The whole procedure from filing to registration is shown in the flow chart below.
The subject of utility model protection is limited to inventions relating to the shape or structure of goods or combination of goods. Though inventions which come under the scope of utility model protection maybe include goods of all kind, it does not include the materials, processes to manufacture said goods or any processes to define goods as services. This said, materials such a chemical compounds, medicines, glass, metal and alloys, method inventions of all kind and software related inventions are also not subject to utility model protection.
In order to fulfill to the formal requirements, the application documents for a utility model application at the JPO should include a filing request, a description, claim(s), drawing(s) and an abstract.
For foreign applications via the Paris Convention route, the Japanese applications should be filed within 12 months from the filing date of the foreign priority application.
For PCT route utility model applications, the due date for entering the Japanese national phase is 30 months from the priority date. Upon filing for both routes, the applicant has the choice between filing a patent application or a utility model application.
A Japanese translation of the priority foreign language priority application has to submitted two months after the filing of the Japanese application via the Paris Convention route. In case of the PCT route, a Japanese translation of the priority foreign language application has to submitted (i) within 30 months from the priority date, or (ii) 2 months from the national phase entry, whichever comes later. The application fee and the annual fees for the first to third years shall be paid upfront and simultaneously with the filing of the utility model application at JPO.
In general, the Japanese utility model application proceedings differs from patent application proceedings regarding the followings:
Firstly, the subject of protection is limited to inventions relating to the shape or structure of a device or combination of devices. Though inventions which come under the scope of utility model protection maybe include goods of all kind, it does not include the materials, processes to manufacture said goods or any processes that define goods as services.
Secondly, there is no substantive examination at the time of apply for a utility model application right at the JPO.
Thirdly, the term of protection is 10 years. It is remarkable shorter than that of a patent right or a design right.
Note:Due to the requirements for the scope of protection of a utility model which are limited to the shape or structure of goods or the combination of goods as set out with regard to the subject of protection, all eligible utility model applications must be accompanied by at least one drawing.
A utility model can be converted to a patent application can be converted any time before the examination request or in response to office action (notice for reasons of refusal, notice of final refusal etc.) if it is within the term of protection. This means for a Paris Convention Application: 3 years from national filing date, and for a PCT Application: 3 years from international filing date.
After filing a utility model application, it is examined for basic requirements i.e., a formal examination is commenced. Besides the correct bibliographic data of the applicant and requirements of the inbound routes of the application, the subject of protection, violation of public order or morality, scope of claims; and unity of application with regarding the claimed subject matter are examined as basic requirements during the formal examination.
The substantive requirements such as novelty and inventive step that a utility model application must fulfill are not examined at the time of filing a utility model application.
Note:Though the substantive requirements at the JPO for a utility model registration are the same as for a patent application, the statutes referring to inventive step in the Japanese patent law and utility model law slightly differ from each other, as the formers stipulates that “a person ordinarily skilled in the art of the invention would have been able to easily make” lacks the inventive step, while the latter defines that for a “device” “a person ordinarily skilled in the art of the device would have been exceedingly easy to create” lacks the inventive step.
In practice, however, there is no apparent difference to the JPO’s examination proceedings when issuing a technical opinion for a utility model right. This said, a failure to overcome substantive examination requirements for a patent may be also provides invalidation reasons of a utility model right.
The applicant can file for a voluntary amendment within one month from the filing date of the utility model application right at the JPO.
In addition, the applicant can file an amendment to the utility model application in response to an office action in which the JPO orders an amendment to the utility model application. The term for filing such amendment is 3 months from the issuance date of the office action ordering such amendment to a utility model application.
In case the applicant fails to provide an amendment in response to the official amendment order, the JPO issues a notice of dismissal of the utility model application.
Note:The applicant cannot appeal against the notice of dismissal. However, in case the reason for dismissal refers to a violation of the scope of protection, the applicant can file for a conversion of right to a patent application, if applicable. (Paris Convention Application: 3 years from national filing date, and for a PCT Application: 3 years from international filing date.)
Alternatively, a conversion of right to a design application may also be possible depending on the drawings as filed, if applicable.
The proceedings between the filing and the grant of utility model registration takes about 4 months.
Since the registration fees are paid at the time filing the utility model application, the utility model registration is automatically published in the official gazette. The protection term of a utility model right is 10 years from the filing date of the application.
Note:In order to prevent an abuse of right, a Japanese utility model application may not be enforced before issuing a warning letter to the alleged infringer. Moreover, as a Japanese utility model is registered without substantive examination the warning letter to the alleged infringer should comprise a “technical opinion” to the utility model.
This “technical opinion” is issued by JPO. The “technical opinion” is an official opinion on the registrability of the utility model that provides the JPO’s opinion whether the utility model fulfills substantive requirements (novelty and inventive step) or not.
The request for substantive examination is filed by a request for “technical opinion assessment” at the JPO. This assessment provides for an official opinion on the registrability of the utility model and shows the JPO’s objective opinion whether the utility model fulfills substantive requirements or not. Any person may file such a request for such technical opinion in order to examine the utility model regarding the substantive requirements.
Note:The request for “technical opinion assessment” may be filed even after the expiration of the protective term of the utility model right, except for the case when the registration already has been fully revoked in an invalidation trial. The substantive examination takes about six months from the date of request for the “technical opinion assessment”.
A Japanese utility model application can be corrected at any time before after the registration and in response to a request for the “technical opinion assessment”.A correction of the description, claim(s) or drawing(s) etc. can be filed in the scope of the disclosure of the original application.
A correction cannot be filed at the beginning or during pending invalidation trial proceedings. However, the utility model right holder can file a correction only once after the issuance of a preliminary notification of the invalidation trial decision at the end of the invalidation trial proceedings. The purpose of a correction after registration is limited to a restriction of the scope of claims, a correction of errors, a clarification of ambiguous statements in the claim wording and a conversion of claim format from a dependent into independent claim for sake of limiting the scope of right.
Nevertheless, claim(s) can be deleted as desired during the above time period.
Though the duration of an invalidation trial proceedings is similar to those of a patent right. The invalidation trial proceedings begin with the request for trial by the demandant (person with interest, no anonymous filing) and the filing of the grounds for invalidation.
The court appoints a panel which provides copies of the demandant’s filing documents and an invitation to response to thereto to the utility model right holder (or his local representative). The utility model right holder may file a preparatory document including a written argument.
A request for correction cannot be filed at the beginning or during pending invalidation trial proceedings. However, the utility model right holder can file a correction only once after the issuance of a preliminary notification of the invalidation trial decision at the end of the invalidation trial proceedings.
After the first oral hearing, in case the board of appeal examiners fully uphold the utility model right and dismisses the grounds for invalidation, a notification of a Decision to maintain the utility model right is issued approx. 3 - 4 months after the oral hearing.
The demandant has the remedy to appeal this final decision by filing appeal court trial against the invalidation trial decision at the Tokyo Intellectual Property High Court.
In case of decision for the invalidation of utility model right, if the reasons for invalidation revoke the claims of the utility model right, the decision may only affect a part of the utility model right (claims) while upholding a remaining part of the utility model right (claims), if a respective request for correction of the utility model right is filed by the utility model right holder.
The decision to maintain based on the corrected utility model right and the corrected utility model right with its maintained claims is published in the utility model right gazette.
In case the decision completely invalidates a utility model right, the voided utility model right is retroactively deemed to have never existed. Public file inspection of the invalidation proceedings and the related documents is available on request.
Both, the demandant and the utility model right holder can appeal the final decision by filing an appeal court trial against the invalidation trial decision at the Tokyo Intellectual Property High Court.
If the utility model right holder or the demandant is dissatisfied with the decision of the board of appeal examiners at the JPO, the utility model right holder or the demandant of the failed invalidation motion may file an appeal court trial against the invalidation trial decision at the Tokyo Intellectual Property High Court within 120 days of the issuance date of the invalidation decision. This term cannot be extended.
Note:In case of court trial against the invalidation trail decision issued by the JPO, the foreign appellant needs to be represented by an attorney at law, and a power of attorney together with notarized company register of the appellants data (in case the appellant is the right holder and a company) must be filed at the time of filing the request for trail at Tokyo Intellectual Property High Court.
The Supreme Court of Japan is the last remedy of the parties of law suit at the Tokyo Intellectual Property High Court are dissatisfied with the decision of appeal court judges.
