Protection of Utility Models in Poland: A Brief History and Perspective for the Future
Article Category: Research Article
Pubblicato online: 31 dic 2022
Pagine: 35 - 47
DOI: https://doi.org/10.2478/law-2022-0004
Parole chiave
© 2022 Marek Bury, published by Sciendo
This work is licensed under the Creative Commons Attribution-NonCommercial-NoDerivatives 4.0 International License.
Protection of utility models is non-uniform worldwide. Although the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) makes it non-optional for member states to protect copyright and related rights, trademarks, geographical indications, industrial designs, patents, layout-designs (topographies) of integrated circuits, and undisclosed information and control anti-competitive practices in contractual licenses. There is no provision regarding utility models though. Rights of protection for utility models are sometimes referred to as Henning Grosse Ruse-Khan, ‘The International Legal Framework for the Protection of Utility Models’, Ruse-Khan, p. 1. Alfred Radauer and others, ‘The Myth of the “Small Patent for the Small Inventor”—Strategic Motives to Use Second-Tier Patent Systems (Utility Models) in Selected European Countries’, Kelsey Martin Mott, ‘The Concept of the Small Patent’,
Utility models can be protected in Poland if the right of protection for utility models is granted by the Polish Patent Office after substantive examination of an application filed by an entitled entity. Right of protection for utility models can last only 10 years, as opposed to 20 years in the case of patents.
Typical objects of utility model protection are simple mechanical components and tools, often paper containers or accessories for doors and windows and furniture. The allowability of protective rights for objects with non-permanent shapes is disputable. Utility mode applications filed with the Polish Patent Office are classified according to International patent classification indicating the field of industry and kind of invention/utility model. Classification includes assigning to a utility model application a main IPC symbol comprised of a letter indicating section, two digits representing class, and a set of digits representing group and subgroup spaced with “/”
IPC symbol.
| Example | A | 01 | B | 33 | /08 |
| section symbol | |||||
| class symbol | |||||
| subclass symbol | |||||
| group symbol | |||||
| subgroup symbol | |||||
Therefore, it is possible to correlate applications for utility models with particular fields of technology or even guess particular items. The main symbols of the International Patent Classification (IPC) assigned to utility model applications filed with the Polish Patent Office in the years 2001–2020 have been analysed. The top 20 IPC symbols generalised to the level of an IPC “group” are shown in Figure 1. The vertical axis represents the IPC groups that appeared most frequently in the pool of utility model applications filed from 2001–2020. The horizontal axis represents the number of utility model applications in which particular symbols appeared.
Figure 1
Top 20 IPC subclasses among utility model applications filed in 2001–2020.
It can be easily seen that two IPC subclasses – “B65D” and “E06B” – are by far the most popular among utility model applications in Poland.
The most popular subclass symbol “B65D” corresponds to containers for the storage or transport of articles or materials, e.g. bags, barrels, bottles, boxes, cans, cartons, crates, drums, jars, tanks, hoppers, forwarding containers, accessories, closures, or fittings therefor, packaging elements, packages.
The second most popular subclass symbol “E06B” corresponds to fixed or movable closures for openings in buildings, vehicles, fences, or like enclosures in general, e.g. doors, windows, blinds, and gates.
The most popular subclasses give a general view of the areas in which protection rights for utility models have been recognised as useful for business in the last 20 years. A more specific view of the matter can be provided by analysis of the popularity of group symbols. The top 20 IPC symbols generalised to IPC main group are shown in Figure 2.
Figure 2
Top 20 IPC groups among utility model applications filed in 2001–2020.
The most popular IPC group symbol “E06B 3” corresponds to window sashes, door leaves, or like elements for closing openings; the layout of fixed or moving closures, e.g. windows; features of rigidly-mounted outer frames relating to the mounting of wing frames.
The second most popular IPC group symbol “B65D 5” corresponds to rigid or semi-rigid containers of polygonal cross-section, e.g. boxes, cartons, or trays formed by folding or erecting one or more blanks made of paper.
Two next IPC group symbols “E04B 1” and “E04B 9”, subsequent in terms of popularity, correspond to the construction of buildings.
Analysis of IPC classification of the utility models application in the last 20 years between 2001 and 2020 shows that the applicant tends to believe that utility model protection can be effective in two general fields. The first one relates to structures and accessories used in the construction of buildings, and the second one relates to packaging, especially paper packaging. This effect may be attributed to:
The fact that both fields cover a wide range of products with simple structures. The simplicity of structure makes it difficult to demonstrate the inventive step which is required to obtain a patent but not required for a right of protection for utility models; The fact that both fields cover a lot of products determined in terms of three-dimensional shape (mandatory requirement to obtain a right of protection for utility model); The lifetime of a product after being put to market.
The analyses of quantities of utility models referred to in this paper are the result of queries to the Polish Patent Office database using a dedicated application programming interface ‘PUEUP API Zewnętrzne’ <
A main legal act concerning utility models in Poland is the ACT OF 30 JUNE 2000 INDUSTRIAL PROPERTY LAW. The act covers patents for inventions, rights of protection for utility models, rights of protection for trademarks, registrations of designs, and registrations of topographies of integrated circuits and geographical indications. A legal definition of a utility model is given in Article 94 (see section 2.2).
A right of protection for utility models can last 10 years from the date of filing the utility model application. The right of protection must be renewed after 3 years, 2 years, 3 years, and 2 years again.
A right of protection gives the proprietor the exclusive right to exploit the utility model for profit or professional purposes throughout the territory of the Republic of Poland (Article 94 Section 2 IPL).
The definition of a utility model according to Article 94 leaves space for interpretation:
The right of protection for utility models clearly cannot concern a method or a substance. However, the definition above is interpreted by the Polish Patent Office in a rather narrowed manner which explicitly excludes all the creations that are not categorised by imposing spatial determination of utility model (also referred to as a three-dimensional regime Uma Suthersanen,
Provisions concerning novelty are the same as those related to patents. A utility model is novel if it is not “state-of-the-art.” State-of-the-art comprises (Article 25 Paragraph 2 IPL) everything which has been disclosed in writing, orally, by use, or in any other way before the date according to which priority to obtain a utility model is determined.
Additionally, (Article 25 Paragraph 3 IPL due to Article 100 IPL) state of the art comprises the content of any patent applications or utility model applications which enjoy the earlier priority, even if not made available to the public before the priority date of the utility model, provided that they were published in the manner specified. Accordingly, earlier utility model applications can potentially destroy the novelty of both later utility model applications or patent applications, and earlier patent applications can potentially destroy the novelty of both later utility model applications and patent applications.
As Poland is a member state of the European Patent Convention, it should be noted that Article 25 Paragraph 3 IPL applies also to European patent applications having an earlier priority date on the condition that they are published by the European Patent Office. Therefore, the novelty of the utility model can be destroyed also by an earlier European patent application (naturally including Patent Cooperation Treaty).
A utility model is useful if it serves a practical purpose as a product or in producing a product. Usefulness is related to making certain actions easier for the user of a utility model. The term is supposed to be understood broadly. For example, a utility model that serves to lower the cost of a product can be recognized as being useful Pyrża and others, p. 44.
There are no provisions referring to the inventive step requirement with respect to Polish utility models. This is a significant advantage in terms of risk management as inventive step examination brings major ambiguity to prosecution and nullity actions before the Polish Patent Office. This ambiguity, however present in patent proceedings, does not occur in proceedings concerning utility models.
A right of protection for a utility model is granted upon request when filed by the entitled person. The entitled person is the inventor (Article 11 Paragraph 1 IPL due to Article 100 IPL), or if the utility model is the result of an employment contract, the entitled person is the employer (Article 11 Paragraph 3 IPL due to Article 100 IPL) providing that the contract has no provisions indicating otherwise.
The request needs to be accompanied by (Art. 31 par. 1. due to art. 97 par. 1. IPL):
a request containing at least indications concerning the applicant, the subject matter of the patent application, and a petition for the grant of a patent or of a patent of addition; a description of the invention disclosing its nature; one or more claims; an abstract; drawing (drawings are non-optional for utility models [Article 97 Paragraph 2 IPL])
Utility models can be claimed in only one category: spatially determined product. Neither method nor substance nor computer program product can be protected. Although it is not explicitly stated in the regulations, the Polish Patent Office established a practice according to which rights of protections for utility models cannot concern systems defined by functionally defined connections Pyrża and others, p. 42.
It has been also debatable whether a right of protection for utility models can be granted for a product that changes its shape or configuration when applied. The latest publications of the Polish Patent Office in this respect specify that a utility model can be comprised of parts that change position with respect to each other providing the mutual positions of the parts are related to the function of the utility model and is not unrestricted Aneta Stuleblak and Anna Zalewska,
An assessment of the unity of a utility model is rather strict - only one independent claim is allowable. A right of protection for a utility model cannot cover some embodiments, but more than one form of utility model can be covered as long as they have the same essential features. Additional features mentioned in dependent claims are expected not to change the shape of the utility model Pyrża and others, p. 46.
Drawings are non-optional in an application for granting a right of protection for utility models (Article 97 IPL).
A description of the utility model is required, is comprised essentially of the same parts as the patent description, and just like a patent description, needs to indicate a problem that is solved.
The national route is started when the utility model application is filed with the Polish Patent Office. A utility model application can also be the result of converting a patent application.
In recent years, the vast majority of utility model applications in Poland are filed via the national route initiated by requests for granting utility models filed with the Polish Patent Office with or without claiming priority. In the latter case, the filing date is a priority date.
Direct filing by the national route is by far the most popular approach for obtaining utility model protection. Direct filing has been chosen in 15059 utility model applications (not converted from national patent applications, not entered via PCT, and not converted from European patent applications) out of 16222 in the analysed pool.
If the subject matter of the patent application is recognised as not patentable, the patent application can be converted to a utility model application. Such conversion makes sense if the reason for the objection to patentability is a lack of inventive step. According to Article 38 Paragraph 1 IPL, requests for conversion can be filed during the examination of the patent application or for up to two months from the date on which a decision to refuse a grant becomes final. The utility model application shall be deemed to have been filed on the filing date of the original patent application.
This mechanism is quite popular. Among the 16222 utility model applications in the analysed pool, 994 originate from converted national patent applications.
Polish utility model application can claim priority from:
an exhibition, which is either:
an exhibition like the Paris convention, or a local Polish exhibition announced in an official Polish journal such as “Monitor Polski” (this kind of priority cannot be claimed in patent application) other IP rights:
foreign or Polish (internal priority) utility models foreign or Polish (internal priority) patents.
Analysis of the pool of 16222 applications also revealed 18 utility model applications claiming priority from community design applications filed with the European Union Intellectual Property Office (EUIPO) Priority from EUIPO registered community designs were claimed in utility model applications no: W.118235, W.119398, W.118992, W.119397, W.120079, W.120080, W.120078, W.120795, W.122463, W.121900, W.122622, W.123426, W.123826, W.124790, W.125881, W.125880, W.127404, W.127405
Priority claims in the Polish utility model applications filed 2001–2020.
| Utility model applications | |
|---|---|
| Priority claims from foreign patent or utility model applications | 867 |
| Internal priority claims from patent or utility model applications | 17 |
| Priority claims from Polish exhibitions | 102 |
| Priority claims from international exhibitions | 0 |
| Priority claims from registered community designs | 18 |
| Total | 16222 |
International patent applications filed according to provisions of the Patent Cooperation Treaty (PCT) can enter a national phase in Poland as utility model applications. Such a route is applied if the international search opinion or international preliminary examination opinion suggests a lack of inventive step in the subject matter of the international patent application.
Among 16222 utility model applications, 164 were originally filed as PCT applications. Fourteen of them entered a national phase as Polish patent applications and were then converted to utility model applications.
According to Article 135 of the European Patent Convention, a European patent application, which is refused or withdrawn or deemed to be withdrawn, can be converted to a national patent application or national utility model application in circumstances that are provided for in the national regulations. Various countries specify different provisions in this respect, limiting the possibility of requesting conversion to specific situations.
Poland has no provisions imposing restrictions with respect to the possibility of requesting conversion of European patent applications and provides that conversion to both a Polish patent application and Polish utility model application is possible. Any application refused or deemed to be withdrawn can be converted. Nevertheless, this mechanism is hardly ever used; an analysis of official gazettes revealed only 19 conversions from European patent applications by the end of 2020.
A breakdown of analysed utility model applications by year of filing is presented in Figure 3. The annual number of applications is represented by bars filled with a slanted pattern and varies from c.a. 600 to 1000. The second series of bars represented in Figure 3 which are filled with a grid pattern shows the number of granted protective rights by the application filing date. The number of grants in the last few years up to 2020 is understated due to the fact that some of the proceedings from that period are still pending. In the remaining years, the grant rate varied between 55% and 80%.
Figure 3
Polish utility model applications and granted rights of protection by year of filing utility model application
Figure 4 shows a breakdown of the utility model applications filed between 2001 and 2020 by country of the first applicant. The vast majority, more than 90% (15190 of 16222), of the utility model applications were filed by Polish applicants. Foreign entities rarely used that mechanism of protection.
Figure 4
Utility model applications filed in years 2001–2020 by a country of the first applicant.
The content of the utility model application is not disclosed to the public until the application is mentioned in the official bulletin of the Polish Patent Office ( The Polish Patent Office provides a website for searching and browsing information about published utility model applications:
Between filing an application and its publication, a utility model application is formally examined and subjected to a prior art search.
The publication of a utility model application takes place in the first issue of Rule 70a of the European Patent Convention has no analogue in the IPL.
After publication, substantive examination is started. If neither amendments nor argumentation is furnished, then the first official action is more than likely to recite the search opinion.
The search of the prior art has no restrictions concerning the origin of the prior disclosures. The process defined for assessing novelty involves every piece of the prior art available publicly before the priority date of the utility model application. Additionally, the state of the art includes both Polish and European applications filed before the priority date of the utility model but published afterward.
During the examination of utility model applications, objections (if any) to granting the right of protection are communicated to the applicant, and time limits for response and/or amendments are set. The applicant can narrow down claims or reformulate claims to alleviate or clarify objections.
The decision to grant a right of protection for a utility model is conditional. A three-month time limit is set for paying the first renewal fee and publication fee. If the time limit is met, the decision becomes valid. Otherwise, the decision lapses. Usually, it takes a couple of months (hardly ever less than two, quite likely seven) between the decision to grant and publication of the granted right.
The distribution of statuses among the pool of utility model applications has been verified and is shown in Figure 5. Notably, the grant rate is c.a. 80%.
Figure 5
Distribution of statuses in a pool of utility model applications filed in years 2001–2020.
Granted rights of protection for utility models are open to oppositions and requests for invalidations within six months from the date at which the grant is mentioned in the official gazette (
Oppositions and requests for invalidations are decided by the Polish Patent Office. The decision of the Polish Patent Office can be waived in the event of a complaint to the administrative court.
Utility models are enforced in proceedings before civil courts specialising in intellectual property. These courts are competent in deciding on infringement issues but not the validity of the utility model.
Granted claims of protective rights are supposed to be understood literally. No interpretation in a view of description and drawings is allowed and hence use of doctrine of equivalents is ruled out.
The draft of a new bill – Industrial Property Law – has since 2022 been undergoing processing by a government legislation centre under no. UD263 ‘Projekt UD263’ <
According to draft regulations (newly drafted Article 111), ‘a utility model is a new and industrially applicable solution of a technical nature’.
Compared to the present definition, it is noted that:
The draft plans to replace the requirement that utility models must be useful with the requirement of industrial applicability The requirement of ‘a technical nature affecting shape, construction or durable assembly of an object’, is to be replaced with technical nature without any limitations to the relation of technical nature with an object.
The following Article 112 defines that
It seems that the new project gives no reason to object to the protection of computer-implemented solutions or even computer program products as utility models. In terms of protection for simple electronic and computer solutions, this change might be a major breakthrough.
Utility models according to the draft of the new bill on Industrial Property Law are now going to be registered (Article 120) without examination. Search will be conducted only upon an additional request of the applicant (Article 119).
Registration of the utility model is supposed to be refused only if the subject matter of the application does not meet the requirements or is a conversion of a patent application that faced a lack of novelty objection.
The bill would also abolish conditional decisions and require all official fees, including the first renewal fee, and then register the utility model without any delay.
The newly drafted Article 126 is supposed to open claims of the right of protection to interpretation in a manner corresponding with the interpretation of patent claims. That opens the possibility of using the doctrine of equivalents to determine the scope of protection. This change offers very strong protection given the lack of an inventive step requirement.
Among the documents required for starting a lawsuit against an alleged infringer or obtaining a preliminary injunction (Article 477), a listed search report is mentioned in Article 119 or information from the Patent Office that the search report could not have been furnished. It seems that this is intended to allow the enforcement of searched utility models only. However, it is not clear if and how the search report is supposed to be binding for the court.
Utility models are used mainly by Polish national entities and have been to a similar extent over the last 20 years. They are used mainly in the fields of construction and packaging. Some available mechanisms such as the conversion of European patent applications to Polish utility model applications seem to be underused.
Planned changes in the form of the Industrial Property Law bill alter the definition of the utility model, opening it to new fields. Additionally, abolishing the substantive examination is likely to make conversions of European patents more attractive. A broader interpretation of claims, if it finally passes, will make utility models a lot more useful in enforcement proceedings. Should the new bill pass as presently drafted, Polish utility models are going to be a lot more friendly for foreign entities. The reduction of the expected processing time from filing an application to its official registration is likely to make conversions of European patents more popular, too.