There is no equivalent to a utility model in the US. Practitioners are of course well aware of design patents and the fact that they are limited to the protection of the ornamental features of a design and not its functionality. Protection of functionality is reserved for utility patents. A US applicant therefore may only choose protection for an innovation by filing an application for either a design patent or a utility patent. Assuming the innovation is functional, a utility patent is the only alternative. If the innovation does not meet utility patent requirements, protection will be lost.
The utility model alternative
Unlike the US, there are a number of jurisdictions that offer a viable alternative to either protection as a design or as a patent. Here we focus on the utility model requirements for the high growth jurisdictions of South East Asia. In particular, we refer to Indonesia, Malaysia, the Philippines, Thailand and Vietnam. To date, there is no equivalent to a utility model in Singapore. This may well change as Singapore continues to grow and strengthen its focus on intellectual property rights.
Conversion of patent applications
Advantageously, it is possible to convert between a patent application and a utility model. This provides an applicant with even greater flexibility in securing intellectual property rights.
|Indonesia||Conversion of a patent application into a simple patent application or vice versa is only allowable for patent applications based on non-PCT applications. Thus, a patent application based on a PCT application cannot be converted into a simple patent application.|
|Malaysia||Within six months from the issuance of a first substantive examination report, conversion of a patent application into a utility innovation application or vice versa is allowable.|
|The Philippines||At any time before the grant or refusal of a patent, conversion of a patent application into a utility model application or vice versa is allowable.|
|Thailand||Prior to the publication of a patent application conversion of the patent application into a petty patent application is allowable. Prior to registration of the petty patent conversion of the petty patent application into a patent application is allowable.|
|Vietnam||At any time before the grant or refusal of a patent, conversion of a patent application into a utility solution application or vice versa is allowable.|
Whenever an innovation qualifies as patentable subject matter, an applicant should always pursue a patent application. However, if an innovation is of a functional nature, which does not satisfy patent requirements, a utility model is a valuable alternative source of protection. As noted above, some jurisdictions permit conversion from an application for a patent to a utility model. Such a possibility allows for a situation where it becomes apparent that a patent grant will not be achieved.