Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

Japan has adopted the utility model system as one option for protecting technical ideas.  Even though the utility model system shares a common objective of protecting technology with the patent system, there are unique characteristics to the utility model system.  Here are main features of the utility model system in Japan compared to the patent system.

1. What is subject of protection under the utility model law in Japan?

The subject of protection of the utility model law is "a device" that is related to the shape or structure of article or combination of articles (Article 2-3).  Therefore, a method, such as a manufacturing process, or a computer program is not protected under the utility model law in Japan. 

2. What are the characteristics of a utility model application in Japan?

(1) An applicant of a utility model application is obligated to submit drawings that describe the device claimed in the application.  It is contrasted to a patent application that submission of drawings is not indispensable for an applicant of the patent application.

(2) In addition to the application fee, an applicant of a utility model application must pay the registration fee for the first to third years at the time of filing.

(3) In contrast to a patent application, there is no system of request for substantive examination for a utility model application.  The average registration term is about two to three months from the filing date of a utility model application.

3. Can utility model application be converted into patent application?

You can convert a utility model application into a patent application within three years from the date of filing of the utility application.  You are also able to file a patent application based on a utility model registration within three years from the date of filing of the utility application.

4. What is the duration of a utility model right in Japan?

The period of a utility model right is ten years from the date of filing of the utility model application.

5. Are there any restrictions on enforcement of a utility model right in Japan?

Since a utility model right is registered without a substantive examination, there are some restrictions on enforcement of a utility model right.

(1) An owner of a utility model right may not exercise a utility model right unless the owner has given warning in the Report of Utility Model Technical Opinion ^(*1) regarding the registered utility model to an infringer.
^(*1) A report prepared by the JPO (an examiner) on the basis of a search of prior art documents and enabling an objective judgment to be made about the validity (novelty, inventive step and so on) of the utility model right

(2) Where a utility model right is to be invalidated after an owner of the utility model right exercised his right against, or gave warning thereof to, an infringer, the owner shall be held liable to compensate damage to the infringer, as a result of the exercise of the utility model right or the warning.

6. Our comments on “the utility” of utility model system in Japan

Under non-substantive examination system, the exercise of a utility model right is very restricted as described above.  Due to the restrictions, the number of utility model applications has been on the decrease. 

However, as described above, one of the benefits of a utility model is quick registration.  If you wish to register an invention early, the invention can be filed as a utility model so that it can be registered within two or three months.  When you encounter an infringement case and wish to exercise your right validly or securely, there are two possible ways considering the restrictions:
1) to obtain the “affirmative” Report of Utility Model Technical Opinion from JPO to give warning to an infringer, or
2) to convert a utility model application/ a utility model registration into a patent application if three years has not passed from the filing date of the utility model application.

 

If you need more information in this matter, please visit the JPO website at http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_gaiyo_e/model.htm or contact us at http://en.aigipat.com/contact/index.html.


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