The Southeast Asian Utility Model
In the United States, there is no such thing as a utility model. Design patents are well-known among practitioners, and they are confined to the protection of a design’s decorative qualities rather than its usefulness. Utility patents are the only ones that protect function. As a result, a US applicant can only choose to protect an invention by filing a design patent or a utility patent application. A utility patent is the only option assuming the invention is functional. If the invention does not match the standards for a utility patent, it will lose its protection.
UTILITY MODEL ALTERNATIVE
Unlike the United States, a handful of states provide a viable alternative to either design or patent protection. The utility model needs for high-growth countries in Southeast Asia are the focus of this paper. We are referring to Indonesia, Malaysia, the Philippines, Thailand, and Vietnam in particular. In Singapore, there is currently no comparable utility model. As Singapore grows and strengthens its focus on intellectual property rights, this could alter.
- In Indonesia, a utility model is referred to as a simple patent.
- A simple patent is granted for unique items or devices that have a practical application but do not need an inventive step.
- A patent application based on a PCT application cannot be filed as a simple patent due to a new regulation implemented in December 2018.
- A simple patent, if issued, gives ten years of protection from the date of filing.
- In Malaysia, a utility model is referred to as a utility innovation.
- A utility innovation is given to new and industrially useful items or processes that do not require an inventive step.
- Once issued, a utility innovation offers ten years of protection from the date of filing, with the option of two five-year renewals.
C. The Philippines
- A utility model is given for new and industrially applicable goods or processes that do not need an inventive step.
- A utility model, once issued, offers 7 years of protection from the filing date.
- In Thailand, a utility model is known as a petty patent.
- A tiny patent is granted for new and industrially useful items or methods that do not need an inventive step.
- A petty patent is valid for six years from the date of filing, with two two-year renewals permitted.
- In Vietnam, a utility model is referred to as a utility solution.
- A utility solution is given for new and industrially applicable goods or processes that do not need an inventive step.
- A utility solution, once issued, gives ten years of protection from the date of filing.
Conversion Of Patent Applications
It is feasible to transition between a patent and a utility model, which is advantageous. This gives an applicant even more options when it comes to securing intellectual property rights.
- Indonesia: Only patent applications based on non-PCT applications are permitted to be converted into basic patent applications or vice versa. As a result, a PCT-based patent application cannot be transformed into a standard patent application.
- Malaysia: Conversion of a patent application into a utility innovation application or vice versa is permitted within six months of the issuing of the first substantive examination report.
- The Philippines: It is possible to convert a patent application into a utility model application or vice versa at any moment before the award or refusal of a patent.
- Thailand: It is permissible to convert a patent application into a petty patent application before the publication of the patent application. It is permissible to convert a petty patent application into a patent application before the registration of the petty patent.
- Vietnam: Conversion of a patent application into a utility solution application or vice versa is permitted at any moment before the award or rejection of a patent.
An applicant should file a patent application whenever an innovation qualifies as a patentable subject matter. A utility model, on the other hand, is a beneficial alternative source of protection if innovation is functional and does not meet patent standards. As previously stated, several jurisdictions allow for the conversion of a patent application to a utility model. Such a possibility exists if it becomes clear that a patent award will not be obtained.