Should my Invention be Protected as a Utility Model or as a Patent?

What is invention?

The invention comes into life when its  expert uses a specific technique which is clearly different from the normally applied state of its technique. It can often be described as “a technical way of solving a technical problem” in order not to impose limits on the concept of invention.

How to investigate whether the invention is new?

You can check whether your invention is novel or not by doing research on the websites for free, or you can ask this research to be carried out by Turkish Patent for a fee. You can conduct preliminary research on whether the technical status of the invention is known or not both through Turkish patents and through a database called EPOQUE, which is provided in foreign countries.

With priority right, you can ensure that your invention is protected in more than one country.

If you would like your invention to be protected in more than one country and if your first patent application was made in any country that is a party to the Paris Convention or the World Trade Organization Founding Agreement, within 12 months of that date, you can apply for an application, claiming that you have the priority right. If another patent application similar to that invention is filed between the date of the first  at the prior country and the date of application submitted with the right of priority, this application will not be considered  to its disadvantage.

What is a utility model?

In general, compared with patent protection utility models protect new  and industry applicable inventions. Although the subject of the utility model is the invention similar to patents, the invention step is not sought in order to provide protection in the utility model. The invention step is considered to be existent if the technique is apparent according to the expert in the relevant technical field in terms of the known state of the technique. The invention step is sought in patent registrations but not in the utility model, in order to prevent inventions that are new but not so different from the actual invention about a known situation. In general, utility models are considered particularly suited for protecting inventions that make small improvements to, and adaptations of, existing products or that have a short commercial life. Utility model systems are often used by local inventors.In general, compared with patents, utility model systems require compliance with less complicated requirements, have simpler procedures and also to give small and medium sized enterprises to benefit from making inventions and  procure their applicability to industry. The applicability to industry means that the invention is not theoretical but practical. Inventions That May Not Be Subject To A Utility Model

Inventions that cannot be protected by  utility models are regulated in the Industrial Property Law. Considered in addition to these patents (would be contrary to public order or morality inventions, biological processes, all treatment methods, only the discovery of one of the elements of the human body, human cloning activities, and without providing medical benefits to human or animals, and these animals suffer as a result of the process of genetic change that can be obtained); chemical and biological ways obtained in inventions, pharmaceutical inventions, biotechnological inventions are inventions of products obtained as a result of these procedures or the and procedures.

Utility Model Protection Application Process

The documents required during the utility model application are: (i) application form, (ii) the subject of the invention described in the specification, (iii) new claims about alleged technical protection of the invention specifically requested, (iv) reference drawings, (v) summary and (vi) the payment of the fee document.

The application for the utility model will not be processed if  one of applicant’s credentials and description documents is missing. If  applicant’s documents are not complete, the applicant will be given  a cure period of 2 months as of  the application date, if not completed in due time the application will be considered withdrawn.

The research report published in the Bulletin about the utility model will be evaluated only if the research report is not submitted by the applicant or third parties within 3 months, and if the opinion is submitted, the research report and opinions will be evaluated. If following the Institution’s evaluation, the applicant is granted the protection of a utility model, the decision will be notified to the applicant and published in the Bulletin.

It should be noted that; patent application can be converted to utility model application and utility model application can be converted to patent application. The utility model applicant can request that the utility model application be converted into a patent application by the end of the 3-month period following the notification date of the research report at the latest. Upon this request, the Institution will notify that the required documents must be submitted within 1 month of the notification date and the research request must be paid by paying the research fee. If the necessary conditions are not fulfilled within this period, the conversion request will be deemed void  and the application will be continued as a utility model application. However, re-conversion requests made after 1 time will not be taken into consideration. Similar procedures will be applied when converting a patent application into a utility model application.

How to apply for patent/utility model in foreign countries?

In order to apply for a patent or utility model in a foreign country, you can make your application by preparing the necessary documents according to the system and language of that country through a proxy from the relevant country. As a result of the Patent Cooperation Agreement, you can ensure that your invention is protected in more than one country in all the countries that are members of the PCT. In addition, it may be possible to have patent protection in all member states of the European Patent Convention or in selected countries.

Patent vs. Utility Model Comparison

In the light of the above, the similarities and differences between the patent and the utility model should be mentioned;

  • In order to meet the application requirements, they must both meet the elements of innovation and applicability to industry, while the invention step is also sought for the Patent, it is not sought for the utility model.
  • While the products obtained as a result of procedures and in general the procedures, pharmaceutical substances, biotechnological inventions, chemical and biological inventions can be patented, these cannot benefit from utility model protection.
  • While preparing a research report and a review report is required at the patent application stage, only the research report is sufficient in the utility model.
  • While patent protection is 20 years, utility model protection lasts 10 years. In addition, while the protection period of the patent can be extended, utility model protection cannot.
  • Objection procedures applicable for the patent, cannot be carried out for utility model protection, however invalidity may be requested from the court.

As a summary, the type of protection of the utility model and the patent are similar. The main differences are for the criteria for registration, the period of protection, the issues to be protected and the procedure applied before registration. Utility model protection provides an alternative method of protection compared to patents, with the short duration and low cost of the registration process. The main purpose of the utility model so-called “Minor Patent” is to protect the modest inventions of small and medium sized enterprises, which hold considerable place in our country’s economy and to ensure that they maintain their own economic assets. While inventions of high-level technological field can be protected by patents, modest inventions that increase production, simplify, improve quality and change production procedures and practices in that manner are also given the opportunity to contribute to technical development through protection with a utility model. It is highly advisable for our readers to evaluate the position of your inventions and make a thorough research on which method best suits your invention and get consultancy from competent advisors on these matters..