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.
When a dispute related to intellectual property rights arises and it is difficult to resolve the dispute by discussion between the parties to the dispute, such dispute may be resolved mainly by filing an action with a court or by means of an alternative dispute resolution (hereinafter referred to as “ADR”). An example of ADR is mediation. Parties to a dispute may have mediation proceedings related to intellectual property rights at the Japan Intellectual Property Arbitration Center (hereinafter referred to as “JIPAC”). JIPAC is a private ADR organization that has been operated jointly by the Japan Patent Attorneys Association and the Japan Federation of Bar Associations since April 1998. Its services include not only mediation services but also various other services related to intellectual property rights such as consultation, arbitration, JP domain name dispute resolution, the Center’s advisory opinion, the Center’s essential patent evaluation, advisory opinion on operability, and evaluation of the level of contribution of a patent to business. JIPAC is an ADR organization certified under the ADR Act (Certification No. 119). The JIPAC website (https://www.ip-adr.gr.jp/eng/) shows a detailed explanation of services provided, examples of dispute resolution cases and other matters.
The characteristics of mediations by JIPAC are (i) expertise, (ii) being closed to the public, (iii) neutrality and fairness, (iv) voluntariness, (v) flexibility and (vi) speediness.
(i) Characteristic 1: Expertise
The persons who may serve as mediators when an application for mediation is made (mediator candidates) consist of experienced attorneys-at-law, patent attorneys and academic experts. In JIPAC mediations, mediators exhibit their very high expertise and present a persuasive mediation proposal by forecasting the result of a lawsuit that may be filed if the dispute is not settled by mediation. Mediators are appointed by the Director of the Center of JIPAC, and the parties are also allowed to appoint the mediators whom they want to appoint if the parties agree on such appointment.
(ii) Characteristic 2: Being closed to the public
In the case of a lawsuit, court proceedings take place at an open court on the date for oral argument and the judgment and records thereof are generally disclosed to the public. On the other hand, mediation proceedings at JIPAC, including whether or not an application for mediation is made, are not disclosed to the public and the result of mediation proceedings is also not published. For this reason, a dispute may be resolved without the existence of such dispute being known to third parties.
(iii) Characteristic 3: Neutrality and fairness
JIPAC is an organization established jointly by the Japan Patent Attorneys Association and the Japan Federation of Bar Associations, and its neutrality and fairness are guaranteed. In addition, the Rules for Mediation Proceedings of JIPAC provide for the exclusion or challenge of mediators, and JIPAC always confirms that mediators have no interest in the relevant case before appointing the mediators.
(iv) Characteristic 4: Voluntariness
In mediations by JIPAC, the parties to a dispute can have advanced discussion with the mediators, who are third parties with abundant experience and knowledge. As a result, if the parties can find a point of compromise, they can reach a settlement. If the parties think there is no room for compromise, they can refuse to reach a settlement and terminate the mediation proceedings. Because of this voluntariness, mediation by JIPAC is considered to be the more sensible response to a dispute compared with simply continuing to ignore the other party’s demands, with a risk of being sued.
(v) Characteristic 5: Flexibility
Mediations by JIPAC are a purely voluntary method of dispute resolution by a private organization and therefore have the advantage of being flexible. For example, when a party makes a claim for the payment of money, the party is not always required to specify the amount in the application for mediation, and there is no problem with stating “we claim an appropriate compensation” or the like in the application. Unlike court settlements where the parties feel pressured from being subject to a judicial decision if they cannot reach an agreement, mediation by JIPAC is commenced only after the other party agrees to commence mediation proceedings. Therefore, mediation by JIPAC is flexible with regard to the progress of proceedings. In addition, mediations by JIPAC allow the parties to discontinue mediation proceedings partway along the process to return to voluntary negotiation, file an action, or take other options.
JIPAC also provides arbitration services (a dispute resolution system under which the parties to a dispute are assumed to agree in advance to appoint arbitrators, who are neutral third parties, to make a decision on the dispute and follow such decision) in addition to mediation services. For this reason, JIPAC may start with mediation proceedings and, if the parties in the medication proceedings reach an agreement to commence arbitration proceedings, move on to arbitration proceedings, thereby taking the proceedings successively in order to exploit the advantages of both mediation and arbitration proceedings. In this case, mediators may continue to serve as arbitrators, or new arbitrators may be appointed depending on the will of the parties.
(vi) Characteristic 6: Speediness
The average time period required to resolve a dispute through JIPAC mediation is 176 days (the median is 162 days) and the minimum number of days required for proceedings is 65, although it depends on the level of cooperation between the parties and the details of the case. When the parties want to resolve a dispute speedily, it is possible to perform examination in a concentrated manner in a shortened period of time. With respect to the dates for mediation proceedings, we expect that about three dates will be required for resolution and aim to complete the proceedings within six months from the first date of mediation proceedings, although it will differ depending on the nature of the case. Looking at past cases of dispute resolution, the average number of dates is 4 (the median is 4) and the minimum number of dates is 2. This indicates that the proceedings until the resolution of disputes proceeded almost as expected.
As stated above, mediations by JIPAC are characterized by their expertise, being closed to the public, flexibility, and speediness, and therefore can be an excellent means of dispute resolution when the parties have the intention to resolve the dispute by discussion and want to resolve the dispute soon or at a place closed to the public.
In addition, intellectual property-related mediations in court do not allow the parties to appoint the members of the Mediation Committee, but mediations by JIPAC allow the parties to appoint the mediators whom they want to appoint if the parties agree on such appointment. For example, the parties may appoint the same mediators as the mediators for a past mediation case or appoint attorneys-at-law or patent attorneys who are specialized in the relevant field. They may also appoint, for example, a former judge who was in charge of famous lawsuits in the past or an academic expert who has published many papers. The fact that the parties are allowed to appoint mediators whom they can trust is considered to be a strong point of JIPAC mediations.
As stated above, mediations by JIPAC have various advantages that lawsuits do not have.