 |
 |
|
 |
|
|
 |
Guide to Utility Model Registration |
| (1) |
Preceding Tendency
Invention can be protected in two levels, i.e., patent and utility model. Utility model is considered "lower level invention" than patent.
There was a time when this utility-model system was neglected, in contrast to the patent system, that was highly regarded. For example, the government adopted an unexamined-registration system in which all the utility-model applications were accepted and registered without undergoing any examination; the Utility Model Law was revised to shorten the validity of owners' rights from ten years to four years. Under such a trend, it was even anticipated that the utility-model system might be abolished soon.
|
| (2) |
Improvement in Utility Value
The Utility Model Law was revised again on April 1, 2005, details of which are as shown below, in response to requests from industries.
As a result, restrictions on exercise of rights were eased, and thus the utility-model system has become more useful, particularly for articles with a short product life.
|
| (3) |
Major Improvements after Revision
| 1) |
Applicants are permitted to delete or correct claims.
Therefore, if your application is evaluated as "having been able to be devised very easily by using techniques already known to the public", there may still be a chance for the application to be allowed if you delete or correct some part of the descriptions. |
| 2) |
Patent term has been extended to "10 years from the filing date" (with certain restrictions). This means that owners can exercise their rights for a longer period than before. |
| 3) |
Utility-model applications and registrations can be converted to patent applications (with certain restrictions). Therefore, if you discover after filing an application that your article may have a longer product life than expected, you can convert it to a patent application to further extend the validity of your rights (for patents it is 20 years from the filing date). |
| 4) |
Examiners are required to explain the reasons for their technical evaluations during patent prosecution. This means that applicants are informed of what is acceptable and unacceptable with their applications and allows the Applicant to make revisions or corrections during prosecution so that the application can be allowed. |
| 5) |
The scope of authorized research agencies has been expanded. Now, private research agencies are permitted to provide services. This will lead to more competition among searchers and eventually will lead to improved reliability of the research services.
|
|
| (4) |
Comparison of Provisions before and after the Revision
|
| |
Before Revision |
After Revision |
| Validity |
6 years from filing date |
10 years from filing date |
| Conversion to Patent Application |
Not acceptable once registered
(acceptable period = approx. 6 months from application to registration) |
Acceptable even after registration
(with certain restrictions *1) |
| Correction |
Only deletion of claim-related descriptions is acceptable.
No restrictions on the time and the number of corrections.
|
Correction of claim-related descriptions is also acceptable.
(with certain restrictions *2) |
Registration Fee
(for 10 claims)
(for the first 3 years)
|
¥ 43,800 |
¥ 9,300
(* Government fee Only: our service fees not included) |
|
| *1. Restrictions (conditions) on conversion to a Patent application: |
| （1） |
Within 3 years from the filing date of the original Utility Model application; |
| （2） |
"Technical Opinion as to Registrability" for the original utility model application has not been requested by the applicant (Must be careful when requesting such a Technical Opinion.); |
| （3） |
Within 30 days from the date when you receive a notice that "Technical Opinion as to Registrability" is requested by a third party; |
| （4） |
Within the designated period to submit a written reply, when an Invalidation Trial is filed concerning the Utility Model registration; and, |
| （5） |
Request for substantive examination for the converted patent application should be made within 3 years from the filing date of the original utility model application. |
| *2. Restrictions on Correction: |
| （1） |
Correction can be made only within certain period after registration of the utility model application as follows:
i) Within 2 months from the mailing date of the first Report of "Technical Opinion as to Registrability"
ii) Within the designated period to submit a written reply, when an Invalidation Trial is filed concerning the Utility Model registration |
| （2） |
Correction is limited to; restriction of the scope of claims; correction of errors or incorrect descriptions; or, clarification of ambiguous statement. (Violation of these limitations are grounds for invalidation.) |
| （3） |
Correction can be made only one time. However, deletion of claims is allowed as many times as desired, anytime. |
| （4） |
Request for "Technical Opinion as to Registrability" can be filed again after Correction, if needed. |
For further information, please feel free to contact Yamaguchi & Associates. |
|
 |
|
|
