCEL A UTILITY MODEL FROM THE REGISTER ON REQUEST OF A THIRD PARTY FOR REASONS SET BY THE ACT (ARTICLE 44)LENGTH OF PROCEEDINGS BEFORE THE OFFICE

Proceedings on a utility model application shall be simpler and shorter particularly when application documents have been processed properly with its filing.

Filing a utility model application shall be subject to an administrative fee of 68 €, and if an applicant is exclusively an author, 34 €.

HOW TO GET UTILITY MODEL PROTECTION?

Entry of a utility model into the Register shall be requested on a prescribed form of the Industrial Property Office of the Slovak Republic in a paper form or electronically. A utility model application in a paper form shall contain request for entry into the Register of utility models with the name of a technical solution in two copies, description of a technical solution, eventually drawings, at least one claim and abstract in one main and two accessory copies, identification data of an applicant or co-applicants, identification data of an author or co-authors and a document proving acquiring the right for utility model protection, if an applicant is not an author. Request and one accessory copy of description, claims and drawings shall be subscribed by an applicant or by his representative. Instructions for application form are in the INSTRUCTION of the Industrial Property Office of the Slovak Republic, which defines unified form of a utility model application.