Basic Information about Japanese Utility Model Applications
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Filing a New Utility Model Application/Request for Entry into PCT National Phase
Applicants need to submit an application form, specifications, claims, an abstract, and drawings to the JPO.
Unlike patent applications, the submission of drawings is mandatory for utility model applications. In addition, the registration fees for the 1st year to the 3rd year must be paid at the time of filing.
In case of a PCT application entering the national phase in Japan as a utility model application, Applicants must file a request for entry into PCT national phase to the JPO within 30 months after the earliest priority date. Where Applicants file the request for entry within 30 months after the earliest priority date, they need to submit the Japanese translations of the specifications, claims, abstract, and drawings within 30 months after the earliest priority date or 2 months after the filing date of the request for entry, whichever is later.
A power of attorney is not required for filing a new patent application/PCT national phase entry.
Utility model applications are registered without substantive examination, so the utility model right is generally registered in about 2-3 months after the filing date.
The statutory subject matter to be protected under the Utility Model Law is limited to the shape, structure or combination of articles of manufacture, and thus it should be noted that it is slightly different from the statutory subject matter to be protected under the Patent Law, which is not limited to the shape and/or structure of articles.
A series of flows of a new utility model application
- Hearing on a utility model (real or online interview)
- Prior art search (if necessary)
- Drafting proposed claims and corresponding effects
- Client’s instruction as to the above
- Drafting specifications and drawings
- Client’s instruction as to the above
- Preparing and filing a new utility model application
Examination for Formality and Basic Requirements
Although a utility model application can be registered without substantive examination, it is necessary to pass an examination for formality and basic requirements before the registration.
When an Applicant receives from the JPO a notice to correct a formality matter and/or basic requirement(s), they are given an opportunity to submit a written opinion and/or amendment in response to the notice. The due date for responding to the notice is set to 3 months from the receipt date of the notice for international clients, and 60 days from the receipt date for domestic clients.
The violation of the basic requirements includes the following:
- The subject matter to be protected is not the shape, structure, or combination of articles of manufacture.
- The violation of public order and morality
- The violation of the description format for claims
- Lack of unity
- Significantly unclear description
For example, if the subject matter to be protected is directed toward a program or method, the applicant will receive a notice to correct basic requirements from the JPO. Also, it is our opinion that even if a claim includes a limitation relating to a manufacturing method (i.e., a Product-by-Process (PBP) limitation), the above notice will not be issued when the subject matter as a whole is directed toward the shape or structure of an article.
Registration of Utility Model Right
After the utility model right is registered, the utility model gazette is published.
The utility model right is effective for 10 years from the filing date.
Examination Report on the Validity of Registered Utility Model
Any person may file a request for examination report on the validity of registered utility model with the JPO. The examination report provides information on the novelty and inventive step of the registered utility model. Since the utility model right is registered without substantive examination regarding the novelty and inventive step, it is stipulated that the owner cannot enforce the utility model right against an infringer unless they send a warning to the infringer together with the examination report.
Furthermore, under the Utility Model Law, if a registered utility model is made invalid through an invalidation trial after the owner have enforced the utility model right against the infringer, the owner will be liable for damages given to the infringer by the enforcement unless they have enforced the right with due care.
In addition, after a utility model right is registered, a patent application based on the registered utility model may be filed within three years from the filing date of the utility model application. In this case, the patent application shall be deemed to be filed on the filing date of the utility model application. Also, the owner must abandon the utility model right on or after filing the patent application.
The patent application based on the registered utility model cannot be filed if the applicant or owner has already filed a request for examination report or if 30 days have elapsed since the receipt of a notice indicating that a request for examination report has been filed by another person.
For more information on the latest trends in IPR filings in Japan, please refer to this article.
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