A Different Patent Law Proposal: U.S. Utility Models?

JW Note:  This is a repeat of a post we originally wrote in November 2008.  However, we’ve been wanting to bring the topic up again ever since we read Hal Wagner’s article titled A “Driver’s License” Patent in March of this year.  Although there is a multitude of ways utility models could be established under the U.S. patent system, we agree that this proposal is a worthwhile strategy for reducing backlog at the USPTO, and would give applicants a further option for protecting intellectual property.  Maybe if we repeat the post often enough, it will be picked up in some future legislative incarnation of patent law reform!  Comments in support or opposition are welcomed.

 

It is safe to say that the U.S. patent system is overburdened and in need of improvements, notwithstanding the self-congratulatory tone of the U.S. Patent Office’s 2008 Performance and Accountability Report. 

In view of the state of the U.S. patent system, a number of patent law commentators have been tossing about potential solutions.  For example, Gene Quinn at IP Watchdog has proposed a number of fixes, including requiring a search prior to filing an application, requiring examiners to examine applications based only on art submitted by applicants, and forcing patent holders to pay for a thorough and complete examination of the patent before the patent can be sued on in federal court.  Likewise, Professor Crouch at Patently-O has has recently commented on the proposal of Tim Wilson (Senior IP Counsel at SAS US) that the sheer number of patent applications being filed creates many problems, and that the solution is to raise patent fees – as high as $50,000 for large corporate applicants. 

Since the IP blogosphere is brainstorming on ways Congress should change the U.S. patent system, we’d like to propose a different strategy: namely, Congress should develop laws establishing U.S. utility models.  A utility model is a form of IP protection very similar to a patent, except that it covers what can best be termed “incremental inventions” for a comparatively shorter period of time (typically 6-10 years for a utility model instead of 20 years for a patent).  The utility model is sometimes called a ”utility model patent”, “utility innovation”, “petty patent”, “innovation patent”, “minor patent”, or “small patent”.  Over seventy-five countries have utility model laws, including countries with well-developed patent systems such as Germany (a Gebrauchsmuster) and Japan.  Depending on the country, the utility model subject matter may be limited to inventions having a shape or structure, and may exclude plants, methods, materials, and chemicals. 

For sake of argument, we suggest that a U.S. utility model law allow applicants an opportunity to file a single application for both a utility patent and a utility model.  Applicants could be required to also submit a simple search report for the examiner’s consideration in determining if the invention meets the novelty requirements under U.S. law.  Upon a determination by the examiner that the invention is novel over the search report art and meets certain formal requirements, the application would be allowed for purposes of a utility model with, for example, a ten (10) year term (again, for sake of argument).  Applicants could then have the opportunity to pay for a more intensive search and substantive examination of the invention in relation to the obviousness requirements under U.S. law.  Should the examiner deem the invention non-obvious, Applicants would then receive an allowance for the utility patent with the conventional twenty (20) year term.  A utility model/patent owner would not be allowed to hold both a utility model and an utility patent for the same invention and, if successful in obtaining the utility patent, would be required to abandon either the utility model or the utility patent.

Examination under utility model standards would undoubtedly be less cumbersome on the U.S. Patent Office than examination under utility patent standards.  Many applicants who might otherwise try to slug it out for years in the U.S. Patent Office for a utility patent would be willing to instead take a more limited and less expensive utility model.  An invention covered by utility model, with possibility for conversion to a utility patent, should also be more marketable than a mere application to potential assignees or licensees of the invention.  Moreover, in light of the incredibly more stringent obviousness standard set forth in KSR v. Teleflex, a U.S. utility model would allow Congress to continue promoting “the progress of science and the useful arts”.  The addition of utility models to the U.S. patent system would encourage disclosure of both the conventional ”flash of genius” inventions (an awful term, we know, but you get the point), and technological improvements that are, while incremental in scope, nonetheless commercially valuable.  Just because an invention may seem silly or amusing to some (see any of our TIW? features), does not mean that the invention is without commercial value.

Comments from our readers are encouraged.  Let us know your thoughts!