MSC MALAYSIA STATUS 2.0

What is a Utility Innovation?

Malaysia grants two types of patents - normal Patent and another Utility Innovation (UI).

Patent is an invention, a new process of doing something, or one that offers a new technical solution to a problem.

The Malaysian Patent Act , Section 17 defines a Utility Innovation as: "any innovation which creates a new product or process, or any new improvement of a known product or process, which is capable of industrial application and includes an invention" which might look similar to that of a patent. But, there is a difference in that you will need to have an inventive step for a grant of Patent whereas inventive step is not needed for Utility Innovation. Thus, it would be easier to obtain a Utility Innovation. UI is also termed minor or small invention.

However, a Utility Innovation will have less of a protection but because it is easier to obtain a Utility Innovation Certificate thus would be the right path for most SME's who would need protection in order to go to market. In Malaysia, it is also the faster path to get protection, unlike if you go the normal patent pathway which in normal circumstances will mean a long period of prosecution. In practice, protection for Utility Innovation models is often sought for innovations of a rather incremental character which may not meet the patentability criteria. However, not all countries offer UI and only countries like Malaysia, Indonesia, Thailand, Philippines, China, Germany, Italy, Japan, Taiwan, Vietnam and Australia have utility models for protection. Period of protection is normally from 7 to 10 years with a possibility of extensions in some countries. A UI prosecution is the same like the normal patent and it will include substantial examination. However, you will not need to go the examination path in China and you will get an Utility model in 6 months compare to that of 4 years in Malaysia.

Utility innovation is an exclusive right granted to an innovator for a "minor" invention or innovation, which can be a product or a process that provides a new way of doing something or solves a specific technical problem in any field of technology but it also have to be both "novel" and "industrially applicable" like a patent.


A bit about China Utility Model since it is the most popular destination for UI filing

China has about 50 % of the world's Utility Model filing. This is because it is very easy to obtain a Utility Model in China as there is the absence of examination. But because of complaints from all over the world that China is not serious in enforcing intellectual property rights, it is now known that China is slowly making changes and one of the thing that they are now enforcing is the examination of utility models. Again, patent pendancy is normally 6 months and you get protection for 10 years albeit the protection can and usually being challenged. The Chinese Utility Model has a two stage process. It first stage is a formal examination after which a grant is issued and the second stage is a substansive examination which is optional but necessary in case of litigation issues. The CNIPA (China's Patent Authority) will issue a Utility Patentability Evaluation Report (UMPER) where it will advise on the validity of the claims, considering both novelty and inventive steps (lower level).

Much has been said about the usefullness of a utility model. The general public consensus is that a utility model can give you little protection as comcpared to a standard patent. But in reality, many smart entrepreneurs go first for utility model because it is a cheaper route, it is faster to obtain (by at least 2 years) and it is less likely to be invalidated by court action. Furthermore, you can split up and file for several applications so that it would cover a bigger scope instead of relying on a single patent. And for strategic purposes, you can file for both a utility model and a standard patent. Just imagine, if you can get a faster grant (certificate for utility model) you will be able to prevent your competitor (infringer) from robbing you off what you own!


An advise to SME

For all SME intents, it would be worthwhile to consider going the UI pathway because they would not have to waste time getting their product protection as they go to market. It is both easier to obtain and also cost less. Some SME's have spent a fortune chasing the patent pathway and yet at the end of the day, they were disappointed because they could not prove that they had the critical "inventive step" sorted out. For small businesses, don't harbour the big dream of changing the world with their big ideas! Think small and you will be able to survive better. Go first the UI way:you won't be regreted

You might want to look at Utility Innovation Flowchart


You might want to get advisories for your UI from enqq2@iskandarproject.com (non free email account appreciated)