Registration of an Invention and Utility Model

An idea, a technical solution, a new device, a production method, or an improvement of an existing product may have significant commercial value for a business. However, an idea alone does not always provide its author or company with proper legal protection.

To obtain legal protection for a technical solution, it is necessary to correctly identify the object of protection, prepare an application, and complete the state registration procedure for an invention or utility model.

VINCO’S Legal Company supports clients at all stages of registering inventions and utility models: from the initial analysis of the technical solution to filing the application, communicating with the IP Office, and obtaining the patent.

An invention and a utility model are results of intellectual and creative activity in the field of technology. They may relate to a new product, device, method, technological process, or technical improvement.

Legal protection of an invention or utility model is confirmed by a patent. A patent certifies priority, authorship, and proprietary intellectual property rights to the relevant object.

At the same time, not every idea can be registered as an invention or utility model. To qualify for protection, a technical solution must meet the patentability requirements established by law.

The key difference between an invention and a utility model lies in the patentability requirements, the application examination procedure, and the term of legal protection.

An invention must meet three requirements:

• novelty;
• inventive step;
• industrial applicability.

A utility model must meet two requirements:

• novelty;
• industrial applicability.

In practice, a utility model is often chosen to protect technical solutions related to devices, structural solutions, or methods when it is important to obtain a protection document more quickly. An invention is usually more appropriate when the technical solution is more complex, has a higher innovative value, and requires stronger legal protection.

The correct choice between an invention and a utility model is important because it affects the scope of legal protection, the duration of the procedure, further enforcement of rights, and commercial use of the object.

The object of an invention may include, in particular:

• a product;
• a device;
• a substance;
• a microorganism strain;
• a plant or animal cell culture;
• a process or method.

The object of a utility model may include:

• a device;
• a process or method.

At the same time, the law provides for a number of objects that are not protected as inventions or utility models. For example, discoveries, scientific theories, mathematical methods, rules and methods of doing business, computer programs as such, forms of presentation of information, or the external appearance of a product aimed solely at satisfying aesthetic needs cannot be protected independently as an invention or utility model.

That is why it is important to conduct a preliminary analysis before filing an application and determine whether a specific solution may receive patent protection.

Priority is crucial for inventions and utility models. If a similar technical solution is filed earlier by another person, this may complicate or even make registration impossible.

It is also important to be cautious when disclosing information about the technical solution to third parties before filing the application, publishing its description, presenting it at exhibitions, in presentations, or commercial proposals. Premature disclosure of the essence of the solution may create risks for its novelty and further patenting.

If it is necessary to discuss the technical solution with partners, investors, manufacturers, or contractors before filing the application, it is advisable to first enter into a non-disclosure agreement.

A patent for an invention or utility model allows its owner to control the use of the relevant technical solution.

In particular, a patent may provide the ability to:

• prohibit others from using the patented solution without permission;
• commercialize the technology or product;
• transfer rights to the intellectual property object;
• enter into license agreements;
• receive royalties;
• use the patent as an intangible business asset;
• strengthen the negotiating position with investors, partners, or manufacturers;
• protect the technical solution in case of infringement.

For a business, a patent may serve not only as a legal protection tool but also as an important element of the company’s investment attractiveness.

The term of proprietary intellectual property rights to an invention is 20 years from the filing date of the application with the National Intellectual Property Authority.

The term of proprietary intellectual property rights to a utility model is 10 years from the filing date of the application with the National Intellectual Property Authority.

To maintain the rights in force, the relevant annual fees must be paid on time. If such fees are not paid within the established period, the proprietary rights may be terminated.

The registration procedure usually includes the following stages:

1. Initial consultation and analysis of the technical solution.
2. Determining the optimal form of protection: invention or utility model.
3. Preliminary patent search and risk assessment.
4. Analysis of novelty, industrial applicability and, for an invention, inventive step.
5. Preparation of the description of the invention or utility model.
6. Preparation of the claims of the invention or utility model.
7. Preparation of drawings, schemes, or other materials, if necessary.
8. Preparation of the abstract and application for state registration.
9. Filing the application with the IP Office.
10. Support during formal examination.
11. For an invention — support during substantive examination.
12. Preparation of responses to examination requests, if necessary.
13. Payment of the required official fees.
14. Receipt of the decision on state registration.
15. State registration and obtaining the patent.

To prepare an application, it is usually necessary to provide:

• information about the applicant;
• information about the author or authors of the technical solution;
• the title of the invention or utility model;
• a description of the technical problem solved by the object;
• a description of the essence of the technical solution;
• information about advantages compared to existing solutions;
• drawings, schemes, tables, or other materials, if necessary to disclose the essence of the solution;
• information about any known use or publication of the solution, if applicable;
• documents confirming the applicant’s rights if the applicant is not the author.

It is important that the description discloses the essence of the technical solution fully and clearly, and that the claims are drafted correctly. The claims define the scope of legal protection, so their preparation is one of the key stages of registration.

Preparing an application without proper legal and technical analysis may lead to significant risks.

The most common problems include:

• incorrectly chosen object of protection;
• insufficiently detailed description of the technical solution;
• claims that are too narrow or incorrectly drafted;
• absence of important features in the application materials;
• violation of the unity requirement for an invention or utility model;
• late response to an examination request;
• refusal of state registration;
• difficulty in further patent enforcement;
• risk of invalidation of rights in the future.

Errors at the application preparation stage may have long-term consequences, as after filing it is not always possible to broaden the scope of legal protection or add new essential features.

VINCO’S Legal Company provides comprehensive support for the registration of inventions and utility models.

We can assist with:

• consultation on the patentability of a technical solution;
• choosing the optimal form of protection;
• conducting a preliminary patent search;
• analyzing refusal risks;
• preparing the application structure;
• preparing or legally reviewing the description and claims;
• preparing the application and supporting documents;
• filing the application with the IP Office;
• communication with the examination body;
• preparing responses to examination requests;
• monitoring deadlines and official payments;
• supporting the procedure until the patent is obtained;
• further support with assignment of rights, licensing, or patent enforcement.

If you have created a new technical solution, device, method, or product improvement, the VINCO’S team will help assess the possibility of patenting it, choose the right protection strategy, and support the registration procedure until the patent is obtained.