What is the target of protection by utility model registration?
See “(1) Subject of Protection” part of “Overview of Utility Model Registration”
Can we file a utility model application in a foreign language?
Unlike patent applications, only applications in Japanese are accepted for utility models. You must prepare a Japanese translation before filing a utility model application through the Paris route. You can file an international application under the PCT in any language. When entering to the Japanese national phase, you can submit a Japanese translation of the international application (i) within 30 months from the priority date, or (ii) 2 months from the national phase entry, whichever comes later.
What should an applicant consider when drafting claims?
Q1. Claim Format
Is one particular claim format, for example, European two-part form, Jepson, etc., affect a scope of protection in later stage, such as litigation? If yes, what format is advantageous/disadvantageous?
A1. No, claim format does not affect a scope of protection.
In some countries, a preamble in a two part form claim or a Jepson type claim is interpreted as a prior art. In Japan, every technical features in a claim, including a preamble and a body, are treated equally and a scope of protection is interpreted from whole written technical features in a claim. Therefore, there is no particular claim format which is advantageous/disadvantageous.
Q2. Multiple Dependency
Can a dependent claim depend on other multiple dependent claim?
A2. Yes. Multiple dependency on multiple dependency is admitted in Japan without additional governmental fee.
Q3. Dependent Claims
Will dependent claims be automatically determined to be invalid in a trial for invalidation if the independent claim is determined to be invalid?
A3. No. A trial for invalidation should be demanded for each claim whether independent or dependent, and dependent claims can be maintained if they do not have any reasons for invalidation themselves, even though the independent claim is determined to be invalid. So, it is recommendable to draft dependent claims if these dependent claims have any additional significant features.
Q4. Independent Claims
Is there any restriction for number of independent claims, such as one independent claim per one category?
A4. No. An application can involve any number of independent claims. Note that all the claims must fulfill a requirement of unity of invention.
When can a divisional application be filed?
An applicant can file a divisional application while an amendment of the description, claim(s) or drawing(s) is possible, i.e. one month from the filing date and during a period specified in an amendment order by the Commissioner (Utility Model Act Article 11, m.m. application of Patent Act Article 44).
Is it possible to convert a patent application to a utility model application?
A patent application may be converted to a utility model application and vice versa.
An applicant for a patent may convert his/her application (excluding those that are filed based on a utility model registration) into an application for a utility model registration; except after a lapse of (i) three months from the examiner’s decision for rejection; or (ii) nine years and six months from the filing date of the patent application (Utility Model Act Article 10 (1)).
A utility model application may also be converted into a patent application within three years from the filing date of the utility model application (Patent Act Article 46 (1)). The owner of a utility model right may file a patent application on the basis of their utility model registration, with time limitations (Patent Act Article 46-2). However, in such a case, the owner shall abandon the utility model right in order to avoid double registration.
Can a utility model right and a patent right on the same subject matter stand parallel?
No, double registration of a utility model right and a patent right is not admitted. Thus, filing a converted utility model application from a patent application causes withdrawal of the original patent application.
When can an amendment be filed?
A voluntary amendment can be filed within one month from the filing date (Utility Model Act Article 2-2 and Cabinet Order on Utility Model, Article 1). Any amendment of the description, claim(s) or drawing(s) shall be made within the scope of the matters described in the description, claim(s) or drawing(s) originally attached to the application (Utility Model Act Article 2-2, Paragraph 2).
Moreover, an amendment can be filed in response to an amendment order during a period specified by the Commissioner, to meet the basic requirements (Utility Model Act Article 6-2).
What are the conditions for exercising a utility model right?
A utility model right holder may not exercise his/her right against an Infringer,
unless he/she has given warning with the “Utility model technical opinion” issued by JPO (Utility Model Act Article 29-2). This provision is made to avoid abuse of utility model right, because a utility model is registered without substantive examination and might include some grounds for invalidation.
About “utility model technical opinion”, see the next Q.
What is a “utility model technical opinion”?
The technical opinion is a report on whether the registered utility model fulfills substantive requirements or not (Utility Model Act Article 12). Any person may make, to the Commissioner of the JPO, a request for a technical opinion (Paragraph 1).
The report gives each claim an evaluation, cited documents and reasoning of the evaluation, in relation with novelty, inventive step and first-to file rule
What kind of action can be taken against a utility model technical opinion issued by JPO?
There is no direct procedure to appeal against unfavorable evaluations.
However, the applicant can correct claim(s) within 2 months from the service of the utility model technical opinion, provided it is the first technical opinion and claims that has not been corrected before, or the applicant can cancel claim(s) which have unfavorable evaluations.
What is an invalidation trial of a utility model registration?
Grounds for invalidation trial procedures for a utility model registration are similar to those for a patent.
See “Trial for Patent Invalidation” of Patent Q&A.
Can the description, claim(s) or drawing(s) be corrected after registration?
Yes, but the opportunity is very limited.
The owner of a utility model right is entitled to one opportunity to correct the description, claim(s) or drawing(s), at any time except after a lapse of (i) 2 months from the service of the first utility model technical opinion, or (ii) the time period designated for submitting a written answer in a invalidation trial (Utility Model Act Article 14-2, Paragraph 1).
The purpose of the correction is limited to (i) restriction of the scope of claims; (ii) correction of errors; (iii) clarification of an ambiguous statement; and (iv) conversion of dependent claims to an independent claim format (The same Article, Paragraph 2).
Further, the owner of a utility model right may cancel claim(s) as many times as desired, at any time except in case the utility model right is challenged and after the notice of the conclusion of invalidation trial proceedings is issued (The same Article, Paragraph 7).
*Note: JPO uses the word “amendment” for amending description, claim(s), drawing(s)
etc. before registration, and the word “correction” after registration.