| ■ |
Noticeable features under the present Utility Model
Law:
|
|
(1) |
What is protected under the
Utility Model Law is limited to a utility model or an article invention relating
to shape, structure or a combination of the shape and the structure of an
article. (No process or chemical substance including pharmaceutical products is
protected.) |
|
(2) |
The duration of a utility model right is
ten (10) years from the date of application. |
|
(3) |
Substantive examination is not effected,
except in the course of an invalidation trial. |
|
(4) |
A registrant must request an Official
Search Report on validity and must show it to possible infringers when he warns
an infringement of his utility model right. The registrant is allowed to
exercise his right only after warning accompanied with the Search Report.
|
|
(5) |
In case a plaintiff lost his utility
model registration due to a bound decision of an invalidation trial after he
warned or he exercised his utility model right against the Search Report on
validity, he must compensate defendant's damages caused by the warning or the
exercise of his utility model right. |
|
(6) |
A utility model right owner can file a
patent application on the basis of a utility model registration before
expiration of three (3) years from the date of filing of an application for the
utility model registration, with the proviso that he abandons his utility model
right, etc. (An applicant for a patent can convert his patent application into a
utility model application within thirty (30) days from the delivery of a first
decision to rejection or within nine (9) years and six (6) months from the date
of filing of his patent application.) |
| ■ |
Procedures from
application to registration: |
|
(1) |
Application: |
| Registration fees (at least
three (3) years' annuities) must be paid upon filing an application in addition
to application fee. |
|
(2) |
Examination: |
| Examination is effected only as
to whether the application is formally in order and whether the article
invention pertaining to the application satisfies fundamental requirements such
as not relating to a process or a chemical substance, not detrimental to public
order, good morals or public health, etc. |
|
(3) |
Publication: |
| Publication is made only after
the registration. After the registration, anyone can inspect application
documents of the registered case. |
|
(4) |
Limitation to
Amendment: |
| Before registration, an
amendment to the claims, specification, drawings and abstract can be made within
one (1) month from the date of application and within the matters described in
the originally filed claims, specification and drawings. No introduction of new
matters is allowed. After the registration, an amendment to the claims,
specification or drawings is allowed only one time. |
| ■ |
Remarks:
|
|
(1) |
The JPO now registers a utility
model within nearly four (4) months from the date of application and issues the
Search Report within nearly six (6) months in case it is requested upon filing
of a utility model application, or within nearly three (3) months from the date
of the request in case the Search Report is requested after a utility model
registration is made.. |
|
(2) |
In our opinion, the ten years'
protection is not always short for an article which can be considered to have a
relatively short life span in the market. In addition, since an article
invention pertaining to a utility model application will be registered within
nearly four months, such a quick registration is very advantageous to the
utility model right owner who intends to manufacture and sell the article
immediately after filing an application for a utility model registration.
|
|
(3) |
The validity of a utility model
registration is examined by an infringement court when a defendant insists as a
defense. In addition, any person including the defendant can file an
invalidation trial with the JPO to make the registration invalid. This system is
the same as one in the Patent Law. A utility model registration on an article
invention and a patent on an invention are competitive and the same examination
standard is equally applied to both the infringement action and the invalidation
trial. |
|
(4) |
Some of the present Official
fees are as follows: (JP\) |
|
|
An application for a utility model
registration
(application fee) |
14,000 |
A request for an Official Search Report
(a U.M. technical evaluation
report) |
42,000＋1,000×n
(n
= number of claim)
|
Annuities
(Registration fees) |
1st
to 3rd year |
2,100＋100×n
(each year) |
| 4th to 6th year |
6,100＋300×n (each year) |
| 7th to 10th year |
18,100＋900×n (each
year) |
|
| (UM2005) |
