While national rules regarding the scope, availability and issuance of utility models vary from country to country, most utility model regimes offer protection for tangible products, with many, but not all, jurisdictions excluding processes, biological materials and computer software from the scope of protection. The duration of utility model protection ranges from five to fifteen years, with most countries offering ten years of protection. In most countries, utility model applications are not formally examined and must simply disclose the product in question. Given the lack of examination, obtaining utility models is generally viewed as faster and cheaper than obtaining patents. This combination of speed and cost, in theory, makes utility models potentially attractive to small and medium enterprises (SMEs) that cannot afford to obtain full patent protection. Similar considerations have also been raised as advantageous to innovators in low-income countries.

Utility models, like patents, are increasingly being declared as “essential” to global industry standards, licensed together with standards essential patents (SEPs), and now even enforced in litigation. This study finds that nearly 1,000 standards-essential utility models (SEUMs) have been declared essential to broadly adopted industry standards. And though far less than other SEPs, SEUMs have been subject to litigation in China and Germany, and there appears to be no structural barrier to their litigation in other jurisdictions. These findings raise questions concerning the legal requirement to disclose and license SEUMs, the value of SEUMs for purposes of calculating FRAND royalty rates for individual firm portfolios and for determining top-down aggregated royalty rates for standards, as well as larger questions concerning the use of UMs to protect complex technological inventions that are also covered by patents.

Unlike most of the other jurisdictions discussed in this book, the United States (US) does not currently have, nor did it ever have, a utility model or other system of second-tier patent protection. This being said, discussion and debate over the institution of such a system in the US has been ongoing for more than a century. In this chapter, we discuss the history and current status of this debate, as well as alternative approaches that US agencies and legislators have taken to address the needs and concerns of small and medium-sized inventors.

The global landscape for existing utility model rights is a helpful starting point to the discussion on utility model innovation policy at the country-level as well as firm strategy. WIPO data indicates that approximately 3.0 million utility model applications were filed globally in 2022, a growth rate of 2.9% from the previous year and close to the global total of 3.5 million applications for standard patents. Only about one-half of the world’s countries provide for utility model systems, yet companies from around the world acquire these rights. Utility models are important players in the IP environment, and the unique qualities of the system and differential representation require specific analysis. In this chapter, we review existing empirical data and present additional data regarding UM filings and litigation worldwide. Our purpose is to provide background and context for the more detailed discussion in the remaining chapters in this book.

At the outset of the COVID-19 pandemic, numerous observers recognized the potential for patents and other intellectual property (IP) rights to hinder the development and dissemination of medical equipment and products responsive to the virus. Concerns over the impact of IP rights on pandemic response led to a range of national and international governmental interventions. Yet these concerns also spurred voluntary, private action by IP rights holders. This chapter discusses and assesses these private initiatives, with a focus on the Open Covid Pledge (OCP), an initiative that the author helped to organize. The OCP eventually led to the voluntary commitment of an estimated 500,000 patents to the COVID-19 response, was endorsed by Universities Allied for Essential Medicines (UAEM) and adopted by the WHO’s Covid Technology Access Pool (C-TAP) as a recommended mechanism for making technology available in the COVID-19 response.

Chapter 20 covers issues relating to the licensing of patents in the context of technical standard setting. It briefly summarizes the development of standards-development organizations (SDOs) and their policies regarding patents on standards. It then addresses the issue of determining fair, reasonable and nondiscriminatory royalty rates, which are required by many SDO patent policies. It also covers patent disclosure requirements under SDO policies (Qualcomm v. Broadcom) and the contours of the nondiscrimination prong of FRAND. Next it addresses the effect of a FRAND commitment on the ability of parties to seek injunctive relief (Apple v. Motorola), and then the effect of the transfer of an underlying patent on the FRAND commitment made by its prior owner.