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Utility Model Law in Japan
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)
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