Firms are making advantageous developments with their R&D studies and sometimes those may not meet the requirements of proper protection unlike the common understanding of that patentability covers all. Utility model is an industrial property right which is relatively new to this world and has been originated from a necessity to protect inventions that have lower standard of inventiveness.

The Term: Utility Model

Until 1990's, utility model protection was regarded as being something of a curiosity in the intellectual property world. Since then, many countries have adopted protection of this type or some other form of second tier protection for useful articles or other inventions. Turkish Industrial Property Act numbered 6769, dated January 10, 2017 (hereinafter will be referred as “IPA”) provides the patent protection and utility models. Despite both patent protection and utility models share the common purpose of protecting inventions in the technical field and they are also distinguished with major differences.

As per IPA, like patents, utility model right is a registered right that gives exclusive powers to the owner in terms of inventions developed in technical fields. Legislation applied to utility models differs from design protection which protects the physical appearance of products, since it seeks the protection of inventions of technical features. According to Turkish Court of Cassation, patent and utility model law approach to the distinctive technical sides of products or inventions as well as the design law is applied to protect the distinctive features such as color, texture, material or flexibility, in other words, the appearance of the product.

Difference from Patent Protection

Utility models are similar to patents in that the invention shall be new and able to be applied in industry in terms of conditions of protection. However, unlike the patents, the inventive step is not required in utility models. Basically, the radical differentiation of the process in the utility model application enables the cost of utility models to be low and the registration process fast and practical.

Pursuant to article 145 of IPA, if there is no explicit provision regarding utility models, the provisions envisaged for patents shall apply provided that they do not contradict with the nature of utility models. As both patent and utility model protections grant exclusive rights to the owner, more than one patent or utility model, or both of these documents, shall not be issued to the same person or successor independently of the same invention, with the same protection scope.

As per IPA, utility models offer ten (“10”) years of protection while patents offer twenty (“20”) years of protection. In addition, utility models do not allow additional applications to be made but patent protection allows additional applications and it is possible for owners to obtain additional patent certificates.

In order to sum, utility models differ from patents in one or more of the following respects : (i) standard of invention required, (ii) whether examination is required, (iii) costs, (iv) duration of protection, (v) the basis on which novelty is assessed and (vi) whether additional application can be made.

 Conditions of Protection

Pursuant to IPA, inventions that are new and applicable to industry can benefit from utility model protection and inventive step is not required for these inventions to be protected.

In terms of patents and utility models, the concept of novelty is codified in the same manner. So far, technical features that do not contribute to the subject of the invention are not considered in the novelty assessment of the utility models.

At first, in order for an invention to benefit from utility model protection and obtain a utility model certificate, it must be new to the world. Invention subject to the utility model application is considered new provided that it has not released to the public before the date of utility model application throughout Turkey.

Secondly, in order for an invention to benefit from utility model protection, the invention must also be applicable to the industry. This condition is invoked by both patents and utility models. If the invention can be produced or used in any field of industry, including agriculture, such invention is considered as applicable to the industry.

Patent and utility model certificates are not issued for the same invention. For instance, it is possible to obtain a design certificate for the appearance of a food processor, and a patent or utility model certificate for its functional features at the same time. Again, the genuine marks attached on the food processor shall be protected via trademark legislation. However, it is not possible to obtain a patent and utility model certificate for the same functional features of the same food processor at all. Because, both protections seek to protect the technical side of the invention in question, IPA does not allow double protection for the same subject matters. Thus, the owner of the invention shall prefer one of two designated protections.

Inventions or Subjects not subject to Utility Model Protection

Inventions or subjects that are excluded from utility model protection under Turkish Law can be divided into three as : (i) subjects are not deemed as inventions, (ii) subjects are deemed as inventions but not allowed to be protected by utility model in Turkey, and (iii) inventions that can benefit from patent protection but devoid of utility model protection.

According to article 82 of IPA, the followings are the subjects which are not deemed as invention and therefore not protectable by utility models in Turkey:

 

-Discoveries, scientific theories and mathematical methods.

-Plans, rules and methods for mind activities, business activities or games.

-Computer programs.

-Products with aesthetic qualities, literary and artistic works and scientific works.

-Presentation of information.


It should be noted that there are also inventions in Turkey that are excluded from utility model protection even if they are deemed as inventions in terms of IPA:

-Inventions for pharmaceutical substances or pharmaceutical methods or products obtained from those methods.

-Biotechnological inventions.

-Inventions which are contrary to public order or morality.

-Essentially biological processes for plant varieties or animal races and plant or animal production, except for microbiological processes or products resulting from such processes.

-All treatment methods, including diagnostic methods and surgical methods, applied to the human or animal body.

-Mere discovery of one of the elements of the human body, including the human body and a gene array or partial gene array, at various stages of its formation and development.

-Human cloning, genetic modification of the human germ line, use of the human embryo for industrial or commercial purposes, genetic modifications that may cause animals to suffer without any significant medical benefit to humans or animals, and animals resulting from these procedures.


Lastly the followings can benefit from patent protection, but they are excluded from utility model protection under IPA:

-Inventions for methods or products obtained from those methods.

-Inventions for chemical and biological substances or chemical and biological processes or products obtained from those processes.

-Additional inventions.

 

Author: Ezgi Ceren Aydoğmuş