Inventors and business persons in industries where innovation is rapid such as technology, the automotive industry, telecommunications and manufacturing often struggle with questions of protecting and getting the most value out of their innovations. While large corporations may have the scale, time and financial muscle to develop entirely new products that are patentable, many individual inventors, startups, and SMEs may find themselves creating inventions or new steps in the workings of their existing inventions that may need intellectual property protection but do not meet the high standard of novelty required to qualify for a patent. Such businesses may benefit from understanding the utility model which is a more accessible and cost effective way to protect their inventions or novel steps in the product creation process.
What Is A Utility Model?
The Utility Model is provided for in Section 2 of the the Industrial Property Act, CAP 509 Laws of Kenya. It can be defined as a form of intellectual property protection that grants exclusive rights of use and licensing to the creator of an invention for a limited period of 10 years. It’s involves the creation of a different way of making a product or making part of an existing product better in how it works, how it’s used, or how it’s created. Utility models however do not protect methods and processes. A utility model is similar to a patent in that it focuses on the construction and functionality of the product.
Utility models are a great way to protect minor inventions and inventions that have a short lifespan, for example in the earlier stages of product development you may wish to protect smaller inventive steps in a bigger overall product.
What Is The Difference Between A Patent And A Utility Model?
- Threshold for Registration and Level of Scrutiny: Patents require a higher level of innovation and undergo rigorous scrutiny, ensuring they meet strict criteria for novelty and inventive step. Utility models, with a lower registration threshold, and do not require substantive examination.
- Registration times and Examination Procedures: Utility models can be registered much faster than patents. They take about 4 to 6 months to undergo the process of examination and registration. Patents have more stringent and lengthy examination processes and may take about 2-3 years to register.
- Duration and Renewal: A utility model certification remains effective for a span of 10 years without the option for renewal, unlike patents which are valid for 20 years and can be renewed.
- Financial Implications: Utility model registration is cheaper as it bypasses the necessity for assessing industrial application, inventive step, or novelty before obtaining registration. This is because a utility model can be obvious to any ordinary skilled person in the art; it need not be more than a handicraft skill to get a grant.
Criteria Allowing An Invention To Qualify As A Utility Model
To assess whether the product qualifies for a utility model certificate you can check on the following:
- Ensure Novelty:
- It is crucial to ensure that there is some novelty in the product. The product should not have been put forth into the public domain before getting the Utility Model Certificate.
- Evaluate Inventive Step:
- Utility models do not demand a high level of innovation but there must be an inventive step that is non-obvious to a skilled person in the relevant field.
- Assess Industrial Application:
- Evaluate industrial application by examining the invention’s capability to be manufactured or utilized in the manner that it was designed.
Process Of Registering A Utility Model In Kenya
Utility models are registered by the Kenya Industrial Property Institute (KIPI). The registration of a utility model follows similar steps to a Patent. If an inventor decides to register a Patent but then realizes that it does not meet the stringent requirements of patent registration, they may convert the application to one for a utility model certificate.
It is interesting to note that in 2014, KIPI ceased substantive examinations of utility model certificate applications, and now only thoroughly examining patents. This change has resulted in more UMCs being approved, with most applications coming from local businesses.
Conclusion
Utility models can be seen as cornerstones guiding small businesses and individual inventors through the maze of intellectual property protection in Kenya and helping them protect their innovations. By understanding and leveraging these protective mechanisms, entrepreneurs can safeguard their innovations, foster technological advancements, and propel their businesses forward with creativity and growth.
DATE: 19th March, 2024 BY: ANNE GATHIRWA
For more insights pertaining to this matter, you can reach the writer at annegathirwalaw@gmail.com. You can also contact us at MMS Advocates, Lower Duplex Apartments, LOWER HILL ROAD, or email us at info@mmsadvocates.co.ke