Utility Models

Q1.　What are the differences between a patent and a utility model in Japan?

A1.　 The utility model system in Japan like in other countries having this system is for protecting minor innovations which are often called “small inventions”.

The distinct features of the utility model system are:

that a utility model registration is only for protecting “devices” related to shape or construction of articles or combination of articles (in other words, other inventions, such as methods, chemical compounds and pharmaceuticals, cannot be protected under utility model act);

that a utility model is registered without substantive examination; and

that a duration of a registered utility model is only 10 years from the filing date of the utility model application.

Differences between a patent and a utility model are summarized in the following Table.

	Patent	Utility Model
Subject of protection	Devices, methods, chemical compounds, etc.	Devices related to shape or construction of articles or combination of articles (Methods, chemical compounds, etc. cannot be protected)
Application documents required	Specification including Claims and Abstract; and, if any, Drawing(s) (optional)	Specification including Claims and Abstract; and Drawing(s) (not omissible)
Substantive examination	Request for Examination must be filed within 3 years from the filing date	No substantive examination; Registered when basic formal requirements are fulfilled
Time period required for registration	Possibly, several years from filing of the Request for Examination	About 4-6 months from the filing date
Duration of protection	20 years from the filing date (may be extended in some cases)	10 years from the filing date (non-extensible)
Enforcement of right	Enforceable based on granted patent	“Report of Utility Model Technical Opinion” is necessary for enforcing the utility model right

Q2.　What is a “Report of Utility Model Technical Opinion”?

A2.　 The Report of Utility Model Technical Opinion is an assessment report about the registrability (novelty, inventive step, etc.) of a utility model application or a registered utility model. This report is prepared by an Examiner of the Japan Patent Office upon request and payment of official fees. Anyone (that is, not only the Applicant of the utility model, but also any third party) can validly file a request for the Report.

As explained in item “A1” above, a utility model is registered without a substantive examination. In this connection, for an owner of a utility model to enforce the utility model right against an infringer, firstly, a warning accompanied by the Report of Utility Model Technical Opinion must be sent to the infringer. Therefore, the above-mentioned Report is necessary for instituting an infringement suit in Japan.

Q3.　Is it possible to convert a patent application into a utility model application?

A3.　 Yes. Conversion of a patent application into a utility model application is allowed if an appropriate step is taken within 3 months (for Applicants residing in Japan) or 4 months (for Applicants residing outside Japan) from the mailing date of the Decision for Rejection, or within nine years and six months from the filing date of the patent application, whichever expires earlier. Such a converted utility model application is entitled to the benefit of the filing date of the original patent application, and the original patent application is deemed to be withdrawn.

Q4.　Is it possible to convert a utility model application into a patent application?

A4.　 Yes. Conversion of a utility model application (or a registered utility model resulting therefrom) into a patent application is allowed if an appropriate step is taken within 3 years from the filing date of the utility model application. However, it should be noted that such conversion is not allowed after the applicant (or an assignee) has filed a request for the above-mentioned Report of Utility Model Technical Opinion, or after a 30-day period has passed from the date of a first official notice advising that a third party has filed a request for the Report of Utility Model Technical Opinion. Such a converted patent application is entitled to the benefit of the filing date of the original utility model application, and the original utility model application is deemed to be withdrawn. (Such a converted patent application cannot be converted back into a utility model application.)

Utility Models

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