In order to be granted a utility model certificate, the technical solution must be new, exceed the framework of mere professional skill and be susceptible of industrial application (art. 1 of Law no. 350/2007 on utility models, republished in 2014).
In accordance with art. 4 of the Implementing Regulations to the Law no. 350/2007, the utility model can protect products such as: devices, installations, equipment, machine tools, apparatus or subassemblies thereof, electrical, pneumatic or hydraulic circuits, physical mixtures that are applicable to solve a technical problem.
No. Inventions having as their object a process or a method, cannot be protected as utility models, in accordance with art. 1 paragraph 4 (e) of the Law no. 350/2007 on utility models, republished in 2014.
In accordance with art. 1 paragraph (2) of the Law no. 350/2007 on utility models republished in 2014, discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental activities, playing games or doing business, computer programs, information presentations are not considered inventions and therefore cannot be protected by utility models.
The patent provides a maximum protection of 20 years compared to a maximum of 10 years in the case of the utility model.
The patent application is subject to an examination procedure, while for the utility model application only a Search Report is drawn up, the registration of the utility model being made under the responsibility of the applicant.
An invention exceeds the framework of mere professional skills if, in comparison with the state of the art, according to art. 3 of the Law no. 350/2007 on utility models, republished in 2014, has an advantage, technical or practical, as a result of solving the technical problem.
In order to register a utility model application, the following must be filed with OSIM: the standard form for the “Utility Model Application” and a documentation which must include a description of the utility model, one or more claims (as the case may be), drawings (if they are necessary for a good understanding of the technical solution) and an abstract.
In addition to signing the three copies of the utility model application form, a complete set of the attached documentation (description, claims, drawings, abstract) must be signed in the lower right corner on each page.
If the applicant is a legal entity, the documents must be signed by his / her legal representative. If the legal representative is part of the group of authors of the invention, the following person with the right to sign will sign the documents, provided that he is not one of the authors of the invention.
When the applicant is a legal entity, all three copies of the utility model application form and a complete set of the attached documentation must be stamped and signed. On the forms, the stamp shall be applied in the corresponding fields, and on the attached documentation, the stamp is applied in the lower right corner, together with the signature of the legal representative.
As in the case of a patent application, the subject matter of the utility model application must be disclosed sufficiently clearly and completely so that a person skilled in the art can carry it out (art. 11 of Law no. 350/2007 on utility models). In other words, from the filed documentation, the examiner of the file must understand of what the subject matter of the invention consists and how is operated without the need for further explanations.
Considering that the documentation for the registration of a utility model is the same as the documentation for filing a patent application, the preparation of the description, claims, drawings (when it is the case) and abstract is done respecting art. 16, 17, 18, 19, 20 and 21 of the Implementing Regulations to the Patent Law 64/1991, republished in 2014.
The "Utility Model Application" form can be taken from the OSIM Public Relations Bureau, it can be accessed from the OSIM website, www.osim.ro, or directly from the link https://osim.ro/formulare-pi/formulare-pentru-model-de-utilitate.
The fees for the registration of a utility model are established by Government Ordinance no. 41/1998 on the fees in the field of industrial property protection and the condition of their use, Annex 2, with the modifications imposed by art. 31 of the Law no. 350/2007 on utility models, republished in 2014.
These fees are updated annually, depending on the evolution of the exchange rate and the inflation rate.
The reduction of fees for the registration of utility models can be done in accordance with art. 2 of Government Ordinance 41/1998 on fees in the field of industrial property protection and the condition of their use and art. 31 of Law no. 350/2007 on utility models, republished in 2014.
The certificate of registration of a utility model obtained under the conditions of the Law no. 350/2007 on utility models, republished in 2014, gives the owner the right to use it only on the Romanian territory.
The term of protection of a utility model is 6 years from the date of filing. This duration can be extended by 2 further periods of 2 years each. Consequently, the maximum term of protection of the utility model is 10 years.
The search report informs the applicant on the state of the art relevant to the claims of the utility model. It contains the list of public documents retrieved as a result of the search, mentions of relevant and opposable ones and is accompanied by copies thereof.
The publication of the search report is mandatory and it shall be done:
- together with the publication of the mention of the registration decision, if the applicant wishes so (art. 13 paragraph 6 of the Implementing Regulation to the Law no. 350/2007 on utility models, republished in 2014);
- in case that the search report was not published together with the publication of the mention of the registration decision, it shall be published later, at the request of the owner or third parties, at most 4 months before the 6-year time limit from the filing date (art. 13 paragraphs 7 and 8 of the Implementing Regulation to the Law No. 350/2007 on utility models, republished in 2014);
- if the publication of the report was not requested by the owner or third parties in the previous time limits, OSIM publishes the report before the expiry of the time limit of 6 years from the filing date (art. 13 paragraph 9 of the Implementing Regulation tothe Law no. 350/2007 on utility models, republished in 2014).
Depending on the complexity of the technical solution proposed for registration, you can choose one of two options. If the technical solution has absolute novelty worldwide, has inventive step and industrial applicability, a patent application should be filed. If the technical solution is known in principle and only some improvements are made that lead to a better technical effect, then a utility model application should be filed.
In accordance with art. 14 of the Law no. 350/2007 on utility models, republished in 2014, a utility model application may result from a patent application, if the applicant files a request in this regard and pays the fees provided by the law.
The conversion of a patent application into a utility model application may be requested as follows:
- during the procedure for examining the patent application, until the completion of the technical preparations for the publication of the mention of the decision to grant the patent or to reject it;
- within a period of 3 months of the date from which OSIM publishes the mention of a decision to cancel the patent, which remained final and irrevocable due to the lack of inventive step.
In accordance with art. 15 of the Law no. 350/2007 on utility models, republished in 2014, the applicant for a utility model may request, pending a decision on its registration, its conversion into a patent application, under the conditions provided by the Implementing Regulations to said law, with the payment of legal fees.