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Alternative way to protect your innovation in Malaysia – THE UTILITY MODEL OPPORTUNITY
Many people are not aware that Utility Innovation (UI) is an Intellectual Property element which is available to protect incremental invention, where invention patents may be unavailable or hard to obtain. UI can be particularly useful for Small and Medium-sized Enterprises (SMEs) business owner as it has lower threshold to meet and also less expensive to prosecute and proceed more quickly to grant than invention patent applications.
UI protection is available in a number of national jurisdictions, which include Malaysia, China, Japan, Germany and Italy. In Malaysia, Utility Model protection is known as Utility Innovation Certificate (UIC).
What are Utility Models?
UI is similar to patent and it is an exclusive right conferred to an innovator to prevent others from exploiting the same without prior consent. S.17 of the Patents Act 1983 defines a UI as “any innovation which creates a new product or process, or any new improvement pf a known product or process, which is capable of industrial application and includes an invention.” It is also referred to as a “minor invention” in Malaysia because it involves a lower level of inventiveness, has a shorter term of protection and costs less to acquire than invention patent.
Requirement for UI registration
To qualify protection for UI, the requirement is that the invention must be novel and industrially applicable. Unlike patent application, UI need not to prove inventive step and so the threshold of novelty for UI is also lower than a normal patent. This exclusive right is territorial in nature, so only local newness is required, ie. that it must not be known or disclosed in Malaysia. Based on S.14 of Second Schedule of Patent Act 1983, a utility innovation is new to Malaysia f it is not anticipated by prior art.
UI protection is advantageous to those inventors who have inventions that do not fulfill the patentability requirements for patent protection as well as inventions that are improvements of a known product. Any technical improvement however minor can entitle for UI protection so long as it fulfills the novelty requirement.
Procedure of registration of UI
The application procedure is the same as that for a patent. There are 2 stages of examination, namely preliminary examination, and substantive examination. The preliminary examination is to ensure compliance with the formality requirements. If the applicant wishes to proceed with his application, he has to file a request for a substantive examination within 2 years from the filing date. The substantive examination of a UIC provides some assurance to UI owners in terms of validity. This is important when it comes to the enforceability of the UI rights after grant as it will lower the risk of having its validity challenged.
The fundamental limitation is that UI in Malaysia can have only a single claim for any field of technology as laid down in S.28(1)(d) of Second Schedule of Patent Act 1983. Hence, the claim needs to be narrow and specific to include all the features of the innovation.
Protection Period
The UI in Malaysia is protected for 10 years from the date of application. However, the owner of a certificate for a UI may, before the expiration of the period of 10 years, apply for an extension for an additional period of 5 years and may, before the expiration of the second period of 5 years, apply for an extension for a further period of 5 years. The maximum term for UI certificate will be for 20 years, and maintaining protection beyond 15 years requires the presentation of evidence that the innovation is in commercial or industrial use in Malaysia, or satisfactorily explaining its non-use.
Pros and Cons of Utility Model versus Patents
| PATENT | UTILITY INNOVATION | |||
| NovelInventive step industrially applicable | Requirements | Novel industrially applicable | ||
| Higher | Cost | Lower | ||
| 20 years from the date of filing | Protection Period | 10 years from the date of filing and can be extended 5+5 years subject to evidence of use submitted to the IP Office. | ||
| More than one year | Allowable claim | Only one year | ||
| Longer | Prosecution time | Shorter |
Concluding Remarks
As shown, UI comes with numerous advantages, especially for SMEs, however this form of protection continues to be under-utilized by many manufacturing SMEs in Malaysia, most of which are unaware of the subject matter itself. Innovations of a lower threshold for inventiveness are the driving force behind SMEs as it will be part of your business strategy to remain competitive in this market, especially during this difficult time with the Covid-19 pandemic. Find out more about UI by contacting our IP Expert and to assist you on your IP matters. Free Consultation available.
Sources:
- https://www.simonianip.com/utility-models/malaysia-utility-models.php
- https://www.kass.com.my/media/business-today-utility-innovations-the-lesser-known-sibling-to-patents/
- https://masteripblog.wordpress.com/2015/11/26/utility-innovation-vs-patent/
- https://www.ip.mpg.de/fileadmin/ipmpg/content/forschung_aktuell/05_utility_model_protection/wipo_study_on_utility_model_protection_in_pakistan.pdf
- https://www.iam-media.com/litigation/patents-in-asia-2017-malaysia