Requirements for Utility Model Protection
1.1 Novelty of utility model
A utility model must be new compared to solutions that have become publicly known worldwide by the filing date of the application.
The novelty requirement is absolute, so any form of public disclosure, such as through public use or oral presentation, is a barrier to the registration of a utility model.
1.2 Inventiveness of utility model
The level of inventiveness required for a utility model is slightly lower than that required for a patent, so the requirements for utility model protection may be met even if the requirements for a patent are not. The technology of the utility model must clearly differ from the prior art, whereas a patent requires a significant difference from the prior art.
In practice, this has been interpreted to mean that the invention must not be obviously derivable from the prior art, and it must also not be self-evident to an average person skilled in the art.
2. Registration of a utility model
The registration of a utility model is carried out by submitting an application to the Finnish Patent and Registration Office and paying the registration fee. The application form should include the name and address details of the applicant and the inventor, as well as the title of the invention.
As an attachment to the utility model application form, the most essential part of the application, which includes the description of the invention, the claims, and the drawings, should be included. The application should contain all the relevant information regarding the invention, as no new information about the invention can be added to the application after the filing date.
2.1 Processing of a utility model application
Utility models are subject to a notification procedure. The registration authority only examines the formal registration requirements of the utility model. If necessary, the registration authority issues an interim decision requesting the applicant to correct any formal deficiencies in the application. The applicant must respond to the interim decision and make the necessary corrections within two months.
Novelty and distinctiveness compared to prior art are not generally examined by the registration authority, so the responsibility for conducting such examinations lies with the applicant. In practice, the applicant has the option to request an examination by the registration authority for a fee. Additionally, if necessary, the applicant must claim priority from an earlier application in their application. The condition for claiming priority is that the application is filed within 12 months of the earlier application.
The application can be submitted to the Finnish Patent and Registration Office in Finnish or Swedish if the applicant is domiciled in Finland. However, the registration of a utility model requires that the claims be provided in both Finnish and Swedish, so the applicant must either translate the claims themselves or have them translated at the Patent and Registration Office. A written request for translation must be made, and a translation fee must be paid.
2.2 Publication of Application Documents
The application documents become public from the date of registration or 15 months from the filing or priority date. An approved application is recorded in the utility model register and announced by publication in the electronic Utility Model Journal.
The registration of a utility model can be deferred for up to 15 months from the filing or priority date if the applicant requests a deferral in writing within two months from the filing date and pays the deferral fee.
3. Conversion of a Patent Application
A Finnish patent application, a European patent application, and an international application in the PCT phase can be converted into a utility model application while still pending. Additionally, it is possible for the applicant to simultaneously apply for both a utility model and a patent for the same invention. However, it is not possible to convert a utility model application into a patent application, nor is it possible to convert a design application into a utility model application.
The conversion of an application is done by submitting a request to the Finnish Patent and Registration Office. The request should include the patent application number and filing date. When converting the application, the actual invention must remain the same, and the scope of protection for the invention must not be expanded. If the original application included method or use claims, these must be removed from the application as they do not fall within the scope of protection of a utility model.
3.1 Time Limits for Conversion of an Application
Conversion of a patent application into a utility model application is possible within ten years from the filing date of the patent application. When converting the application, the filing date of the utility model application will be the same as the filing date of the patent application. The conversion of the application does not remove the pending status of the patent application unless the applicant explicitly withdraws the patent application.
