Introduction
What are utility models?
Protection of utility models in Peru
Advantages of utility models
According to the latest report issued by the Peruvian Patent Office, during 2020, despite the covid-19 pandemic, inventors and national companies requested 527 applications for invention patents and utility models. Of these, 360 applications were utility model applications, which represents an increase of 24% compared with 2019 and 38% compared with 2018.
In view of this situation, it is worth asking why Peruvian inventors are increasingly seeking to protect their inventions through utility models – is there a particular legal situation granted by this form of protection that encourages its use?
Utility models protect inventions with a lower inventive step than a patent. Inventions that can be protected by utility models give an object, a tool or a product a better configuration, structure or composition, resulting in a practical advantage or a better use of an already-existing invention. As an example, a utility model could be used to protect folding chairs, since these incorporate elements that improve the use of an already-existing object – in this case, a chair – and provide a new utility or practical advantage, such as being able to bend the backrest at angles that a rigid chair could not do.
Thus, the development of a utility model does not require the same degree of creativity or innovation that is required for invention patents. The substantive requirements are less strict, giving the inventor more freedom to determine the specific innovative aspects they wish to explore, without having to propose a comprehensive technological innovation. For this reason, in addition to being more accessible to inventors, utility models are also granted with a shorter duration compared with the duration of invention patents.
The utility model regime constitutes an ideal protection scheme in countries where technological and human capacity does not allow the development of high-tech inventions. Utility models provide the necessary legal guarantees to protect the innovative advances that can be developed.
Protection of utility models in Peru
In Peru, along with the other countries of the Andean Community, the protection of utility models is regulated by Decision 486. Article 81 of Decision 486 states that a utility model may constitute any new form, configuration or arrangement of elements, of any artifact, tool, instrument, mechanism, or other object, or of any part thereof, that:
- enables a better or different operation, use or manufacture of the object that incorporates it; or
- provides it with some utility, advantage or technical effect that it did not have before.
Article 81 not only establishes the subject matter that may be protected by a utility model, but also incorporates the conditions required to access its protection. It states that the model must satisfy the condition of novelty, not only in its form or configuration of elements, but also in the solution that it entails.
In this sense, for the protection of a utility model, it is only necessary to fulfil a single requirement: novelty – that is, a substantial impact generated with regard to the use of an already existing technology.
The requirements to obtain a utility model are more accessible than those of invention patents, making them more convenient for inventors in the context of promoting innovation in developing countries. While inventions covered by patents must propose innovative technological solutions, utility models only require that such innovations are not obvious in light of the state of the art. In other words, inventions protected by utility models need not have a direct impact on the solution of the underlying technological problem, but they must provide a tangential intervention.
Utility models are also useful within the framework of promoting a culture of use of the IP system in the business sector, with the aim of contributing to economic reactivation. This is particularly the case for small and medium-sized enterprises, which are one of the most important engines of the Peruvian economy. The Peruvian industrial sector has matured technologically such that utility models constitute suitable guarantors of protection. If this were not the case, they could generate a counterproductive impact on the local technological development.
For further information on this topic please contact Lucero Ticona at OMC Abogados & Consultores by telephone (+51 1 628 1238) or email ([email protected]). The OMC Abogados & Consultores website can be accessed at omcabogados.com.pe.