How to file a utility model application with OSIM?
Utility models shall be filed in Romania in accordance with the Law No 350/2007 on utility models, as republished in 2014 and the Implementing Regulations thereto.
Under Art.1 para (1) of the Law No 350/2007, a utility model shall protect any technical invention, provided that it is new, it exceeds the framework of mere professional skill and it is susceptible of industrial application.
Under Art. 4 of the Implementing Regulations to the Law No.350/2007, a utility model may protect products, such as devices, installations, equipments, machine-tools, apparatuses or subassemblies thereof, electric, pneumatic or hydraulic circuits, physical mixtures which can be applied for solving a technical problem.
For filing a utility model, the standard form - Cerere de model de utilitate (Application for utility model), which can be found on the OSIM website, at https://osim.ro…formulare-pentru-model-de-utilitate/Formulare - Inventii must be completed and filed with OSIM in three copies.
Along with the mentioned form, the applicant shall also file a documentation in three copies, containing a description of the utility model, one or more claims (as the case may be), drawings (if necessary for a good understanding of the technical solution) and an abstract, in three copies, as well. The three copies of the form and a complete set of documentation will be signed by the applicant (if he is a natural person), or signed by the legal representative and stamped, when the applicant is a legal person. This set of documentation will be the original copy.
The form will be signed in the dedicated fields, and the original copy of the documentation will be signed (and stamped, if the applicant is a legal entity) in the lower right corner.
Also, the applicant shall tick, on the form, which law entitles him to file the application for a utility model, i.e. Law no. 350/2007 on utility models, as republished in 2014, Law no. 83/2014 on employees’ inventions or a research contract. Depending on the version on which the registration is requested, the document (or the contract, as the case may be) stating that the applicant is entitled to file the application for registration of the utility model will have to be filed.
REQUIREMENTS CONCERNING THE FORM OF TECHNICAL DOCUMENTATION
Documentaţia se întocmeşte în conformitate cu prevederile Regulamentului de aplicare a Legii nr.64/1991 privind invenţiile, republicată în 2014, respectiv descrierea se pregăteşte conform cu art. 16 şi art. 17, revendicarea (revendicările) se redactează conform art. 18, desenele se fac conform cu art. 19, iar rezumatul se redactează în conformitate cu art. 21.
The documentation shall be drawn up in accordance with the provisions of the Implementing Regulation to the Law no. 64/1991 on inventions, as republished in 2014, i.e. the description shall be drawn up according to Art. 16 and Art. 17, the claim (s) according to Art. 18, the drawings shall be made according to Art. 19, and the abstract in accordance with Art. 21.
Art. 20 includes the concrete material conditions for presenting the documents (written on A4 paper, written on one side of the sheet, the font size, the edges of the pages, the numbering method, how many lines per page, etc.).
All documents (form and technical documentation) shall be filed at OSIM headquarters in triplicate.
A utility model application may also result from a patent application having as a subject-matter the same invention, if the applicant files an application for conversion:
- 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 from the date on which OSIM publishes the mention of a decision to cancel the patent of invention which remained final and irrevocable due to the lack of inventive step.
Fees for legal procedures for registration of utility models are provided in G.O. No.41 / 98 concerning the fees in the industrial property protection field and the conditions for using the same, with the subsequent amendments and completions - Annex 2. The Annex can be accessed at https://osim.ro/…Taxe-proprietate-industriala-valabile-incepand-cu-01-ianuarie-2022-Anexa-2.pdf.
The main fees you need to pay are:
- the fee for filing the application - can be paid at the moment of filing the application and up to a maximum of two months from said moment - 148 lei;
- the fee for drawing up and publishing a Search report – shall be paid within two months from the filing date or together with the filing of the request by the third party - 495 lei;
- the fee for the publication of the utility model, the issuance of the certificate and the maintenance in force of the respective model for the first 6 years of protection – to be paid within two months from the date of transmission to the applicant of the documentation report - 1979 lei;
- the fee for the renewal of the protection for the years 7 - 8 - 989 lei;
- the fee for the renewal of the protection for the years 9 - 10 - 1484 lei.
In addition to the fees mentioned above, other fees may be charged, depending on the various special procedures that may be involved in the registration of the utility model.
CAREFUL! The amount of the fees changes
Before filing a utility model application, you may conduct a search in the field to check the known state of the art. In this way, you can take advantage of the latest developments in the field and, at the same time, reduce the risk of your application being rejected due to a lack of novelty or inventive step. Documentary search can be done:
- using the services of an industrial property attorney;
- contacting a Regional Center;
- on your own, via the Internet, accessing the OSIM database, at http://online.osim.ro/…RoPatentSearch or other external databases such as "Esp@cenet" (database of the European Patent Office - EPO) or "PATENTSCOPE" (World Intellectual Property Organization - WIPO database). In all these databases, the documentary search can be performed using keywords in the respective field, to identify the already protected technical solutions;
at the OSIM Reading Hall;
by submitting a standard documentary search request to OSIM and by paying a fee corresponding to the legal proceedings.
SCOPE OF PROTECTION
The utility model certificate issued by OSIM offers protection only on the Romanian territory and can be valid for a maximum period of 10 years
If international extension of protection is desired, it must be verified whether the country or countries in which the extension is sought have legislation to that effect. The list of countries that allow the registration of utility models can be found on the website of the World Intellectual Property Organization, at https://www.wipo.int/…utility_models.html.
In fact, this link contains all the information on the international extension of utility models.
OSIM GENERAL INFORMATION
OSIM's address is 5, Ion Ghica Street, Sector 3, Bucharest, code 030044.
For any other information related to the O.S.I.M. and in the field of industrial property, you can come to our headquarters at the Public Relations Office, ground floor - room 2, you can write to us by e-mail: