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Q26. Outlines of Utility Model System in Japan

Q26. Outlines of Utility Model System in Japan
 Explain outlines of the utility model system in Japan.

A26.
(1) Targets of Protection
 Targets of protection, called “a device”, by the Utility Model Law are limited to technical ideas relating to the shape, structure or combination of an article including articles and immovable properties, such as buildings, bridges, and plants. In other hands, materials themselves (e.g.: medicines, chemical compounds, glasses and alloys etc.), and methods are not the targets of protection.
(2) Novelty
 Similar to the patent system, the Utility Model Law establishes three cases for novelty-breaking: publicly-known; publicly-worked; and publication in Japan or other countries before a filing date of an application. Note that the novelty breaking cases are not limited to be domestic.
(3) Inventive Step
 While the patent system requires an invention not to be easily obtained by a person skilled in the art (Art.29(2) of the Patent Law), the utility model system requires a device not to be very easily obtained by a person skilled in the art (Art.3(2) of the Utility Model Law). It seems that the inventive step of the invention is higher than that of the device. However, the inventive steps of the patent system and the utility model system are treated as to be equal in a technical opinion (see (9) below) issued by the JPO, substantially there exists no difference between them.
(4) Procedures for application
 All the utility model applications should be accompanied by drawings (Art.5(2) of the Utility Model Law), because an object of protection is limited to the device of an article. Further, the annual fee for each year from the first to the third year shall be paid in a lump sum, simultaneously with the filing of the utility model application.
(5) Fees
 Fees for a utility model application and registration are lower than fees for a patent application and registration.
(6) Examination
 A utility model right is granted only after the examination of formal and basic requirements except substantive requirements (e.g. novelty and inventive steps etc), so that a non-substantive examination system is adopted in the Utility Model Law. Therefore, if a utility model application satisfies the formal and basic requirements, the application will be registered. However, if it does not satisfy the substantive registration requirements, it shall be disputed in an appeal for invalidation (Art.37 of the Utility Model Law). It is noted that a utility model application will be registerable in about 4 months from the filing date, while a patent application will be registerable for in about 27 months from the date of request for examination (as of 2006).
(7) Amendment and Correction
 The applicant may file amendments only for one month from the filing date or a period specified by the Commissioner.
Further, the owner of a utility model right shall be entitled to one opportunity to correct the description, claim(s) for utility model registration or drawing(s) attached to the request, excluding the prescribed cases (Art.14-2(1) of the Utility Model Law).
However, only where correction has as its objective the cancellation of claim(s), the owner of a utility model right may correct the description, claim(s) for utility model registration or drawing(s) without limitation for the time or number of times, excluding after the notification of the conclusion of trial examination (Art.14-2(7) of the Utility Model Law).
(8) Term of right
 The term of the utility model right is 10 years from the filing date of the application (Art.15 of the Utility Model Law), while the term of patent right is 20 years from the filing date (Art.67 of the Patent Law).
(9) Exercise of right
 Basically, a utility model right is the same as a patent right in the exercise of right, but it is different from the patent right in that the utility model right may be exercised only after giving a warning in the form of a report of a technical opinion as to registrability of the utility model in order to avoid abuse of the right (Art.29-2 of the Utility Model Law).
However, where the owner of a utility model right has exercised their utility model right or given a warning to an infringer, and a trial decision that the utility model registration is to be invalidated has become conclusive, such owner shall be liable to indemnify any other party with respect to any damage caused to that party by the exercise of that right or by the giving of the warning (Art.29-3(1) of the Utility Model Law). The reason, therefore, is that the technical opinion is a kind of nonbinding comment of the Japan Patent Office.
Any person may make, to the Commissioner of the JPO, a request for a technical opinion (Art.12 of the Utility Model Law). The request may be made even after the expiration of the utility model right except when the registration has been invalidated in a utility model invalidation trial. It takes about six months from the date of request to get the technical opinion.