Utility models as the most widely used protection instrument in Peru

According to the latest report issued by the Peruvian Patent Office in Peru (INDECOPI), during 2020, despite the health crisis due to the pandemic generated by COVID-19, inventors and national companies requested a total of five hundred and twenty-seven (527) applications for invention patents and utility models, noting that of the total of these, three hundred and sixty (360) applications were filed through the Utility Model modality, which represents an increase of 24% compared to 2019 and 38% compared to 2018.

In view of this situation, it is worth asking why in Peru more and more inventors are seeking to protect their inventions through the use of Utility Models, and is there any particular legal situation granted by this modality that encourages its use?

In this regard, the Utility Model protects those inventions with a lower inventive step than a patent, and consists of giving an object, tool or product a better configuration, structure or composition resulting in a practical advantage or better use of an already existing invention. As a sort of example, a use of the Utility Model falls on the so-called folding chairs, since these would be incorporating elements that improve the use of an already existing object, in this case the common chairs, creating a new utility or practical advantage of the same, such as the fact of curving the backrest at angles that a rigid chair could not do.

Thus, the development of Utility Models does not require a degree of creativity or innovation as required for invention patents, in other words, the substantive requirements are less strict, giving the inventor more freedom to determine the specific innovative aspects he/she wishes to explore, without the need to propose a comprehensive technological innovation; and for this reason, in addition to being more accessible to inventors, Utility Models are also granted with a shorter duration compared to the duration of invention patents.

By virtue of the above, it could be stated that the Utility Model regime constitutes an ideal protection scheme for those countries where the technological and human capacities do not allow the development of high-tech inventions, providing the necessary legal guarantees to protect the innovative advances that are developed. 

Now, both in Peru and in the countries of the Andean Community of Nations, the protection of Utility Models is regulated in Decision 486, and Article 81 thereof states that it is constituted by any new form, configuration or arrangement of elements, of any artifact, tool, instrument, mechanism or other object or of any part thereof, that allows a better or different operation, use or manufacture of the object that incorporates it or that provides it with some utility, advantage or technical effect that it did not have before.  

As previously stated, the referenced article not only establishes the subject matter as susceptible of being protected as a Utility Model, but also incorporates the conditions required to access its protection, by stating that the model must satisfy the condition of novelty, not only in its form, or configuration of elements, but also in the solution that it entails.

In this sense, for the protection of a Utility Model it is only necessary to fulfill of a single requirement: novelty, i.e., the substantial impact generated on the use of an already existing technology.

Having said this, it is convenient for an inventor or national company, in a context of promotion of technological innovation in developing countries, to encourage the use of Utility Models, since the rigor and patentability requirements are more accessible than those of invention patents, since while the latter are required not to be manifest innovations, i.e., to propose innovative technological solutions; Utility Models only require that such innovations are not obvious in the light of the state of the art, in other words, that they do not have a direct impact on the solution of the underlying technological problem, but rather that they provide a tangential intervention.

Finally, it is important to analyze the impact of the use of Utility Models within the framework of promoting a culture of use of the Intellectual Property System in the business sector, with the aim of contributing to the economic reactivation, especially of the MSMEs, which are one of the most important engines of the national economy; In this sense, it should be contrasted if the industrial sector in the countries that make up this region, particularly our country, has matured technologically in such a way that, in effect, the referred Utility Models would be constituted as suitable guarantors of protection, since, otherwise, it could generate a counterproductive impact on the local technological development.

Author: Lucero Ticona – Intellectual Property Specialist
Law Firm: OMC Abogados & Consultores