- The Object of Protection: Strictly a «Device»
A utility model exclusively protects a «device» (apparatus). This is a strict definition, meaning the object must be a single, integral construction or an assembly unit consisting of several parts that are constructively and functionally connected.
Complex systems (like GPS or computer networks), technological lines, or kits containing multiple independent devices are not considered utility models.
Furthermore, methods, substances, new applications of known objects, or strains of microorganisms are also excluded from utility model protection. If your innovation involves a broader system or method, an invention patent is likely a more suitable route.
- The Technical Result: A Singular Focus, Clearly Justified
For a utility model, your application must describe a single technical result, and all features in the independent claim must contribute to achieving it. You cannot claim multiple technical results if different sets of features achieve different outcomes. If your solution yields several benefits, you must either identify one overarching technical result or select the most important one and frame your claims around it.
The result must be technical in nature, representing a phenomenon, property, or technical effect, and typically characterized by physical, chemical, or biological parameters. Economic, aesthetic, or purely informational benefits are generally not considered technical results.
Crucially, you must provide objective justification for how the technical result is achieved in your initial application materials, either theoretically or through experimental data. This cannot be added later during the examination phase.
- Navigating Novelty and Prior Art with Precision
A thorough patent search is even more critical for utility models than for inventions due to a specific approach to novelty assessment. Incorrectly identifying the closest analogue (prototype) can lead to rejection or a narrowly scoped patent.
For utility models, if the stated technical result is achieved through the specific features, the generic concept (e.g., «fastening element» vs. «screw») might be disregarded during the novelty check. This nuance highlights the need for a precise understanding of the novelty requirements.
- Crafting Your Claims
Fewer Features for Broader Protection: Aim for the fewest possible essential features in your independent claim to ensure broader legal protection for your utility model. Including irrelevant features can make your patent easy for competitors to circumvent.
Avoid Alternatives: Direct use of alternative terms like «or,» or «in particular» in claims is generally not allowed, as a patent should protect a single utility model.
Use Generalizing Terms: Employ broader, generalizing terms (e.g., «fastening element» instead of «screw»). Unlike inventions, principles of equivalence are not applied for utility models, making them more vulnerable to circumvention if claims are too specific.
Sufficient Disclosure: The application must fully disclose the device – its parts, their construction, their interconnections, and how it operates – in enough detail for a specialist in the field to implement it.
In Conclusion:
While seemingly straightforward, preparing a utility model application demands meticulous attention to specific requirements, particularly regarding the object of protection, the technical result, and the precise drafting of claims. Given these nuances and the potential for rejections or obtaining a less effective patent, engaging a patent specialist is highly advisable. They can help navigate the complexities and ensure your intellectual property is adequately protected.
