A number of amendments to the Law on Utility Models 1991 (XXXVIII) will take effect on January 1 2018.
The most substantial amendments are:
- the official confirmation of simultaneous patent and utility model protection; and
- the introduction of an option to request an opinion from the Hungarian Intellectual Property Office (HIPO) on novelty and inventive step, which can be used in infringement cases to prevent proceedings from being suspended when a utility model's novelty or inventive step has been called into question.
This update provides a summary of the key amendments, excluding several smaller amendments which serve to clarify the existing law and harmonise it with the Patent Law.
Scope of a utility model?
The expectation that the scope of a utility model would be broadened has not transpired. As such, utility model protection can be granted only to:
- a product's form or shape;
- a product's internal structure; or
- the arrangement of a product's parts.
A system that comprises a plurality of mutually interconnected devices can also be protected, but a product's pure aesthetic design cannot. Plants and chemical products and mixtures are also excluded from protection.
Definition of 'prior art' updated
The old, obsolete definition of 'prior art' has been updated so that it aligns with the European Patent Convention. Previously, 'public use' was limited to domestic public use. However, the term 'domestic' has been removed from the amended act and, as such, any public use that occurs before the priority date belongs to the prior art.
Definition of 'inventive step' clarified
To avoid misunderstandings, the amended act states that "the existence of [an] inventive step is not proven by the mere fact [that] the state of the art is defined by a plurality of different sources or [that] these sources are available in a foreign language".
This statement is only explanatory and does not exclude the establishment of inventive step if the object of the invention derives from different sources. However, in such cases, a further requirement (ie, a certain level of non-obviousness) should be met.
Clarified definition of 'public order'
A product is excluded from utility model protection if it is against public order or good morals. Under the amendments, a product cannot be said to be against public order merely because it is against the law.
Broadening scope of protection
The list of infringing acts has been broadened to include the "offer for sale, and storage or importation of [a] product for such (ie, offer for sale) purposes".
A compulsory licence should be granted in the case of dependent rights (ie, if a patented product or plant cannot be used without injuring a utility model). The amendments provide that in such cases, the corresponding Patent Law rules should be applied.
Unlawful appropriation of utility models
The existing law provides that in the case of the unlawful appropriation of a utility model, the rightful owner can demand only the full or partial assignment of the utility model. Under the amendments, rightful owners can also claim damages in accordance with the rules of civil law.
Seriousness of legal declarations
The amendments have clarified that if a rights holder has abandoned its utility model or rights thereto, any later withdrawal of the abandonment has no legal effect.
Broadening revocation grounds
The existing revocation grounds have been broadened to include where a utility model has not been granted to a party that is entitled to it.
In light of this change, the genuine owner of an invention that has unlawfully been used has the right to request either the assignment or the invalidation of the utility model.
Seriousness of revocation decisions
Under the amendments, a second revocation on the same ground as a previous revocation which has been finally rejected is prohibited.
Granting of extension of term
The Hungarian Intellectual Property Office (HIPO) should grant a one to three month extension of term if it is requested to do so before the term's expiration. Only one further extension is possible.
Payment of application fee
The application fee should be paid within two months from the filing date.
Submission of Hungarian translation
If an application is made in a foreign language, a Hungarian translation must be submitted within four months from the filing date.
Where applicant cannot be contacted or reached
If an applicant cannot be contacted or reached and the HIPO therefore cannot issue communications regarding insufficiencies in the application, the term to remedy this is two months from the filing date. This is an exceptional rule that applies when an application is filed, but the applicant's address or other identifying data is not provided. In practice, if the applicant does not get in touch within two months, the application will be abandoned.
Special rules when parallel patent and utility protections exist
The existing law excludes double protection in cases where a utility model is derived from a patent or design application. This rule has been removed from the amended law (ie, parallel utility model and patent protection can now be granted for the same invention).
Under the amendments, if a revocation proceeding is decided with regard to one of the two kinds of protection, the statements and decisions of this first proceeding are binding in proceedings concerning the other form of protection (where they are applicable to this second proceeding).
New right to request opinion on protectability of utility model
Under the amendments, a utility model owner or applicant can now request the HIPO to carry out an examination into the protectability of the utility model and provide an opinion on whether it is novel and inventive.
Such requests must be made following the payment of a prescribed fee and can take place either before or after the granting of the utility model. The examination will take place separately to and independent of the official examination (which does not extend to an examination of novelty and inventive step).
The HIPO will prepare its written opinion within six months from the filing of the request to do so. If it fails to prepare its opinion on time, the fee will be restituted.
The written opinion should be published. If it is prepared before the application is granted, it should be published together with the granting decision; otherwise, it should be published in a separate publication.
Special rights in case of utility model infringement if opinion already obtained
The amendments will substantially change infringement proceedings. At present, if a utility model is infringed and the infringing party launches a revocation action against the utility model, the infringement proceeding will be suspended until a final decision on the utility model's validity has been made. This has led to extremely long cases in which a HIPO and first and second-instance court decision is required, with the main infringement proceedings starting only after the long initial proceedings.
Under the amendments, if a written opinion has been obtained from the HIPO and the owner of the utility model right initiates infringement proceedings against a potential infringer, the court can examine and decide the validity and the infringement in the same proceeding without consulting the HIPO. This new procedure will shorten the time that it takes to reach a final decision in utility model infringement cases.
As such, all applicants are strongly advised to use this option and request such an opinion. The costs are not yet known, but in patent matters it is less than €200.
For further information on this topic please contact Michael Lantos at Danubia Patent & Law Office LLC by telephone (+36 1 411 8800) or email ([email protected]). The Danubia Patent & Law Office LLC website can be accessed at www.danubia.hu.