Utility model: DIPP comes out with a discussion paper

Lex Orbis
Manisha Singh Nair
[email protected]

The Department of Industrial Policy and Promotion (DIPP) under the Ministry of Commerce and Industry, India has come up with a 'Discussion Paper' (the Paper) to examine the viability of introducing Utility Models into the Indian intellectual property rights (IPR) regime. The Paper argues that a legal regime on utility models can raise the possibility of receiving exclusivity for commercially- exploitable and socially-relevant creative solutions from the rural hinterland. The Paper furthers the argument for the need to encourage minor technical advances by suitably protecting them under a legal framework. These incremental innovations, which use local resources in a suitable manner, primarily drive the small- and medium-sized enterprises (SMEs) sector and that such protection would be useful and relevant only if it were provided through a legal framework which is simultaneously quick, cheap, undemanding and simple. All these requirements can be met through a suitably-designed utility model framework. The Paper further goes on to make a case for all developing countries to adopt a utility model framework by emphasising its role in encouraging innovation and providing a cheaper source of protection than patents. The adoption of a utility model framework for India is argued on the basis that it will provide incentive for a faster disclosure and generate a pool of incremental innovations that may trigger new innovations.

Utility models, also known as 'petty patents', are considered as lesser forms of patent protection. It is a framework to provide limited protection to technical advances, which are incremental innovations falling short of the scope of patent protection. Patent systems all over the world protect inventions that meet the criteria of novelty, inventive step and industrial application. The implementation of these eligibility criteria is formal and very precise, resulting in incremental innovations being left out. Such inventions, though technically less complex than those eligible for a patent, are minor improvements and adaptations to the existing products, and are no less worthy and useful to society. The fructification of the proposal on a utility model may go a long way in protecting these products and creative designs of Indian SMEs, which are often diluted for want of proper and effective IPR strategies. The Paper, while arguing in favour of an enactment to encourage minor technical inventions by protecting them under law, has raised several issues for consideration. The issues herein deal with India's need for a law on utility model, the legislative route to be adopted, the scope of protection of such a law, the eligibility parameters for innovations, the linkages with the existing Patents Act and whether traditional knowledge, which forms a large part of rural India's IP domain, can be protected via a utility model regime. An informed discussion on the subject matter would most likely assist in a policy decision on adoption of a legal framework on utility model.

Though Indian small innovators contribute significantly to industrial production and exports, they seem to have contributed much less in the development of IPR creations. A research report in 2007 on Utility Models, using Japan as a case study, tries to reason out that the stringent and global nature of the patenting and registration process under the Indian Patent and Designs laws, in addition to time-consuming and expensive processes, seems to have pushed SMEs to lose interest in protecting their intellectual capital. Also, the patent eligibility criterion under the Indian Patent Act does not support incremental or improvement innovations, which are low on the level of inventiveness but have utility driven functions. This seems to have given a way toward a solution in the form of a Utility Model system which is less expensive and provides registration within a short time without any need of a substantive examination. A utility model can be registered by a formal examination with a comparatively lesser term of protection than a patent or a design. Thus, adopting a utility model system in India becomes important from the perspective of utilising its inherent economic and technological advantage to promote, develop and protect IPR creations coupled with stimulating more research activities and innovations by SMEs.

The Paper raises another connected and pertinent issue on the selection of the legislative route in case India adopts the utility model protection system. The issue is about enacting a sui-generis model as an alternative with the other two options of suitably amending the Indian Patents Act or the Designs Act. A definite conclusion can be reached only after analysing the opinion and comments of the stakeholders, but at this early stage it can be safely assumed that a sui-generis utility model system incorporating certain provisions in respect of applicability of certain provisions of the patent and design law seems to be an appropriate choice. The talk initiated by this Paper also speaks about its commitment regarding resisting the dilution of patent standards while recognising the need to support a wide spectrum of innovative activity.