By Josip Perkušić, Attorney-at-Law in Zagreb
Entrepreneurs developing a new technical solution – whether a product, a device or a composition – must, before filing an application with the State Intellectual Property Office of the Republic of Croatia (DZIV), determine which form of protection best suits their invention. In addition to patent protection, Croatian law also recognises the utility model, a considerably faster and less costly route to formal protection. The following sets out, step by step, the filing procedure for a utility model, its advantages and limitations vis-à-vis a patent, and the matters to which particular attention should be paid so that the application is complete already at first filing.
Utility Model Protection Compared to Patent Protection – A Brief Comparison
A utility model is registered for an invention the subject matter of which is patentable within the meaning of the Patents Act, that is, an invention which is new, involves an inventive step and is susceptible of industrial application. The fundamental difference from a patent lies in the procedure itself: prior to registration of a utility model, DZIV does not examine novelty, inventive step or industrial applicability; such substantive examination, where requested by the right holder, is carried out only at a later stage. For this reason, the registration procedure for a utility model is considerably faster, simpler and less expensive, although the legal certainty of the right so acquired is, as a rule, lower than that of a patent, which is fully examined from the outset, at least until such time as substantive examination is completed.
Unlike a patent, a utility model may protect only a product, and not a technological process. Excluded from utility model protection are, inter alia, inventions in the field of biotechnology and chemical or pharmaceutical substances, as well as inventions the commercial exploitation of which would be contrary to public policy or morality. A utility model application may contain no more than ten claims, and the protection so acquired lasts for a maximum of ten years from the filing date, whereas patent protection may last up to 20 years.
Step 1 – Assessing Whether the Invention Is Suitable for This Form of Protection
Before preparing the documentation, it is necessary to establish whether the invention satisfies the requirements for utility model registration. In practice, this generally comes down to three questions: whether a specific product (rather than the process of its manufacture) is being protected; whether the invention falls within one of the categories expressly excluded from this form of protection (biotechnology, chemical or pharmaceutical substances); and whether there is a genuine, demonstrable difference from existing solutions on the market. If the answer to all three questions is affirmative, a utility model is, as a rule, a faster and more economical route to protection than a patent. If the invention also encompasses a technological process which the applicant wishes to protect, it is more appropriate to consider a patent application from the outset, with the possibility of subsequently limiting part of the protection to a utility model.
Step 2 – Preparing the Content of the Application
A utility model application, similarly to a patent application, must contain a request for registration, a description of the invention, one or more claims, an abstract and, where necessary for the understanding of the invention, drawings. The description of the invention should be sufficiently clear and detailed to enable a person skilled in the relevant art to carry out the invention on the basis thereof, and in practice comprises the following elements:
– the technical field to which the invention relates;
– the technical problem addressed by the solution;
– an account of the prior art and its shortcomings;
– disclosure of the essence of the invention and its advantages over existing solutions;
– a brief description of the drawings, where any exist;
– a detailed description of at least one embodiment of the invention, with reference to the reference signs used in the drawings;
– the manner of industrial application of the invention.
The claims must define, clearly and concisely, the subject matter for which protection is sought, whereby a single independent claim may be combined with several dependent claims further specifying features of the invention – subject to the limitation that a utility model application may not contain more than ten claims in total. The abstract serves solely for technical information purposes and may not be used for the purpose of interpreting the scope of protection. It is advisable to prepare in advance photographs, sketches or technical drawings of the product, as well as information as to whether, and when, the product or formulation has already been disclosed to third parties, since this directly affects the assessment of the novelty of the invention at a later stage of the procedure.
Step 3 – Completing Form UM-1 and the Accompanying Documents
The request for registration of a utility model is filed on Form UM-1, which forms an integral part of the Patent Regulations. The Regulations provide that the provisions governing the content of the request for grant of a patent apply mutatis mutandis to the request for registration of a utility model, save that Form UM-1 is used in lieu of Form P-1. The form comprises, inter alia, the title of the invention, particulars of the applicant and the inventor (with the option of a declaration that the inventor does not wish to be named), particulars of any authorised representative, a declaration of the right of priority where an earlier application is relied upon, an indication of any exhibition of the invention at an international exhibition, and a checklist for verifying that all mandatory parts of the application (description, claims, abstract, drawings) and the accompanying documents have in fact been enclosed.
The name and address of the applicant, the inventor and the authorised representative are indicated in accordance with the uniform format prescribed by the Regulations for all submissions to DZIV: for a natural person, the given name and surname, street, house number, postal code, place and country of residence; for a legal person, the company name or designation and particulars of its registered seat. The request must be accompanied by evidence of payment of the administrative fee and the fee for costs of the procedure (or a request for exemption from payment), a power of attorney where the application is filed through an authorised representative, a declaration as to a joint representative where there are multiple applicants, and a declaration by the inventor that he or she does not wish to be named in the application, where applicable. An applicant who does not have a residence, or an actual and effective industrial or commercial place of business, in the Republic of Croatia must be represented by an authorised representative in proceedings before DZIV.
The application may be filed in person, by post or electronically. Electronic filing requires a qualified electronic certificate but offers a practical advantage: the basic administrative fee for filing is reduced by 50 per cent as compared with filing in paper form, which renders the utility model – already the less costly option – additionally accessible.
Step 4 – Formal Examination of the Application
Upon filing, DZIV first verifies whether the requirements for according a filing date have been satisfied (an indication that registration is requested, particulars enabling identification of the applicant, and a part which, at first sight, appears to be a description of the invention). This is followed by formal examination, in the course of which it is verified whether the prescribed fee has been paid, whether a translation into Croatian has been filed where the application is drawn up in a foreign language, whether the applicant is represented by an authorised representative where this is required, whether an inventor has been indicated, whether the application contains all prescribed parts and accompanying documents, and whether the subject matter of protection is an invention not excluded from this form of protection. It should be emphasised that novelty, inventive step and industrial applicability of the invention are not examined at this stage – this is precisely what distinguishes a utility model from a patent and renders it a faster route to formal protection.
If DZIV establishes deficiencies, it invites the applicant to remedy them within a period which may not be shorter than two, nor longer than three, months. If the application is in order, DZIV notifies the applicant of the legal consequences of registration, transmits to the applicant a proposal for the final content of the application, and invites the applicant to submit, within one month, written consent to the proposed text or to request conversion of the utility model application into a patent application. Prior to the decision on registration, the fee for printing the publication and for issuing the certificate and the file relating to the utility model must also be paid. Unlike a patent application, a utility model application itself is not published – only the particulars of the registered right are published, following the decision on registration.
Duration of Protection, Subsequent Substantive Examination and Conversion into a Patent
A registered utility model lasts for a maximum of ten years, calculated from the filing date, subject to the obligation to pay an annual maintenance fee from the third year onward. The Patents Act affords the holder of a utility model the possibility of requesting, no later than the expiry of the seventh year of protection, substantive examination of the subject matter of protection – that is, examination of novelty, inventive step and industrial applicability, which was not carried out at the time of registration itself. If the invention satisfies the examination, DZIV issues the holder with a decision granting a patent on the basis of the same invention; if it does not, the utility model is declared void ex officio. In practice, this mechanism allows the decision on full, longer-term patent protection to be taken at a later stage, once the commercial value of the invention and its market potential are more clearly known, rather than at the moment of first filing.
The Act further provides for the possibility of direct conversion of a utility model application into a patent application, and vice versa, on which DZIV issues a separate decision – the time limit for such a request depends on the stage which the proceedings have reached. This affords entrepreneurs additional flexibility: an application may be filed as a utility model for reasons of speed and lower cost, and subsequently, should sufficient interest arise, redirected towards full patent protection.
A Practical Overview of Procedural Costs
The fees payable to DZIV for a utility model are considerably lower than those payable for a patent. Broadly speaking, these consist of the fee for formal examination of the application and maintenance of the right for the first two years, the fee for publication of the registration data, and the fees for issuing the file and the certificate relating to the utility model. In the case of electronic filing, owing to the 50 per cent reduction in the basic fee, the total cost of the procedure up to registration of a utility model generally amounts to approximately EUR 200, whereas the comparable cost for a patent, on account of additional stages such as the search report on the state of the art and substantive examination, is considerably higher and may reach several hundred euros already at the stage preceding grant.
Concluding Remarks
A utility model is not a substitute for a patent, but for simpler technical solutions, products with a shorter market life, or situations in which speed of protection outweighs the need for maximum legal certainty, it represents a highly practical option. The key to a successful application lies in the careful preparation of the description of the invention and the claims already at the first step, since the content of the application, as fixed on the filing date, may not subsequently be extended beyond what was originally disclosed. Prior to filing, it is advisable to obtain a legal assessment of the suitability of the invention for this form of protection and to prepare the documentation in accordance with the requirements of the Patents Act and the Patent Regulations, thereby reducing, already at the first step of the procedure, the risk of subsequent delays and costs.
Zagreb, 7 September 2026