Utility model application | Vozáb & Co.
JUDr. Jakub Vozáb, PhD.
13.05.2022
Do you need to protect a new technical solution and hesitate to apply for a utility model or patent?
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What is a utility model. It is a technical solution that goes beyond the scope of mere expertise, however, it does not have to reach the quality of a revolutionary invention. It is sufficient if the technical solution within the utility model is new and industrially applicable, i.e. it is possible to use it commercially. The conditions for the protection of a utility model differ from protection by a patent only in the requirement for the level of the solution. However, the fundamental difference compared to patents for inventions is that a utility model cannot protect production processes, but only the technical solution itself.
The procedure for the application of a utility model is based on the registration principle, where the Industrial Property Office only examines the fulfillment of the formal conditions for entering a utility model in the register and does not deal in depth with the novelty or the creative level of the technical solution. The procedure for registration of a utility model is therefore usually completed three to four months after the application is submitted.
As part of the utility model application, great attention must be paid to the preparation of the so-called utility model application bases, as the application bases have fixed formal rules for all parts of the bases, which are: description of the area and state of the art, essence of the technical solution, clarification of drawings , an example of the implementation of a technical solution, industrial applicability, claims for protection, a list of related marks and the drawings themselves.
Utility model application forms is based on the invention application forms, only they are a little less extensively. However, the formal rules are analogous, and for a layman in this legal and administrative area, the preparation of the documenttion can mean more or less difficulties, and intractable situations can arise where the applicant is unable to comply with the comments of the Industrial Property Office.
In such a case, it is necessary to be patient and, if necessary, seek the help of an expert in order to avoid the loss of the right to protection for purely procedural reasons.
The details are then regulated by the INSTRUCTION OF THE CHAIRMAN OF THE INDUSTRIAL PROPERTY OFFICE No.: 2020/D20085979/10/ÚPV dated September 8 2020, which establishes the standard for editing an invention application, an application for the granting of a supplementary protection certificate for medicinal products and for plant protection products, a utility model application and a translation of a European patent application and a European patent with effects for the Czech Republic.
How to apply for registration of a utility model
You apply for the registration of a utility model on the basis of a utility model application, which is submitted on the prescribed form to the Industrial Property Office (hereinafter the Office). The application can be submitted electronically with a recognized electronic signature, via a data box, or in writing by post, or it can be submitted in person at the office of the Office. The application must contain a single copy of the application form for the registration of a utility model, as well as a description of the technical solution, then at least one claim for protection and, if necessary, drawings must be attached.
Documentation must allow high-quality electronic and direct reproduction for an unlimited number of copies, especially by scanning, which mainly applies to documentqtion in printed form submitted to the Office in person, where the quality of processing must be monitored. The documentation shall be supplied in one main version and two secondary ones. One copy must be signed by the applicant or his representative. Documentation in paper form must have at least one copy made on white, strong, matte and durable paper of A4 format. Drawings can also be submitted on translucent paper. An image or text on each sheet shall appear in portrait form on exactly one side of the sheet, except for images on two or more sheets representing a single complete image, and excluding tables, where applicable. When submitting electronically, the documentation shall be submitted in „docx“ MS WORD format.
The application must state who is the originator of the subject of the utility model application.
One application for a utility model may contain only one technical solution or a group of solutions that are connected to each other in such a way as to realize a single technical idea.
The technical solution must be explained in the application to such an extent and so clearly that it can potentially be implemented by an expert.
Priority Right
By submitting an application, the applicant acquires the so-called right of priority, or the right of priority in relation to the protection of the given technical solution. The moment of filing the utility model application thus determines the order of rights, which is decisive for registration and thus for the granting of utility model protection.
Proceedings on the utility model application
The Office will subject the application to a registrability survey to determine whether it contains a subject that is not a technical solution within the meaning of the law or whether it is not excluded from utility model protection, whether it clearly does not meet the conditions of industrial applicability or whether the application has deficiencies preventing registration. However, the office does not conduct a survey of the material eligibility of the subject of the application, as regards the declaration of protection.
Only the applicant, who may be represented by a representative appointed by him, is a participant in the utility model application proceedings. If the originator of the utility model is not the applicant at the same time, then he is not a party to the proceedings.
The amount of administrative fees for actions performed by the Office is determined by the Schedule of Administrative Fees, which is an annex to Act No. 634/2004 Coll., on Administrative Fees, as amended. Administrative fees are payable upon submission and the fee for each required action must be paid separately.
Registration of utility model and scope of protection
If the application as a whole is in order, or if the irregularities pointed out by the office as part of the survey are removed, the Office will enter the utility model in the Register of utility models. Register of utility models is publicly available. After the utility model has been entered in the register, the Office will publish the utility model application. From this point on, the given technical solution is part of the current state of the art and must be taken into account when assessing the novelty of further applications for utility models or patents.
What is essential then is that the effects of the utility model (granting of protection and acquisition of rights from registration) occur when it is registered in the Office's register. At this moment, the owner acquires the right resulting from the registration, in particular the exclusive right to prevent other persons from freely using the same technical solution, it is also possible to grant another person a license to use the registered utility model, etc.
„The scope of protection“ of the technical solution resulting from the registered utility model is defined by the claims for protection, not as they were stated in the application, but as they were finally entered in the register of utility models after any floor modifications initiated by the Office as part of the review of the application. Registration of a utility model is valid for 4 years from the filing of the application. The validity period of the registration of a utility model can be extended twice by 3 years at the request of the owner of the utility model, up to a total protection period of 10 years from the date of filing the utility model application. Extension of validity is subject to payment of the relevant fee.
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