Act on Utility Model Rights * (No. 800 of May 10, 1991, as last amended by Act No. 1696 of December 22, 1995)
TABLE OF CONTENTS **
* Finnish title: Laki hyödyllisyysmallioikeudesta.
�Act No. 800 of May 10, 1991, as amended by Acts Nos. 580 of June 26, 1992, 1037 of
�November 13, 1992, 1410 of December 18, 1992, 720 of April 21, 1995, 1396 of
�December 8, 1995 and 1696 of December 22, 1995.
�Entry into force (of last amendments): March 1, 1996.
�Source: Communication from the Finnish authorities.
�Note: English translation furnished by the national authorities and edited by the
�International Bureau of WIPO.
�** Added by the International Bureau of WIPO.
�
For the purposes of this Act, “invention” shall mean a technical solution that is commercially exploitable. (8.12.1995/1396)
The following, as such, shall not be regarded as inventions:
2. An invention must be new in relation to the prior art before the filing date of the utility model right application and must differ distinctly therefrom.
The prior art shall be held to comprise everything made available to the public by means of a written or oral description, by use or in any other way. Additionally, the content of utility model right, patent and design applications as filed in this country prior to the above-mentioned filing date shall be regarded as comprised in the prior art if such applications are made available to the public under Section 18 of this Act, Section 22 of the Patents Act 1 [Patenttilaki] or Section 19 of the Registered Designs Act 2 [Mallioikeuslaki]. The requirement set out in the first paragraph, that the invention must differ distinctly from the prior art known before the filing date of the application for a utility model right, shall not apply, however, in such cases.
Applications referred to in Chapter 8a shall, for the purposes of the second paragraph, have the same legal effect as applications for utility model right filed in this country, pursuant to provisions laid down in Sections 45b and 45f . (8.12.1995/1396)
A utility model may nevertheless be registered for inventions made available to the public within the six months preceding the filing date of the application if disclosure was the result of
For the purposes of the second paragraph, publication according to Article 93 of the European Patent Convention3 (Finnish Treaty Series 8/96) shall be equated with the making available to the public of application documents according to Section 22 of the Patents Act. What is said above, also applies to publication according to Article 158(1) of the European Patent Convention where the European Patent Office equates such publication with publication according to Article 93. (22.12.1995/1696)
3. The exclusive right conferred by registration of a utility model shall imply, subject to the exceptions stated below, that no one may exploit an invention without the consent of the proprietor of the utility model right by making, offering, putting on the market or using a product protected by the utility model right, or by importing or possessing such product for these purposes.
The exclusive right shall also confer on its proprietor the exclusive right to prevent any person not having his consent from supplying or offering to supply any person not entitled to exploit the invention with the means of working the invention in this country in relation to an essential element of the invention where such other person knows, or on the basis of the circumstances should have known, that the means are suitable and intended for working the invention. This provision shall not apply where the means are staple commercial products, except where such other person attempts to induce the receiver to commit any act infringing the exclusive right referred to in the first paragraph of this Section. For the purposes of this paragraph, any person using the invention in a manner referred to in the third paragraph, item (1) , or (3) , shall not be regarded as entitled to exploit the invention. (8.12.1995/1396)
The exclusive right shall not apply to
3 See Industrial Property Laws and Treaties, MULTILATERAL TREATIES—Text 2008 (Editor’s note).
�4 See Industrial Property Laws and Treaties, MULTILATERAL TREATIES—Text 1016 (Editor’s note).
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first and second paragraphs of Section 2, and Section 4, to have been filed at the same time as the earlier application if the applicant so requests. Such priority may also be enjoyed under an earlier application for protection filed in a country not party to the above-mentioned conventions if the corresponding priority deriving from a Finnish application is granted in such country and if the laws of such country substantially conform to those conventions. (22.12.1995/1696)
The Government, or a Registering Authority appointed by the Government, shall lay down the manner in which priority claims shall be filed and the documents to be submitted in support of claims.
1 See Industrial Property Laws and Treaties, FINLAND—Text 2-001 (Editor’s note). 2 See Industrial Property Laws and Treaties, FINLAND—Text 4-001 (Editor’s note).
6. Applications for utility model rights, hereinafter referred to as “utility model applications”, shall be filed in writing with the National Board of Patents and Registration, acting as Registering Authority. In the cases referred to in Chapter 8a applications may also be filed with the patent authority of another country or with an international organization. (8.12.1995/1396)
The application shall contain a description of the invention, accompanied by drawings where necessary, and a precise statement of the subject matter for which utility model right protection is sought (a claim). More specific provisions regarding drawings accompanying the application shall be laid down by decree. The description shall be sufficiently clear to enable a person skilled in the art to carry out the invention with the guidance thereof. Where the invention relates to a product of a microbiological process, Section 8a and paragraphs 6 and 8 of Section 22 of the Patents Act shall apply mutatis mutandis. (8.12.1995/1396)
The inventor’s name shall be stated in the application. If a utility model right is applied for by a person other than the inventor, the applicant shall be required to prove his title to the invention.
day the patent application is deemed to have been filed. In other respects, the provisions relating to applications for utility models shall also apply in the case of such utility model applications.
A patent application shall remain pending even if it is converted into a utility model application unless the applicant specifically withdraws the patent application.
8a. (22.12.1995/1696) If a European patent application under the European Patent Convention is to be deemed withdrawn because it has not in due time been received by the European Patent Office from the national Registering Authority of the Contracting State of the European Patent Convention with which the application was filed, it shall, at the applicant’s request, be converted into a utility model application, provided that
If a European patent application is to be deemed withdrawn because no translation in its language of proceedings has been submitted to the European Patent Office within the prescribed time limit, it may, at the request of the applicant, be converted into a national utility model application in compliance with the provisions of Articles 135 and 136 of the European Patent Convention. The applicant shall additionally pay the Registering Authority the prescribed application fee and submit a translation pursuant to Section 7 of the utility model application within the prescribed time limit.
If a utility model application within the meaning of the first and second paragraphs satisfies the requirements as to form of the European Patent Convention and its Implementing Regulations, it shall be accepted in these respects.
The Registering Authority shall classify the application.
The applicant or, after the utility model has been entered into the Register or been made available to the public under Section 18, anyone may submit a request in writing for an examination to assess whether an invention for which utility model registration has been granted or a utility model application filed satisfies the requirements laid down in the first paragraph of Section 2 . The prescribed fee is payable for the examination. (8.12.1995/1396)
13. If the applicant fails to satisfy the requirements for the application, or if the authority finds other obstacles to the registration of the utility model, the applicant shall be notified thereof by official action and be invited to file his comments or the necessary corrections within the specified period of time.
If the applicant fails to file his comments or to take steps to remove the obstacles within the specified period of time, the application shall be dismissed. The official action issued pursuant to the first paragraph shall include a notice to that effect.
A dismissed application may be reinstated if, within two months of the expiration of the time limit laid down in the official action, the applicant so requests and files comments or takes steps to correct the application and, within the same period of time, pays the prescribed reinstatement fee. An application may be reinstated only once.
At the request of the applicant, registration may be postponed for a period of no more than 15 months from the date the application was filed or is deemed to have been filed, or, where priority has been claimed, from the priority date. If the application has been dismissed or rejected, the file shall become available to the public only if the applicant requests the reinstatement of the application or appeals against the decision by which the application was rejected. A prescribed fee is payable for the postponement of the registration.
At the applicant’s request, the application file may be made available to the public earlier than provided for in the first paragraph.
19. If an invention for which a utility model right has been registered or an application for a utility model right does not satisfy the requirements laid down in the second to fourth paragraphs of Section 1 , Section 2 , the second paragraph of Section 6, or Section 8 or 11 , any person may request that the registration of the utility model be declared invalid in whole or in part. (8.12.1995/1396)
The request shall be made to the Registering Authority in writing and state the facts on which it is based. The person making the request shall pay the prescribed fee. If the payment is not made, the request will not be considered.
A request that a registration be declared invalid shall not be considered if proceedings concerning transfer of the registration are pending.
If a registration has been declared invalid, the decision shall be published once it becomes final.
The renewal of a registration shall be announced.
27. A utility model right may be transferred.
If another person has obtained the right to exploit the invention commercially (license), such person may transfer his right to a further person only if such has been agreed.
However, if the license has been granted to an enterprise, it may be transferred together with the enterprise, unless otherwise agreed. In such case the assignor shall remain liable for compliance with the license agreement.
28. The transfer of a utility model right or the grant of a license shall be recorded in the Utility Model Register on request and on payment of the prescribed fee. This shall also apply to the pledging of a utility model right. On proof that a license or a pledge recorded in the Register is no longer in force, the entry shall be deleted from the Register.
The first paragraph of this Section shall apply mutatis mutandis to compulsory licenses and to the right referred to in the first paragraph of Section 32.
The person last recorded in the Utility Model Register as the proprietor of the utility model right shall be deemed the proprietor for the purposes of legal proceedings and for other matters concerning the utility model.
The provisions of Sections 46 to 50 of the Patent Law relating to compulsory licenses to exploit inventions protected by patents shall apply mutatis mutandis with respect to utility model rights.
the intended exploitation, provided that its general nature is maintained. A licensee recorded in the Utility Model Register shall have the same right subject to equivalent conditions.
The right referred to in the first paragraph of this Section may only be transferred to others together with the enterprise in which it is exploited or intended to be exploited.
A person found guilty of utility model right infringement that is neither intentional nor negligent shall pay compensation for the exploitation of the invention if and to the extent held reasonable.
An action for compensation for utility model right infringement may only be brought with respect to damages suffered during the five years preceding the institution of the action. If an action is not instituted within that period, the right to compensation shall be forfeited.
The requirement to notify pursuant to the first paragraph shall be deemed satisfied when notification by registered letter has been sent to the addresses recorded in the Utility Model Register.
If the plaintiff cannot prove, at the time the action is brought, that he has given notice pursuant to the first paragraph, he shall be given a sufficient period of time to do so. If he does not avail himself of that period of time, the action shall be dismissed.
43. The District Court of Helsinki shall be the competent court to hear proceedings in respect of
45a. (8.12.1995/1396) In this Act “an international application” shall mean an application relating to a utility model filed under the Patent Cooperation Treaty 5 (Finnish Treaty Series 58/80).
International applications shall be filed with a registering authority or an international organization (receiving office) authorized under the Patent Cooperation Treaty and its Regulations 6 to receive such applications. The receiving office in Finland shall be the National Board of Patents and Registration, as laid down by Government decree. Applicants filing an international utility model application in Finland shall pay the prescribed fees.
Unless otherwise provided in Sections 45b to 45f , the provisions of Chapter 3 of the Patents Act in respect of the processing of international patent applications shall apply mutatis mutandis to the processing of international utility model applications designating Finland.
45b. (8.12.1995/1396) An international utility model application to which a receiving office has assigned an international filing date shall have the same effect in this country as a Finnish utility model application filed on the same date. The second sentence in the second paragraph of Section 2 shall only apply to an international application that has been pursued under Section 45d .
45c. (8.12.1995/1396) An international utility model application shall be deemed withdrawn as far as the designation of Finland is concerned in the cases referred to in Article 24(1)(i) and (ii) of the Patent Cooperation Treaty.
45d. (8.12.1995/1396) If an applicant wishes to pursue an international utility model application in Finland, he shall file with the Patent Authority a translation in Finnish or Swedish of the international application within 20 months of the international filing date or, where priority is claimed, of the priority date, or a copy of the application where it is written in Finnish or Swedish. The applicant shall pay the prescribed registration fee to the Registering Authority within the same period.
If an applicant has requested that the international utility model application be the subject of an international preliminary examination, and if within 19 months of the date
5 See Industrial Property Laws and Treaties, MULTI-LATERAL TREATIES—Text 2006 (Editor’s note).
�6 See Industrial Property Laws and Treaties, MULTILATERAL TREATIES—Text 2-007
�(Editor’s note).
�
referred to in the first paragraph of this Section he had stated his intention under the Patent Cooperation Treaty and its Regulations to use the results of the international preliminary examination in applying for a utility model right for Finland, he shall comply with the requirements of the first paragraph within 30 months of that date.
If the applicant has paid the prescribed registration fee within the time limit laid down in the first or second paragraph, the required translation or a copy of the application may be filed within a further period of two months, provided the prescribed additional fee is paid within that same period.
If the application, in cases referred to in the first and second paragraphs of this Section, does not satisfy the requirements of this Act, the applicant may, within a period of two months from the time limits referred to in the first and second paragraphs, alter the application to comply with the requirements as to form and content of the Regulations Under the Patent Cooperation Treaty. If the applicant does not satisfy the requirements of this Section, the application shall be deemed withdrawn as far as Finland is concerned.
45e. (8.12.1995/1396) Where an applicant withdraws his request for international preliminary examination or his statement of his intention to use the results of such examination in applying for a utility model right for Finland, the international utility model application shall be deemed withdrawn as far as Finland is concerned. The application shall not be deemed withdrawn, however, if withdrawal is made prior to the expiration of the time limit laid down in the first paragraph of Section 45d and if the applicant also pursues the application within the time limit laid down in the first, third or fourth paragraph of Section 45d.
45f. (8.12.1995/1396) Where an international application has been pursued under Section 45d, provisions of Chapters 2 and 5 shall apply in respect of the application and examination, unless otherwise provided in this Section or in Sections 34 to 38 of the Patents Act. However, the application may be taken up for examination prior to expiration of the period laid down in the first and second paragraphs of Section 45d only if so requested by the applicant.
The obligation under Section 10 of the applicant to have a representative domiciled in the country does not begin until the date when the application may be taken up for examination.
When 18 months have elapsed since the date of filing of the application or, if priority is claimed, from the priority date, and the applicant has satisfied his obligation under Section 45d to submit a translation or, where the application has been written in Finnish or Swedish, the applicant has submitted a copy of the application to the Registering Authority, the application documents shall be made available to the public even before the applicant has pursued the application.
Separate provisions shall apply in respect of inventions of importance to the defense of the country. (8.12.1995/1396)
49. This Act shall enter into force on a date to be decreed by the Government.
Applications filed prior to the entry into force of this Act may not serve as a basis for a priority claim under Section 5 .
Patent applications filed or deemed to have been filed prior to the entry into force of this Act may not be converted into applications for utility models under Section 8 .
(This text replaces those previously published under code numbers 2-004 and 2-005.)