In Brazilian Law of Intellectual Property (Law nº 9.269/1996), there are two types of invention: the Invention Patent and the utility model. In this article, we will cover the main aspects of each protection right, as well as the requirements needed to file and achieve these registers.
The article 8 of the Intellectual Property Brazilian law handles the requisites of the Invention Patent, while its article X handles the demands needed in the Utility Model process:
Article 8 – To be patentable an invention must meet the requirements of novelty, inventive activity and industrial application
Article 9 – An object of practical use, or part thereof, is patentable as a utility model, when it is susceptible of industrial application, presents a new shape or arrangement and involves an inventive act that results in a functional improvement in its use or manufacture
That way, for an invention to fulfill the “novelty” requirement, it can’t be envolved by the state of art, which, in turn, correspond to all that was accessible to the public before the date of filing of a patent application.
The “industrial application” demand means that the functionality object of the application needs to be susceptible to production and use by any kind of industry.
The last requisite is what tells both protection rights apart. The Invention Patent requires Inventive Activity, while the Utility Model requires only an Inventive Act.
By Inventive Activity we understand that the functionality, beyond being new, needs to not derive in an evident or obvious manner from the state of the art, by the eye of a person skilled in the art. If not, any professional could have come up with said funcitonality, which consequently would not consist in an actual invention.
The Inventive Act, on the other hand, is a concept analogous to Inventive Activity.
Said object of practical use envolves Invetive Act when, for a person skilled in the art, it does not derive in a common or usual manner from the state of the art.
Evidently, the difference between both concepts is subtle. We can consider that the Utility Model is an improvement inside the scope of a previous Invention Patent, in a way that it is restricted to the form or disposition of an object, while a new Invention Patent would consist in a more wide-ranging functionality.
To help us have a better understanding of this concept, the Law 9.269/1996 (IP Law), in its article 10, lists examples of what cannot be considered as Utility Models:
Article 10 – The following are not considered to be inventions or utility models:
I – discoveries, scientific theories and mathematical methods;
II – purely abstract concepts;
III – schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature;
IV – literary, architectural, artistic and scientific works or any aesthetic creation;
V – computer programmes per se;
VI – the presentation of information;
VII – rules of games;
VIII – operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body; and
IX – natural living beings, in whole or in part, and biological material, including the genome or germ plasm of any natural living being, when found in nature or isolated therefrom, and natural biological processes.
Its also important to consider that, in consequence of the said discrepancy between the institute’s demands, they have a different terms. A Patent of invention will have a term of 20 (twenty) years and a utility model patent a term of 15 (fifteen) years, counted from the filing date.
That way, having a better view of these two concepts, the inventor will be ale to register its invention in Brazil, without having any delays or complicstions.
—
Author: Enzo Toyoda Coppola, Junior Associate at Peduti Advogados.
Source: Lei de Propriedade Industrial (Lei nº 9.279/96)
—
“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”
