Utility Model System in Japan

1
Utility Model System in Japan
2005 AIPLA Spring MeetingJoint Committee
Meeting May 12, 2005

• Tomoya Kurokawa
• SOEI Patent and Law Firm
• Contact to kurokawa_at_soei-patent.co.jp

2
Topics

• Overview of the Utility Model System
• Differences from the patent system
• Conversion from / to Patent Amendment
• Usage and Statistics
• Advantage / Disadvantage
• Comparison with the patent protection

3
Overview of the Utility Model System

• Differences from the Patent system are mainly
• (1) Registerable subject matter
• (2) Examination Procedure
• (3) Protection period
• (4) Requirements to enforce the right

4
Registerable subject matter

• Patent System
• gtA technical idea using laws of nature
• Utility Model System
• gtA technical idea using laws of nature, and
• gtlimited to shape, structure of an article and/or
  a combination of articles
• Ex) method-gtNG, computer program-gtNG,
• chemical compound (including medicine)-gtNG

5
Examination procedure

• Patent system
• gtSubstantial examination
• Utility Model system
• gtNo Substantial examination
• gtFormality examination only
• -Is the claim to a shape, structure and/or a
  combination?
• -Does the application meet the unity of
  invention requirement?

6
Examination procedure Contd
-Registration fee must be paid. -Drawing(s) must
be filed. -2 months for amendments
Filing an application
-No substantial examination of novelty, inventive
step -Examined only for (1)shape etc. (2)unity
of invention
Examination of Specific conditions
Registration
-Not laid-open before registration -5 months in
average from filing
7
Protection period

• Patent system
• gt20 years from the filing date
• Utility Model system
• gt10 years from the filing date
• note) it was 6 years under the old law, but
  amended to 10 on April, 2005

8
Requirements to enforce the right

• Patent system
• gtno specific requirement
• Utility Model system
• gt A warning with a Technical Opinion on the
  Registrability of the Utility Model from the JPO
  must be sent to a potential infringer before
  enforcement
• gt Owner may be liable for compensation to the
  accused infringer for damage caused by the
  attempt to enforce the right if the registration
  is found invalid

9
Conversion to a patent application

• For applications filed before April 1, 2005
• Can be converted to a patent application for 3
  years following the filing date, but only before
  registration (5 months on average)
• (Problem) Conversion period is too short.
  Applicants cannot file a utility model
  application first and convert it to patent
  application according to changes in their
  business plan, etc.

10
Conversion to a patent applicationafter
registration

• For applications filed on or after April 1, 2005
• Can be converted to a patent application within 3
  years, even after registration, except for the
  following situations
• (1) A Technical Opinion has been requested by the
  owner.
• (2) After the expiration of the 30-day period for
  responding a notice that a third party has
  requested a Technical Opinion.
• (3) After the expiration of the period for
  responding to the Notice that a Demand for
  Invalidation has been filed.

11
Conversion from a patent application

• Can be converted from a patent application within
  9 years and 6 months from the filing date, or
  within 30 days of receiving a decision for
  rejection, whichever is earlier.

12
Allowable scope of amendmentsafter registration

• For applications filed before April 1, 2005
• Only a deletion of claim is allowed after
  registration.
• (Problem)
• 1)It is quite difficult to get an affirmative
  Technical Opinion from JPO without amendments.
• 2)Effective defense against a third party
  asserting invalidity is difficult.

13
Expansion of the allowable scope of amendment
after registration

• For applications filed on or after April 1, 2005
• In addition to deletion of claim (s), the
  following amendments are allowable after
  registration
• (1) Restriction of claim (s)
• (2) Correction of errors in the description
• (3) Clarification of ambiguous description
• NB) Addition of new matter is strictly prohibited.

14
Expansion of the allowable scope of amendment
after registration Contd

• For applications filed on or after April 1, 2005
• Amendments after registration cannot be made
• (1) After the expiration of the 2-months period
  for amendments following a Technical Opinion
• (2) After the expiration of the period for
  responding to the Notice that a Demand for
  Invalidation has been filed.
• Moreover, owner may offer amendments after
  registration only once.
• NB) Deletion of claim (s) can be done more than
  once and at any time

15
History of Patent Utility Model Usage
2003 Patents 413,092, Utility Models
8,155
16
Utility Model Filings 2003
Total
Non-Japanese
17
Stability
JPO Decisions in Trials for Invalidations
cf. Patent invalid - 128 / valid - 126 in 2003
18
Enforceability
High Court Decisions Infringed/ Not Infringed
cf. Patent Infringed - 7 / Not infringed - 23 in
2004
19
Advantage/disadvantageof Utility Model
Registration

• Advantages
• - Inexpensive
• - Quick
• Disadvantages
• - No English language application
• - Short protection period
• - Enforcement liability risk

20
Cost Comparison Official Fees - 5 claims
1 including annual fee for 3 years 2 for
normal applications (not for English language
applications) 3 A Technical Opinion is 47000yen

21
The end Thank you for your attention!