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An alternative to a patent – how to use design right and utility model protection effectively


July 18, 2019

The utility model and design right are less known ways for protecting invntions than patents in the IP industry, but in the best case, different protections complement each other. Together, they may protect a product very effectively.

Kolster’s IP experts explain what kinds of ways for protection we are talking about and when to consider their use. 

Design right is the primary protection for a product’s design

Design right is a good means of protection for an industrially manufactured or handcrafted item, including packaging, graphic symbol, logo or typeface. Design right also applies to product components that can be detached and assembled.

Kolster’s IP experts: “It is advisable to apply for design right protection for unique products if the design thereof is new and no similar design has been published earlier. A design is unique if the overall impression it provides to a well-informed user differs from the overall impression provided by all other designs. The design right of a product can be invalidated if it does not meet the novelty and difference requirements with respect to known designs.”

Design right can be used to complement trademark protection

With well-implemented design rights protection, a company can effectively prevent the entry into market of competing products that infringe its product. Design right also protects against counterfeiting. It is valid for five years at a time, and in EU countries, design right can be applied to a product every five years for a maximum of 25 years.

Kolster’s IP experts: “If a company protects its trademark, for example, it should also preferably protect a greater number of variations close to the trademark by means of design right. Design right does not protect a product’s content, but it complements the trademark protection of a product well.”

Unregistered design right valid for three years

In the European Union, new, published designs are subject to unregistered design right that protects against identical copying for three years.

Kolster’s IP experts: “For example, in the fashion industry, product life cycles are not long, so a company or creator may only need protection for their product for a couple of years. However, it is good to remember that the protection period is over after three years. Registered design right should definitely be considered for products with a longer life cycle.”

Let an expert help with classification and the application

When you apply for a design right for a product, the application must indicate the names of the products in which the design is to be used or into which it is to be incorporated. It is a good idea to take clear pictures of the product subject to protection from different angles already at the application stage, appending them to the application.

Kolster’s IP experts: “An expert will help with classifying the design accordance with the Locarno classification system. The International Classification of Industrial Designs is based on the Locarno Agreement, in which designs are divided into 32 main classes. For example, forestry equipment has its own class and subclass. An expert will also help with choosing the geographical area of the protection, i.e. whether the protection applies only to EU countries or also to China and the United States, for example.”

Utility model provides fast and inexpensive protection for an invention

The utility model is a form of industrial property protection similar to a patent. It is an exclusive right provided by law based on which it is possible to prohibit others from exploiting an invention by manufacturing, providing, using or importing a similar product. The processing costs of the application are low and protection is obtained quickly, only within a few months, if the application is formally in order.

Kolster’s IP experts: “The utility model is a very similar ways for protecting inventions than the patent. Consequently, the utility model rarely concerns protecting the appearance of the product, but typically relates to and concerns a technical improvement. The utility model can be valid for a maximum of 10 years in Finland, while the protection period of a patent is up to 20 years. The key advantage and strength of the utility model is providing protection also for inventions that do not meet the level of inventiveness defined in patent legislation.”

Utility models and patents are used for protecting similar inventions

The utility model protects technical solutions and inventions that can be used industrially. Methods, schemes and business plans, for example, cannot be protected through a utility model. Approximately 500 utility model applications are annually filed with the Finnish Patent Office. Of the applicants, 60% represent companies and 40% private persons.

Kolster’s IP experts: “The solution to be protected must be new and differ significantly from already known technology. However, the distinction from known technology may be lesser than for a patented solution. If it turns out that the invention is already known, for example, protected by a utility model or patent, the utility model registration obtained will be weak and can be invalidated. The applicant may also request the Patent Office to investigate whether the invention is already known.”

The layout of a utility model application and a patent application are similar

When a utility model is sought for an invention, the application is submitted to the Patent Office just like a patent application. The application must identify the field of the invention and the technology to which the invention relates. The invention is defined verbally in the claims. The value of the protection depends on the verbal definition of the invention.  It is recommendable to include a drawing in the application. It is advisable to make use of the professional expertise for drafting the application.

Kolster’s IP experts: “The Patent Office maintains a database called PatInfo where Finnish utility models have been compiled in addition to Finnish patent applications and patents. The database contains information on patent and utility model applications and registrations including bibliographic information (on applicant, filing date, inventor etc.) and provides also information on the status (processing stage) of the application.”

Utility model protection is available in many countries

Utility model protection is available in about one hundred countries. However, it is good to know that utility model legislation differs from country to country. For example, a particular type of technical solution that can be protected in one country may be impossible to protect in another country. 

Kolster’s IP experts: “Utility model protection is not available in the United States, England, Sweden, Norway and Canada, while it is available in most other major industrialised countries. The length of the protection period and the duration of the administrative prosecution vary from country to country. An application approved in Finland only provides protection in Finland. If you want the utility model to come into force in other countries, it is necessary to submit a separate application to the authorities in each country.”