FC3

Question 1

Which countries do not have utility models?

Answer 1

AR (not via PCT)
BR
CN
DE
ES
FR

HK (short term patent)
IT
JP
KR

MX
PL
TW

Question 2

Differences between UMs and patents

Answer 2

Lower standard of inventiveness, or examined on novelty only

Generally only undergo formal examination (not substantive)

Faster registration

Generally narrower scopes, eg not available for methods/processes

Cheaper for both registration and maintenance fees

Shorter term of protection

Not available in all countries, and do not have harmonised law in those that do

Wider availability of grace periods

Question 3

How to obtain utility model

Answer 3

Direct filing

National phase entry from a PCT in permitted countries

Conversion of existing patent applications

Can claim priority from an existing UM or patent application

Question 4

Right to priority according to Paris Convention

Answer 4

Any person or his successor in title shall enjoy, for the purpose of filing in the other countries a right of priority of 12 months for patents and utility models, and 6 months for industrial designs and trademarks, starting from the date of filing of the first application.

Question 5

Restarting priority period according to Paris Convention

Answer 5

A subsequent application concerning the same subject and filed in the same country shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority.

The previous application may not thereafter serve as a basis for claiming a right of priority.

Question 6

What may be required to claim priority, according to Paris Convention

Answer 6

1. make a declaration indicating the date of such filing and the country in which it was made (due date of declaration depends on country)
2. produce a copy of the application (description, drawings, etc.) previously filed within 3 months of the filing of the subsequent application.
3. a certificate from the same authority showing the date of filing.
4. a translation.

Question 7

Countries with a grace period - ZANTUMBIJACKS

Answer 7

ZA (no restriction, if disclosed without consent or worked on in South Africa by and through trial or experimentation)
AR
NZ
TW
US
MX
BR
IN (12 months, in case of publication without consent, public display, public working of the invention)
JP
AU
CA
KR
SG