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Home > FAQs > Utility Model

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Utility Model

 7-1. What is a utility model?

(i) Subject of protection under the Utility Model Act

The subject of protection of the Utility Model Act (Articles 2-3) is a device that is related to the shape or structure of an article or combination of articles, industrially applicable, and characterized by creative technological concepts based on natural laws and rules.

(ii) Difference between a utility model and a patent

Although the patent system is designed to protect an invention which involves highly advanced and sophisticated technologies, the utility model system is, on the other hand, designed to protect a device related to the shape or construction of articles or combination of articles. The words "invention" (i.e., reflecting "high creativity") and "device" (i.e., reflecting "creativity") are used for ideas involving different levels of creativity.

Since the Utility Model Act is designed to protect only "devices" relating to the shape or construction of articles or combination of articles, a method, such as a manufacturing process, is not protected under the Utility Model Act.

The process for granting a patent right differs from that for granting a utility model right. In the patent system, an examiner performs a substantive examination for a patent application upon receiving a "request for examination," which has to be submitted by the patent applicant or any person other than the applicant within three years of the filing date of the patent application. On the other hand, a utility model is registered without a substantive examination as long as it meets the basic requirements provided by Article 6-2 of the Utility Model Act.

For the "basic requirements," please refer to Part X: UTILITY MODEL, Chapter 2 Basic Requirements for Utility Model Registration of the Examination Guidelines for Patent and Utility Model in Japan at the following URL:

http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e.htm

(iii) Duration of a utility model right

The period of a utility model right is ten years from the date of filing of the utility model application. The period may not be extended.

(iv) Outline of procedures for obtaining a utility model right

An outline of the procedures for registration of a utility model is displayed at the following URL:

http://www.jpo.go.jp/tetuzuki_e/t_gaiyo_e/model.htm

 7-2. How is a procedures for obtaining a utility model right?

An outline of the procedures for registration of a utility model is displayed at the following URL:

http://www.jpo.go.jp/tetuzuki_e/t_gaiyo_e/model.htm

 7-3. What should I know before I file a utility model application?

(i) First of all, you should know the "First to File" principle.

A utility model may be registered without a substantive examination as long as the utility model application meets both the basic and formal requirements. In addition, according to Article 7 of the Utility Model Act, when two or more applications are filed for a utility model on different dates, only the applicant who filed the application first will be entitled to register that utility model. This is called the "First to File" principle. This means that if any other applicants file applications for the same utility model after the first applicant has applied, those later applications will be refused.

If anybody else files an application for the same device as your device on an earlier date than you file an application for your device, your utility model registration can be invalidated (Article 37, Utility Model Act). Therefore, if you intend to protect your device as a utility model registration, you must pay attention to the principle.

(ii) Second, make sure that you do not publish or disclose your utility model before you file an application.

You are advised not to publish or disclose your utility model before you file your application to register your utility model. Once you disclose your device to the public, your device will be deemed to have lost its novelty and cannot be registered. (This is according to Article 3 of the Utility Model Act.)

In Japan, any utility model that has been disclosed before an application has been filed to register that utility model will basically not be able to be registered. However, Article 30 of the Patent Act, which also applies to utility models, makes an exception to this rule. When the utility model was disclosed due to certain circumstances and an application to register it is filed within six months from the date on which the utility model was disclosed; the utility model will not have lost its novelty or inventive step due to its having been disclosed. (Based on Article 11 of the Utility Model Act, the same provision stipulated in Article 30 of the Patent Act also applies to applications filed to register utility models.)

See FAQ 1-1: "Should I search for prior art before applying for a Patent?"

 7-4. Can I obtain both a patent right and a utility model right for the same invention?

It is legally impossible to obtain both a patent right and a utility model right for the same invention. If a patent application and a utility model application for the same invention are filed on different dates, then the following possibilities exist: (1) if the patent application was filed on an earlier date than the utility model application, a patent may be granted for the invention or (2) if the utility model application was filed on an earlier date than the patent application, a utility model registration may be granted for the invention (Article 39(3) of Patent Act and Article 7(3) of Utility Model). If a patent application and a utility model application for the same invention are filed on the same date, then you can obtain only either of a patent right or a utility model registration but not both (Article 39(4) of Patent Act and Article 7(7) of Utility Model).

 7-5. Can I convert a utility model application into a patent application?

A utility model application may be converted into a patent application within three years of the filing date of the utility model application. The patent application resulting from the conversion of a utility model application is deemed to have been filed on the filing date of the original utility model application with some exceptions. In addition, the original utility model application is deemed to have been withdrawn (Article 46 of Patent Act).

Moreover, even after registration of a utility model, the holder(s) of the utility model right can file a patent application based on the utility model right unless the patent application is submitted at a time provided by Article 46-2 of the Patent Act. A patent application based on a utility model right is deemed to have been filed on the same day as the filing date of the original utility model application with some exceptions. Moreover, when you apply for a patent based on your utility model right, you have to renounce your utility model right (Article 46-2 of Patent Act).

Meanwhile, please note that you cannot obtain a patent and lose your utility model right if the patent application based on your utility model right does not eventually meet the prescribed formal requirements after a notification to request you to comply with the requirements within the specified period is sent by our Office.

 7-6. What is a Report of Utility Model Technical Opinion ?

According to Article 16 of the Utility Model Act, "the owner of a utility model shall have an exclusive right to commercially work the registered model", in addition to having the right to demand an injunction, compensation for damage, and/or compensation for unfair profits gained by any persons who infringe such right.

The application you file to register your utility model will be registered without the need to undergo any substantive examination, as long as your utility model application meets the formal and basic requirements. In other words, this means that your utility model will be registered even if it does not meet the particular requirements for your specific utility model to be registered, so you must carefully check the details regarding this point.

As a result, the validity of a utility model right is actually uncertain because owners of utility models, who plan to exercise their rights, need to first verify the validity. If they do not, unforeseen conflicts with other persons over rights might arise, as well as the need to pay compensation for damage.

To avoid such a situation, anyone can request a "Report of Utility Model Technical Opinion". You can exercise your utility model right only after giving warning to the suspected infringer, presenting the report to him/her. The report contains an expert opinion on aspects such as the novelty and inventive step of the utility model.

A Report of Utility Model Technical Opinion is an assessment report based on the result of a prior art search conducted by an examiner at the JPO on either the registrability (novelty, inventive step, etc.) of a utility model application that has been filed on a utility model that has already been registered.

After a utility model application is filed, not only the applicant but also other persons can request a certified copy of the Report of Utility Model Technical Opinion, even after the right has been extinguished.