Utility models

A utility model may protect a technical solution in any field of technology that is new, the result of an inventor's activity and industrially exploitable. A utility model may therefore protect new solutions to any technical problem which are not obvious to a person skilled in the art and may be regarded as inventive. The subject matter of utility model protection may be new products, devices, methods of production, technologies and others. It does not always have to be revolutionary solutions; improvements to already known solutions can also be protected by utility models.

Some subjects, such as discoveries, scientific theories, computer programs, plant varieties, animal breeds, surgical and therapeutic methods of treating humans and animals, and others, cannot be protected by either a patent or a utility model, either because these subjects are not considered to be an invention or a technical solution under the Patent Act or the Utility Model Act, or because they are excluded from protection.In addition, some subject matter which may in principle be protected by a patent is also excluded from utility model protection. These are:

• technical solutions relating to products consisting of or containing biological material or to the means by which biological material is produced, processed or used;
• methods for the production of chemical substances;
• methods of producing pharmaceutical substances;
• medical uses of substances and mixtures of substances;
• data processing solutions for administrative, business, financial, managerial, supervisory, forecasting or other non-technical purposes.

The owner of the utility model may dispose of the technical solution as with other objects of property - in addition to being able to use the technical solution protected by the utility model in his/her economic activity, he/she may transfer the utility model to another person, he/she may grant consent to third parties to use the technical solution (he/she may grant them an exclusive or non-exclusive licence) or establish a right of pledge over the utility model.

The right to the solution, including the right to file a utility model application, is vested in the originator of the technical solution, i.e. the person who has created the technical solution by his or her own creative activity. If the originator created the technical solution in the performance of tasks arising from an employment relationship, the right to the solution, including the right to file a utility model application, shall belong to his employer. The right to file a utility model application shall also be vested in the legal successors of the originator or of the employer of the originator of the technical solution.

The registration of a utility model in the register is applied for by filing an application with the Industrial Property Office of the Slovak Republic (hereinafter referred to as the Office). The filing with the Office shall be made in writing, in paper form or in electronic form, and in the national language. A filing made in electronic form without authorization pursuant to Act No. 305/2013 Coll. on the electronic form of exercise of powers of public authorities and on amendments and supplements to certain acts (e-Government Act), as amended (zákona č. 305/2013 Z. z. o elektronickej podobe výkonu pôsobnosti orgánov verejnej moci a o zmene a doplnení niektorých zákonov (zákon o e-Governmente) v znení neskorších predpisov), shall be additionally delivered in paper form or in electronic form authorized pursuant to the e-Government Act; if it is not additionally delivered to the Office within one month, the filing shall not be taken into account. The Authority shall not call for additional delivery of the submission.

The application for registration of a utility model shall contain the application for registration of the utility model in a single copy, a description of the technical solution, at least one claim for protection, if appropriate a drawing or drawings and an annotation with an image, if any, in triplicate, which shall allow for further reproduction.
A utility model application may contain only one technical solution or a group of technical solutions which are linked together so as to form a single technical idea, and the solution must be explained and described in the utility model application in such a clear and complete manner as to enable a person skilled in the art to carry it out.

The Office shall subject each utility model application duly filed to an examination to determine whether the application and the technical solution which is the subject of it satisfy the conditions for registration of the utility model in the Register. In the context of that examination, the Office shall not examine whether the technical solution is new and whether it involves an inventive step.

Subsequently, the Office shall carry out a prior art search on the technical solution, notify the applicant of the result of the search and publish the application together with the search report. Within a period of three months from the publication of the application, any person may lodge an opposition to the registration of the utility model with the Office. Objections may also be filed on the grounds that the technical solution which is the subject of the published application is not new or is not the result of inventive activity. If, in the course of the opposition proceedings against the registration of the utility model, the Office finds that the opposition is well founded, it shall refuse the application in part or in full. Otherwise, it shall reject the opposition filed. If the application proceedings have not been discontinued or the application has not been rejected during examination, no opposition has been filed against the registration of the utility model, or the opposition to the registration of the utility model has been rejected, or the opposition proceedings have been discontinued, the Office shall enter the utility model in the Register and the applicant shall become the proprietor of the utility model.

In particular, they should not make their technical solution available to the public before filing a utility model application. Making the technical solution available to the public does not only mean publishing information relating to the technical solution in the technical literature, but also presenting such information in the media, at seminars, conferences, workshops or other public events, exhibiting the product at an exhibition or marketing it. It is not only disclosure of the results of the work of the applicant or his predecessor in title which has taken place in the last six months prior to the filing of the application that is an obstacle to the protection of a technical solution by a utility model.

Due care should also be taken by the applicant in the preparation of the utility model application documents, as the possibilities to amend the application after filing are largely limited. After filing, the applicant may only make changes to the application which do not go beyond the scope of the original filing. This means that it is not permissible to expand the content of the application to include information that was not already part of it at the time of filing.

If a utility model is registered in the Register on the basis of a utility model application filed with the Office, its owner obtains a monopoly for commercial exploitation of the protected technical solution in the territory of the Slovak Republic.Moreover, the filing of a utility model application with the Office gives the applicant a right of priority, which he may exercise within 12 months when filing an application with identical subject matter abroad. Thus, by filing an application with the Office, the applicant gains time to explore the commercial potential and the possibility of further protection of the technical solution, or to obtain the financial means necessary to obtain protection of the technical solution abroad. This may prevent the unnecessary expenditure of funds for protection in countries where the technical solution will not be commercially exploited (the product is not in demand on the market, cheaper products with similar characteristics are available on the market, the applicant fails to raise the capital necessary to establish itself on the foreign market, etc.) and the situation where the applicant discovers only after filing applications abroad that its technical solution does not meet the conditions for obtaining protection.

Due to the registration nature of the proceedings before the Office for utility model applications, the procedure for this type of application is considerably shorter than the procedure for patent applications - ideally (if the application documents are already competently prepared at the time of filing the application and no objections to the registration of the utility model are filed), the utility model is entered in the register before the expiry of 12 months from the filing of the application.

Most technical solutions can be protected by a patent or a utility model, or by both a patent and a utility model (the exceptions are the solutions listed under "What cannot be protected by a utility model"). The applicant may, when filing a patent application, request the grant of a filing date from a previously filed utility model application with an identical solution as its subject matter (utility model application opt-out) or, conversely, when filing a utility model application, request the grant of a filing date from a previously filed patent application with identical subject matter (patent application opt-out). The protection strategy for a particular technical solution depends on the preferences and needs of the applicant. It is recommended that the applicant take the following into account when choosing the form of protection for his solution: what solution is to be protected (some solutions that can be protected by a patent cannot be protected by a utility model), what is the expected desired term of protection of the solution (a patent is valid for a maximum of 20 years from the filing of the patent application, utility model for a maximum of 10 years from the filing of the utility model application), and any public disclosure of the solution prior to the filing of the application (disclosure of the results of the work of the applicant or its predecessor in title that occurred in the last six months prior to the filing of the application is not an obstacle to protection by a utility model).

When the rights of the utility model owner are infringed, for example, if a third party places a protected product on the market without the owner's consent, the utility model owner may seek an injunction in the competent court to prohibit the infringement of its rights. If the proprietor of the utility model has suffered damage as a result of the interference with his rights, he has the right to claim compensation for that damage, including loss of profit. The court may, on the basis of a petition filed, order that the infringing products be withdrawn or permanently removed from the commercial network, otherwise secured in such a way as to prevent further infringement or threat to the rights of the utility model owner, or destroyed at the expense of the infringer. Where the proprietor of the utility model has suffered non-pecuniary damage, he shall be entitled to appropriate compensation, which may include monetary compensation.

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