What is an utility model patent?

A utility model is similar to a patent in that it provides a monopoly right for an invention. However, utility models tend to be much cheaper to obtain, the requirements for grant of a utility model are usually less stringent and the term is shorter. Not all countries grant utility models. However, countries granting utility models (or similar/equivalent rights with a different name) do include Germany, France, Spain, Italy, Japan, China and Australia.

Whereas a patent provides protection for up to 20 years, a utility model provides protection for a shorter term, usually between seven and 10 years.

Safeguards against abuse of patent rights

Safeguards against abuse of the rights granted by patents have been built in under the Patents Ordinance and they apply to short-term patents as well as standard patents.

Remedies for groundless threats

Where a person by circulars, advertisements or otherwise threatens another person (“aggrieved party”) with proceedings for infringement of a patent (other than an infringement alleged to consist of making a product for putting on the market or of using a process), the aggrieved party may initiate proceedings against the party making the threats if he can prove that the threats were made and that he is a person aggrieved by such threats. However, a notification of the existence of a patent does not of itself constitute a threat of proceedings.

The patent owner may, by way of defence, prove that the acts in respect of which proceedings were threatened would constitute an infringement of a patent; whereupon the aggrieved party shall not be entitled to the relief claimed unless he can show that the patent concerned is invalid in a relevant respect.

The relief available is (a) a declaration to the effect that the threats are unjustifiable, (b) an injunction against the continuance of the threats, and (c) damages.

China Utility Model Patent Registration:

Requirements: Utility models mean new technical solutions proposed for the shape and structure of a product, or the combination thereof, which are fit for practical use.

Protection period: The duration of the Utility Model patent right shall be 10 years.

Required Documents:

  • Patent Documents (Specification, Claims, Abstract and Drawings)
  • The name of invention, the name and address of applicant, the name and address of inventor
  • Power of Attorney

Affiliated Office and Duration:

State Intellectual Property Office of the People’s Republic (SIPO)

Normal process (12-18 months)

Application→Deficiencies Checking→Publication and Recordation→Issuance of certificate

*Remark: The patentee should pay annual fees to maintain the right of patent.

Hong Kong Short-term Patent (=Utility Model)

Requirements: The grant of a short-term patent in Hong Kong is based on a search report from an international searching authority or one of three designated patent offices.

Designated Patent Office:

  • The State Intellectual Property Office, People’s Republic of China
  • The European Patent Office, in respect of a patent designating the United Kingdom
  • The United Kingdom Patent Office

Protection Period:A short-term protection under a short-term patent is renewable after the end of the fourth year, up to a maximum term of 8 years.

Required Documents:

  • Patent Documents (Specification、Claims、Abstract、Drawings and Search Report from an international searching authority or one of three designated patent office)
  • The name of invention, the name and address of applicant, the name and address of inventor
  • Power of Attorney

Affiliated Office and Duration:

Hong Kong Intellectual Property Department (HKIPD)

Normal process ( 6-10 months)

Application →Deficiencies Checking →Publication and Recordation →Certification

*Remark: The patentee should pay annual fees to maintain the right of patent.