CONVERSION OF AN EP PATENT APPLICATION INTO NATIONAL UTILITY MODELS – A LAST CHANCE FOR PROTECTION IN EUROPE IF THE EPO WON’T GRANT THE PATENT?
A. Legal basis for conversion of an EP patent application into utility models
According to Art. 140 and 135 (1) (b) of the European Patent Convention, the contracting states may provide for the possibility to convert a European patent application that is refused or withdrawn or deemed to be withdrawn, or a European patent that is revoked into a national utility model.
Furthermore, a few contracting states have enacted laws permitting to use a European patent application or a European patent under opposition as the basis for the derivation of a national utility model.
B. Where is conversion/derivation into a utility model possible?
According to information gathered from the patent offices and our European associates, the following contracting states currently allow under certain conditions the registration of a utility model based on a European patent application or European patent:
C. When to consider conversion/derivation into a utility model
The owner of an EP patent application or of an EP patent under opposition might consider conversion/derivation in particular in the following situations:
- 1. The inventive step of the claims of the EP application or patent seems debatable. Utility model protection might be an option because several contracting states require a lower degree of inventiveness for utility models;
- 2. The main prior art invoked against the EP application/patent is a non-written disclosure. In some contracting states, this non-written disclosure might not be prior art for a utility model;
- 3. The main prior art was published shortly before the effective date of the EP application/patent by the applicant/inventor. Indeed, some contracting states have a grace period for utility models;
- 4. The owner of a pending EP application wants to quickly obtain an enforceable right.
This is only a brief introduction into obtaining utility model protection based on an EP application/patent. Please contact us to discuss in detail the specific advantages and drawbacks if you are interested by this option.
Publication date : December 2013