[Patent Talk] The Utility Model Act and the Limits of Protecting Minor Inventions

This column by patent attorney Taeyoung Lee of our firm was published in Etoday on May 25, 2021. It addresses the limits of utility model protection, using the Magic Ssakssak product as an example.

[Patent Talk] The Utility Model Act and the Limits of Protecting Minor Inventions

<Source: screenshot from a YouTube video on the Magic Ssakssak product>

Clients sometimes ask me whether they could obtain registration by filing a utility model application when their technology is not clearly distinguishable from the known art. As a patent attorney, it is not easy to give a clear-cut answer. Personally, I take the conservative view that if inventive step would be a problem for a patent, registration as a utility model is hardly guaranteed either. For this reason, the utility model system is used very little in practice.

The utility model system was introduced to protect simple improvement inventions. Unlike patents, its subject matter is limited to "the shape, structure or combination of articles," and its term of 10 years is much shorter than the 20-year patent term. Its only advantage is a relaxed inventive-step standard: a device is unregistrable only if "a person skilled in the art could have devised it very easily," which is a lower threshold than for patents. In practice, however, the inventive-step standard differs little from that for patents, so there is almost no real advantage.

The scrubber dishwashing glove illustrates the limits of the utility model system. This idea product, a rubber glove with a scrubber attached, won a silver prize at the 2017 International Women's Invention Exposition. The idea was filed as a utility model application but was rejected for lack of inventive step. Similar products then flooded the market, and the original creator received no adequate protection for the idea.

<Source: screenshot from a YouTube video on the Magic Ssakssak product>

To fill this gap, KIPO is studying ways to improve the utility model system, including holding an "Open Forum on Protecting Minor Inventions and Ideas" in November 2019. Various options are under discussion, such as reintroducing registration without substantive examination for utility models, relaxing the inventive-step standard, introducing a separate system to protect minor inventions, and amending the Unfair Competition Prevention Act.

In my view, reintroducing registration without examination for utility models to protect minor inventions is undesirable, as it could lead to a proliferation of weak rights and unnecessary social costs, as seen in China. In addition, to protect minor inventions...

(Please click the link below to read the full column.)

LNB IP Law Firm