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Patent & Utility Model

Procedure;

(1) Patent Application

An applicant is required to prepare in a prescribed manner and submit to the JPO an application including claim(s), specification, an abstract, and if necessary, drawing(s). An applicant can also submit an application including documents written in English. In this case, the applicant must submit a Japanese translation of the document in English within a year and two months from the date of filing of the patent (priority date).

(2) Formality Examination

An application document submitted to the JPO will be examined to see whether it fulfills formal requirements.

(3) Publication of Unexamined Application

The JPO will publish the content of application after a year and six months from the date of filing of the application.

(4) Request for Examination

An examination is carried out when an applicant files a request for substantive examination within three years from the date of filing of the application.

(5) Substantive Examination

An examiner examines whether an application fulfills requirements such as novelty and inventive step, and whether or not there are any reasons for refusal.

(6) Notification of Reasons for Refusal

If the examiner finds reasons for refusal, a notification of reasons for refusal will be sent to the applicant.

(7) Submission of Written Argument/Amendment

An applicant who has received the notification of reasons for refusal will be given an opportunity to submit a written argument, or to submit an amendment to overcome the reasons for refusal if the applicant judges that the examiner's judgment is appropriate.

(8) Decision to grant a Patent

If no reasons for refusal have been found by the examiner, or if the reasons for refusal have been eliminated, the examiner will grant a patent.

(9) Decision of Refusal

If the reasons for refusal cannot be eliminated by the written argument or amendment, a decision of refusal will be made.

(10) Appeal against Decision of Refusal

If the applicant is dissatisfied with the decision of refusal, the applicant can appeal against the decision of refusal. A collegial body of examiner will examine whether a patent should be granted to the application or not.

(11) Pretrial Examination

If the applicant makes an amendment to specification etc. at the same time as the appeal for a trial, the application is reexamined by the examiner before the trial. If the reasons for refusal cannot be eliminated, an examination will be carried out by a collegial body of examiners.

(12) Appeal Decision to Grant a Patent

If no reasons for refusal have been found as a result of the examination by the collegial body of the examiners, the collegial body makes a decision to grant a patent.

(13) Appeal Decision of Refusal

If it is judged that the appeal has no grounds as a result of the examination by the collegial body of the examiners, the collegial body makes a decision to reject the appeal and maintain the original decision (decision of refusal).

(14) Suit against Appeal Decision

An applicant who is dissatisfied with the appeal decision of refusal can appeal to the Intellectual Property High Court. If it is judged that the appeal is reasonable, the Intellectual Property High Court makes a decision to cancel the appeal decision of refusal, and the JPO starts an examination. If it is judged that the appeal has no grounds, the Intellectual Property High Court makes a decision to reject the appeal and maintain the appeal decision of refusal.

(15) Patent Fee Payment

The applicant is required to pay patent fee for the first three years after the decision to grant a patent or after the appeal decision to grant a patent.

(16) Registration and Issuance of Certificate

After the patent fee payment, a patent number is given to the invention, and a patent right will come into effect as it is entered in the Patent Register. In principle, the duration of a patent right is twenty years from the date of filing of the application.
In addition, a certificate will be sent to the applicant.

(17) Publication of Patent Gazette

A patent gazette which has the contents of the patent right will be published.

Annuity fees must be paid to the Japan Patent Office (JPO) for the maintenance of the design right.

Other;

Accelerated Examination

Even if an applicant has filed a request for examination, it takes time for a substantive examination to start. In addition, even if an applicant has made appeal against decision of refusal, it takes time for examination to start.

Accelerated Examination System

The use of the accelerated examination system makes it possible to shorten time required for examination as shown in the following table.

Super Accelerated Examination System

The JPO started a pilot program of the super accelerated examination system on October 2008.
Average time required for examination is approximately 20 days from the request for the super accelerated examination.
From October 1, 2009, the Super Accelerated Examination System will enlarge its target to Japanese National Phase Applications based on PCT international applications. (In this case, due to the internal procedures of the JPO, the average period for the issuance of the first examination result will be approximately two months.)

Interview Examination

Since an applicant (attorney) can explain technical contents to an examiner, examination is carried out precisely, and therefore it can be expected that efficiency of examination be improved. In addition, the applicant can directly confirm an opinion of the examiner who has written the reasons for refusal.

Flowchart (From application to establishment of right)

Utility Model Application

Contrary to patent, drawings are necessary in the case of a utility model application.
The registration fee must be paid at the time of application (includes 1st to 3rd year annuities).

Non-substantive Examination System

For utility models, a substantial examination is not conducted. For that reason, it is possible to obtain the protective rights soon.
Only the following is examined with regard to fulfilling formality and basic requirements:
① The invention falls under the subject of protection
② The invention does not go against public order and morality
③ The application documents follow the provided format and fulfill the requirement of unity of invention
④ The application documents include the necessary items and are not particularly unclear.

When exercising your right…

In the event that the utility model right owner sends an infringement warning to the suspected infringer, a technical evaluation of the utility model must be shown. Since utility model applications do not undergo a substantial examination, it is necessary to judge whether the parties concerned have a valid right. However, since judging validity isn't simple, a technical evaluation of the utility model can be sought from the Japan Patent Office as an objective material. The scope of the technical evaluation of utility models is limited to a fixed range. (Validity Search) Responsibility and duty of care of utility model right owners (Article 29(3) of the Japan Utility Model Act)
After the exercise of rights, in the case that the right of the registered utility model was invalidated and if it hasn't been established that the right owner had appropriately fulfilled his/her duty of care, the right owner will have to compensate the other party for the damages they incurred.

Flowchart (From application to establishment of right, Utility Model)