Inventions and utility models (WIPO)

Invention/utility model is the result of human creativity in any field of technology.

Invention protects following objects: product (device, substance, microorganism strains, cell culture), process (method), application of a known technical solution for a new purpose.

Criteria of patentability for the invention: novelty, inventive step, and industrial applicability of the claimed technical solution. Inventive step criterion is met if a technical result achieved by adding new features to the previously known technical solution is not obvious for a specialist.

The object of protection under utility model patent in most countries with some exceptions can be a product only.

Criteria of patentability for the utility model: novelty and industrial applicability of the claimed technical solution. In some countries however, an inventive step is also checked. For the list of countries where protection for utility models can be obtained click here.

Invention/utility model registration is necessary to obtain the state-guaranteed privileges to use, including the enforcement of the right to prohibit the use of such intellectual property asset by third parties.

Both individuals and/or legal entities may be the holders of the property rights for invention/utility model. Property rights for invention/utility model may simultaneously belong to several legal entities and/or individuals. However, non-property rights remain with the author / authors of invention/utility model, it can’t be alienated and is subject to permanent protection.

The title of protection for registration of the invention is usually a patent. When registering a utility model in some countries certificate is granted.

The territory covered by the protection of the registered invention/utility model is always indicated in the title of protection. It may include one or several countries.

Invention is valid during 20-25 years, while for utility model validity term is 10-15 years depending on the country (if relevant official fees are paid periodically).

Important to remember: it’s better to invest into protection of your original invention/utility model before goods are introduced into the market than to spend significantly more in future to protect your products from unfair competitors and intellectual property dealers.

The International Bureau of the World Intellectual Property Office (WIPO) according to the Patent Cooperation Treaty (PCT), which includes more than 190 countries across the world (as of September 2019) accepts international applications for registration of inventions / utility models.

By submitting a PCT application, the applicant has the opportunity to declare the priority of his invention / utility model in most countries of the world. The PCT application does not allow obtaining an international patent covering all PCT contracting parties, since, unfortunately, such a patent does not exist as of 2019.

The international application is filed to the receiving national patent office or directly with the International Bureau of WIPO (IB WIPO). When applying, a single international fee is paid, the amount depends, among other factors, on the applicants’ country of origin, the submission of application to the receiving office or the IB WIPO, the choice of an international search authority, etc.

The IB WIPO sends the received application to International Searching Authority (ISA), which is pointed out by the applicant upon submission. The main ISA for European applicants are European Patent Office (EPO); Federal institute of industrial property (FIPS, Russian Federation) and SE «UKRPATENT»(Ukraine). ISA carries out patent search and verification of the proposed technical solution for compliance with the patentability criteria of the invention, on which a corresponding examiner opinion is issued.

The IB WIPO then carries out the international publication of the application and the ISA report, and also enables the applicant to make changes to the application. If changes are made in the application materials, the publication is re-published, and the international application can be transformed into national phases.

The national phases of the PCT application are not procedurally different from submitting applications directly to the relevant patent offices (in most offices, the application will undergo a formal and substantive examination again, and the ISA report will only be taken into account). However, international PCT phase allows the applicant to set aside the main costs associated with obtaining national patents for 29-31 months from the filing date of the PCT application or from the date of its priority, and also obtain an conclusion of the patentability of the claimed technical solution, which helps to make the final decision on the expediency of getting through the national phases and the choice of financial (investment) strategy of patenting.

A PCT application may be filed to the national Offices as an application for an invention or a utility model, depending on the national legislation of the relevant state.

Patent Bureau "Dr.Emil Benatov & Partners" submits applications to the IB WIPO directly and controls all stages of international phase. Thanks to an extensive partner network, our Bureau provides services for translating the PCT application into national phases on all continents of the Earth.

We also offer Freedom to Operate (FTO) searches.

Before launching a new product in a particular territory, it is very important to make sure that you will not be infringing the existing rights of another party, as committing patent infringement can be extremely damaging to your business. A patent holder could stop you from making and selling your product in the relevant territory - this would make the investment into the product worthless and disrupt your business plan. In addition, you might be liable for significant damages and may also have to incur significant legal expenses.

A Freedom to Operate (FTO) search is the best way to identify any potential issues in advance and minimise the risk of committing patent infringement. While it may not be possible to have a 100% guarantee of FTO, the more thorough the search, the more information and therefore certainty, you will have for your product. This applies equally for products which have not been patented, as well as for patented inventions - having your own patent does not remove the ability of other parties to sue you for infringement.

Dr. Emil Benatov & Partners offers FTO searches and risk analysis in the fields of pharmaceuticals, food and beverage, cosmetics and chemistry for the territories of Europe and United States. Our team will help you obtain some certainty for your business decisions and give you the ability to more confidently proceed with your investments. We will examine your business circumstances and offer you the particular service most suited to your needs.