Prosecution With Little Or No Substantive Examination

Utility model patents (also known as "petty patents" or "utility innovations") can be granted for inventions with reduced novelty and nonobviousness requirements. Instead of extending for 20 years from earliest claimed priority date, utility model patents usually expire in only 7-14 years (often without the possibility of renewal). But they are easier to get because they have only little or no substantive examination. The idea is that the patent office will merely handle the paperwork and address technical sufficiency of the application. If litigation ever arises, the courts address the issues of anticipation, obviousness, and so forth.

In practice, an applicant usually files a utility model patent application because: (a) the invention has a short life cycle; (b) the applicant wants to get some form of patent protection right away; and/or (c) the invention is of an incremental character that might not satisfy the nonobviousness standard for a utility patent. It is relatively common to file both utility and utility model applications on the same invention. Some patent attorneys recommend filing such non-examined applications so that the client can almost immediately say that their product has patents pending and is patented internationally.

Utility model applications cannot be filed through the PCT or the EPO. Instead they must be filed nationally. A good link explaining utility models can be found at the WIPO website. WIPO lists the countries in which one can file utility model applications as follows: Australia, Argentina, Armenia, Austria, ARIPO, Belarus, Belgium, Brazil, Bulgaria, China, Colombia, Costa Rica, Czech Republic, Denmark, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Hong Kong, Hungary, Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia , Malaysia, Mexico, Nepal, Netherlands, OAPI, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Russian Federation, Slovakia, Spain, Thailand, Taiwan, Tajikistan, Trinidad & Tobago, Turkey, Ukraine, Uruguay and Uzbekistan. South Africa calls its patents utility patents rather than utility model patents, but such patents are not substantively examined.

New Zealand is not on the list, presumably because they do not officially offer utility model applications. But New Zealand's substantive examination focuses entirely on novelty, and obviousness is not an issue.

In some countries, (e.g., Hong Kong) an applicant must secure an invention report (substantive examination) before filing suit against an alleged infringer.