UTILITY MODEL PROTECTION - TRENDS IN THE EUROPEAN UNION AND CHALLENGES FOR UKRAINE

Abstract

The issue of utility model (UM) protection in Ukraine in1993–2020 and the practice of the EU Member–States is considered. It is noted theproblem of UM trolling and exceeding the number of applications in Ukraine for UM in comparison with inventions. It is associated with the expansion in 2003 of the UM object in addition to the device also to a process, substance, microorganism strain, plant or animal cells culture and limiting the criterion of patentability only to the requirementnovelty and industrial applicability.It is concluded that the adoption of the Law of 21.07.2020 № 816-IX is an important step to limit patent trolling. The Law provides for exclusion from the protection of the substance and the introduction of post grant opposition in the Appellate Chamber.However the Law does not solve the problem of patent trolling at the customs border and did not exclude process from the protection. Also there will still be the problem at the courts as well Appellate Chamber to declare a utility model invalid if the UM is a new but obvious technical solution due to the lack of inventive step requirement or lower requirements for inventive step.The peculiarities of the protection of the utility model in the 15 old EU member states and the United Kingdom are analyzed. It is shown the tendency to increase level of protection of UM in the EU. In 6 EU countries there is no UM protection. In 5 there is an inventive step requirement. In 2 countries protection is possible only for three-dimensional objects (Italy, Greece). In 2 countries (Finland, Spain) - lower requirements for the inventive step.The directions of change of UM legislation in Ukraine are substantiated, including: Option 1: cancellation of protection of UM taking into account experience of Luxembourg, Sweden, Great Britain, Belgium, the Netherlands.Option 2: introduction of protection only for three-dimensional UM (protection is not provided to the method, substances, biotechnological inventions). Establishment of the criterion of inventive step the same as for inventions. Determination of mandatory examination of compliancewith the criteria of patentability (novelty, inventive step, industrial applicability) before the enforcement of UM in the courts, customs, Antimonopoly Committee.Option 3. Definition of protection of utility model as a form of protection of the invention with similar requirements as in option 2.