The Indian Patent System Should Grant Utility Model Patents

Introduction

During the last decade, India has witnessed tremendous growth, recording a growth rate of 8-9% annually.
With rising income and education levels as well as a young workforce, the aspirations of the common man
have also increased. The Indian middle class, estimated to be 300 million people [1], has become more
status conscious. A recent study by Neilson found India to be among the top three brand conscious
countries in the world [2]. Clearly, the Indian consumer is no longer satisfied with – or loyal to – the old and
familiar, but is rather looking for new and better alternatives.

The Indian consumer’s preference for foreign brands over local ones is putting pressure on the domestic
industry to innovate and differentiate itself in the marketplace. Globalization has created additional
challenges. Given these trends, it has become imperative for the Indian Government to become more
serious about promoting and protecting innovation.

Traditional means of protecting and promoting innovation have proven inadequate for India. Introducing
utility models protection will be a quicker, cheaper and easier mode of achieving protectionmanner. In our
view, the answer lies in the Indian Patent Office allowing the grant of utility model patents. Typically, utility
models are awarded for new technical solutions that relate to a product’s shape or structure, or a
combination of the two, and are also fit for practical use. They are usually awarded for ten years and since
they do not involve any substantive examination, we believe that the Indian Patent Office can award them
within six months after being filed and charge a fee of 4,000 Indian Rupees so that the total cost to the
inventor for each utility model patent is no more than 9,000 Indian Rupees. Finally, we think that the
recognition potential of utility model patents (and their associated ‘status’ quotient) can revolutionize the
domestic industry by creating an innovation culture and making the domestic industry substantially more
competitive.

Need for Promoting and Protecting Innovation

India currently has more than 1,500 engineering institutions that graduate more than 500,000 students every
year [3]. Although India may have more engineers than the entire population of some developed countries,
innovation is relatively non-existent and not as recognized as it should be.

The number of patent applications filed per year is a good metric of measuring the innovation potential of a
country. In this regard, India fares quite poorly when compared to many other developed and developing
countries. Figure 1 given below illustrates the growth in the number of patent applications that have been
filed with the Indian patent office (IPO) during the last few years.

While the US, Japan and China recorded more than 300,000 patent applications each in the year 2009,
India had only 35,000. Although these statistics may be an indication of a lack of scientific innovation, they
can also be attributed to the fact that Indians are generally not enthusiastic about patenting their innovations.
Patents are one of the best modes of recognizing innovation because not only do they declare the rightful
owner of an invention (by making it public knowledge), they also provide an opportunity for the inventor to
profit from the invention, and for others to improve it. Investors seeking to develop grass-root innovation can
easily identify and analyse inventions through publicly available patents, whereas, inventors can get instant
recognition and a boost to their morale, which can further stimulate their enthusiasm in developing new
technologies. Furthermore, patents also serve as important certificates of achievement for scientists and
researchers. It is not surprising that Abraham Lincoln, the only United States President to ever receive a
patent, once declared that patent law added the fuel of interest to the fire of genius.

Interestingly, one of the recent blockbuster movies from Bollywood, ‘3 Idiots’, showcased some real-life
inventions (e.g., cycle pedal powered sheep fleecing device, scooter engine powered grinding machine),
which are often called grass-root innovations since they were not invented in big research and development
(R&D) laboratories. Such grass-root innovations are an indication that there is an innovative capacity waiting
to be tapped – not just only in the research labs, but also in the hinterlands of India. The National Innovation
Foundation, an initiative of the Government of India, has identified more than 140,000 grass root innovations
[4]; however, to date, less than 300 patent applications have been filed by this foundation [5].

Why is there a general lack of patenting in India? The answer may lie in the lack of awareness. Not only
grass-root innovators, even business owners, R&D scientists, engineers and many professors are unaware
of the power of owning patents. A popular perception in India is that patents are instruments used only by
profit-minded corporations for their own benefit and they ignore the needs of the population at large.

Although the Indian Patent Office and the government are making efforts to create better awareness and
multi-national companies are becoming role models in patenting, these efforts have been stymied by the
enormous cost and time spent during the entire patenting process. As the general awareness for Intellectual
Property (IP) rights grows, the IP protection system and processes also come into focus. There is a need for
a quicker, cheaper and easier means of achieving patent protection, and in our view, the answer lies in the
Indian Patent Office granting utility model patents. Utility models have been successful in boosting domestic
industries in 75 countries. Many developed countries (e.g., Germany and Australia) as well as developing
ones (e.g., China and Brazil) already allow the grant of Utility models. One country that has done remarkably
well in this regard is China.

Lessons from China

China opened its economy in 1978, and in 1985 it established its patent law that has since undergone three
rounds of amendments. The most recent amendments became effective in October 1, 2009. All these
amendments have made the Chinese patent law similar to those in many other countries. Through the years,
China also became a signatory to international treaties like the Patent Cooperation Treaty (PCT) and
agreements like the Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement. Since the
establishment of its patent law 26 years ago, the Chinese government has realized the importance of
Intellectual Property (IP) protection, and has therefore developed a comprehensive legislation and set of
institutions that are responsible for patent examination and enforcement. In our paper titled ‘Patenting
Landscape in China’ that was published in 2008 [6], we showed how the Chinese patent system has evolved
during the last two decades.

The Chinese patent regime is relatively young compared to that in other countries. However, China has
developed its patent system at an astonishing rate to become one of the largest patent filing jurisdictions in
the world. A key feature of the Chinese patent system is the availability of three different kinds of patents:
invention patents (20-year patents), utility model patents (10-year patents), and design patents. In the year
2009, the State Intellectual Property Office (SIPO) of China recorded close to a million patent applications, which included 314,573 invention patent applications (i.e., 20-year applications), 310,771 utility model
applications (i.e., 10-year applications) and 351,342 design patent applications. The growth in patent
application filing in China is illustrated in Figure 2 below.

It is quite remarkable that China has achieved such growth within 26 years of establishing its patent law.
What is even more remarkable is that a majority of these patent applications were filed by domestic
applicants. In the year 2009, 72% of 20-year applications filed in China were filed by Chinese applicants,
whereas less than 20% of applications were filed in India by Indian applicants [7].

Table 1 below compares Indian and Chinese patent systems with respect to a few parameters. Interestingly,
the situation in India in 2009 was somewhat similar to that of China in 1999. The growth of the Chinese
economy is an obvious reason for the growth in patent filing activity. However, if the economic growth were
the only factor, then India should also have seen a faster growth in the number of patent applications
because the Indian economy has also been growing steadily during the past few years. It is clear that at
least one other factor has significantly contributed to the growth in the patent filing numbers in China, and
this is the Chinese patent system allowing the granting of utility models or 10-year patents. In 1999, only
42.5% of the invention patent applications were filed by domestic applicants, whereas 99.5% of the utility
model applications were filed by domestic applicants. In the year 2009, the share of domestic applicants
filing invention patent applications grew to 72%, whereas the share filing utility model applications remained
almost the same at 99.2%. Clearly, domestic Chinese companies are keen to file utility models and they
have played an important role in increasing the awareness among Chinese organizations towards
intellectual property and particularly, the patenting system. It is important to study the utility model system
and examine how the utility models can be beneficial to the Indian patent system.

The Success of Utility Models in China

Utility models have existed for more than two decades in China. They recently garnered additional attention,
because of their sheer volume; the success of the Chint group in asserting its utility model against Schneider
Electric also drew considerable attention on the subject. The Chint group, a Chinese manufacturer, sued
Schneider, a French multinational, for infringement of its utility model. The Wenzhou Intermediate People’s
Court decided in favour of the Chint group and awarded it enormous damages (worth approx. USD 45
million). Schneider eventually settled for USD 23 million, which may still have been a record for any patent litigation in China. The Chint vs. Schneider case illustrates the importance of utility models in the present-
day business scenario. In addition to China, a number of other countries (e.g., Germany, Japan, Australia, South Korea, and Brazil) award utility models as an alternative mode for patent protection. It is, therefore,
important to understand how these utility models are different from invention patents. Table 2 below
provides a comparison.

Although all the legal attributes that are available to the invention patents (i.e., 20-year patents) are also available to utility models (i.e., 10-year patents), utility models differ from invention patents in the following respects:

a). there is no substantive examination leading to a quick grant
b). the life of utility models is only ten years, and
c). application, examination, maintenance, and attorney fees are substantially lower

Simply put, utility models are cheaper, easier and quicker to obtain than invention patents.

Much like China, a cheaper and easier mode of obtaining patent protection will also have benefits in the
Indian context:

• More companies, research organizations, universities and individuals will be able to apply for
  protection of their intellectual property rights.
• Hurdles associated with traditional filing and examination process can be mitigated.
• Frustration with delays, which lead to a lack of interest in the process, will be reduced.
• Technologies that have a short shelf-life can be protected faster, cheaper and better.
• More applications will also increase the revenues for the Indian Patent Office. This money can be
  used to improve the online patent database and also recruit and train more patent examiners.
• Grass-root inventions can be recognized and the inventors awarded better for their efforts.

Of course, the acceptance of utility models does not imply that they would replace invention patents,
especially because utility models have a few limitations also.

Limitations of Utility Models

Given below are some perceived disadvantages of utility patents and a few potential solutions for mitigating
these:

Criticism 1: Utility Models are ‘Junk’ patents:

The lack of substantive examination may allow patents to be granted for inventions that may not be patented
otherwise. This may lead to an unnecessary increase in the number of applications as well as the number of
granted utility patents.

Potential solution: Post-grant opposition should be available via an administrative process at the Indian Patent Office, which can be used to proactively invalidate utility models that are not novel. While the utility
models are published by the patent office to recognize new inventions, such publication will also open them
up for public scrutiny. This will also help in making the entire process transparent. Furthermore, the invention
categories that will be excluded from the scope of utility model protection should be clearly defined before
allowing utility model applications. For example, inventions related to chemicals, pharmaceuticals, biological
material or substances or processes may be excluded from utility model protection. The aim for utility
models is to help small enterprises and grass-root innovators to protect simple and incremental innovations,
whereas the traditional patent route would be a better route for protecting complex innovations.

Criticism 2: Utility models cause an increase in unnecessary litigation:

Since utility models are not substantively examined, unnecessary litigation may increase because many
utility models may not be novel to begin with. In the worst possible scenario, a counterfeiting company can
obtain a utility model for an existing, but not well-known technology and sue the actual owner of that
technology. Such situations may put additional burden on the courts and the patent office due to a sharp
increase in false litigation suits (in courts) and requests for invalidation requests (at the Indian patent office).

Potential solution: For any utility model, a prior art search report should be made mandatory before any
litigation can proceed. Such a search report will help in identifying the novelty and non-obviousness of the
invention, thereby preventing false litigation and making it easier to invalidate utility models that do not
contain any novelty. The burden for creating the search reports should be moved from the patent office to
the owner of the utility model or the person involved in invalidating it. The utility model holder must request
and pay for a search report before enforcing it in an infringement suit. Similarly, a person interested in
invalidating the utility model must request and pay for the search report from the patent office.

Criticism 3: Utility models have too short a term:

Utility models have a ten-year term, which is half of the term for invention patents. This may seem short for
some inventions, e.g., pharmaceutical drugs that need to go through multiple rounds of clinical trials.Utility models have a ten-year term, which is half of the term for invention patents. This may seem short for
some inventions, e.g., pharmaceutical drugs that need to go through multiple rounds of clinical trials.

Potential solution: Utility models should probably not cover pharmaceutical drugs or similar inventions. Utility
models are a boon for technologies that have a much shorter life span. Further, the provision of a yearly
maintenance fee will ensure that utility models for technologies that are no longer of interest are unlikely to
be maintained for a long time. For example, the minimum term of granted utility models may be as small as
four years, which can be extended to seven years, and then ten years by paying small fees. The renewal fee
will help in weeding out unused utility model and in reducing the ‘junk’ utility models.

Criticism 4: Utility models put an unnecessary strain on the patent office:

If applications for utility models are allowed, the patent office will be even busier and would be distracted
from working on invention patent applications and other activities.

Possible solution: A fast examination system should be implemented, wherein the patent office only
examines a utility model application for completeness (e.g., application in prescribed format, the invention
described completely). The patent office should avoid substantive examination with respect to novelty.

Finally, several research papers have highlighted the benefits of utility models for developing countries like
India. For example, one article has been published by International Centre for Trade and Sustainable
Development (ICTSD) and United Nations Conference on Trade and Development (UNCTAD), [8]; it
suggests various measures to implement an ideal utility model system.

Conclusion

The Indian government needs to seriously think about adopting utility model protection as a supplementary
form of patent protection. Despite impressive economic growth during the last two decades, the level of
innovation and Intellectual Property Rights generated and held by Indian domestic companies remains low,
reflecting the fact that the patent system in India is inadequate for boosting innovation. Given the ‘status
conscious’ Indian psyche, utility models are more likely to be successful than invention patents. Furthermore,
they will give a much needed push to the domestic sector by putting it at par with their foreign counterparts
in terms of innovation culture and competitiveness. In this regard, India can learn from the Chinese
experience and can have the right checks and balances to implement a better patenting regime.

In summary, the relevance and advantages of utility models in India outweigh their limitations and
disadvantages. Utility model protection has proved to be popular and successful in more than 75 countries,
and we strongly believe that if implemented properly in India, it will do more good than harm.