- Utility Model Act
- Chapter I General Provisions
- Chapter II Utility Model Registration and Applications for a Utility Model Registration
- Chapter III Utility Model Technical Opinion
- Chapter IV Utility Model Rights
- Chapter V Trial
- Chapter VI Retrial and Litigation
- Chapter VII Special Provisions Concerning International Applications under the Patent Cooperation Treaty
- Chapter VIII Miscellaneous Provisions
- Chapter IX Penal Provisions
Utility Model Act
(Act No. 123 of April 13, 1959)
Chapter I General Provisions
(Purpose)
Article 1 The purpose of this Act is to encourage devices by promoting the protection and the utilization of devices relating to the shape or structure of an article or combination of articles, and thereby to contribute to the development of industry.
(Definitions)
Article 2 (1) "Device" in this Act means the creation of technical ideas utilizing the laws of nature.
(2) "Registered utility model" in this Act means a device for which a utility model registration has been granted.
(3) "Working" of a device in this Act means making, using, assigning, leasing, exporting, importing or offering for assignment or lease (including displaying for the purpose of assignment or lease, the same shall apply hereinafter) an article which embodies the device.
(Amendment procedures)
Article 2-2 (1) A person undertaking procedures relating to a utility model registration (hereinafter simply referred to as "procedures") including filing an application for a utility model registration and a request before the Patent Office may make amendments only while the case is pending; provided, however, that the person may not amend the description, scope of claims, drawing(s) or the abstract attached to the application, after the expiration of the time limit prescribed by the Cabinet Order from the filing date of the application for a utility model registration.
(2) Any amendment of the description, scope of claims or drawings under the main clause of paragraph (1) shall be made within the scope of the matters described in the description, scope of claims or drawing(s) originally attached to the application.
(3) Notwithstanding paragraph (1), the corrected description, scope of claims, drawing(s) or the abstract attached to the written request for correction under Article 14-2(1) may not be amended.
(4) The Commissioner of the Patent Office may order an amendment by the applicant, designating an adequate time limit, in the following cases:
(i) where the procedure does not comply with the requirements of Articles 7 (1) to (3) or Article 9 of the Patent Act (Act No. 121 of 1959) as applied mutatis mutandis pursuant to Article 2-5(2);
(ii) where the procedure does not comply with the formal requirements prescribed by this Act or an order thereunder;
(iii) where the fees relating to the procedure payable under Article 32(1) have not been paid; and
(iv) where the fees relating to the procedure payable under Article 54(1) or (ii) have not been paid.
(5) Any amendment, except in the case of the payment of registration fee or other fees, shall be submitted in writing.
(Dismissal of procedures)
Article 2-3 The Commissioner of the Patent Office may dismiss the procedures where a person ordered to make an amendment under Article 2-2(4), 6-2 or 14-3 fails to make such amendment within the designated time limit under the said provisions.
(Capacity of associations, etc. which are not juridical persons to undertake procedures)
Article 2-4 (1) An association or foundation which is not a juridical person but for which a representative or an administrator has been designated may, in its name:
(i) file a request for Utility Model Technical Opinion under Article 12(1);
(ii) file a request for a trial; and
(iii) file a request for a retrial against a final and binding decision in a trial.
(2) An association or foundation which is not a juridical person but for which a representative or an administrator has been designated may be named as a claimant in a request filed for a retrial against a final and binding decision in a trial.
(Mutatis mutandis application of Patent Act)
Article 2-5 (1) Articles 3 and 5 of the Patent Act shall apply mutatis mutandis to periods and dates provided for in this Act.
(2) Articles 7 to 9, 11 to 16 and 18-2 to 24 of the Patent Act shall apply mutatis mutandis to procedures.
(3) Article 25 of the Patent Act shall apply mutatis mutandis to utility model rights and other rights relating to utility model registrations.
(4) Article 26 of the Patent Act shall apply mutatis mutandis to utility model registrations.
Chapter II Utility Model Registration and Applications for a Utility Model Registration
(Conditions for Utility Model Registration)
Article 3 (1) A creator of a device that relates to the shape or structure of an article or combination of articles and is industrially applicable may be entitled to obtain a utility model registration for said device, except when the following applies:
(i) the device was publicly known in Japan or a foreign country, prior to the filing of the application for a utility model registration therefor;
(ii) the device was publicly worked in Japan or a foreign country, prior to the filing of the application for a utility model registration therefor; or
(iii) the device was described in a distributed publication, or a device that was made publicly available through an electric telecommunication line in Japan or a foreign country, prior to the filing of the application for a utility model registration therefor.
(2) Where, prior to the filing of the application for a utility model registration, a person ordinarily skilled in the art of the device would have been exceedingly easy to create the device based on a device prescribed in any of the items of the preceding paragraph, a utility model registration shall not be granted for such a device notwithstanding the preceding paragraph.
Article 3-2 Where a device claimed in an application for a utility model registration is identical with a device or invention (excluding a device created or an invention made by the creator of the device claimed in the said application for a utility model registration) disclosed in the description, scope of claims or drawings (in the case of the written application in foreign language under Article 36-2(2) of the Patent Act, the document in foreign language as provided in Article 36-2(1)) originally attached to the written application of another application for a utility model registration or for a patent which has been filed prior to the date of filing of the said application for a utility model registration and published after the filing of the said application for a utility model registration in the utility model bulletin under Article 14(3) (hereinafter the "Utility Model Bulletin") or in the patent bulletin under Article 66(3) of the Patent Act describing matters provided for in each of the paragraphs of the respective Article or for which the publication of the patent application has been effected, a utility model registration shall not be granted for such a device notwithstanding paragraph (1) of the preceding Article; provided, however, that this shall not apply where, at the time of the filing of the said application for a utility model registration, the applicant of the said application and the applicant of the other application for a utility model registration or for a patent are the same person.
(Unregistrable devices)
Article 4 Notwithstanding Article 3(1), any device that is liable to injure public order, morality or public health shall not be granted a utility model registration.
(Applications for a utility model registration)
Article 5 (1) A person requesting the grant of a utility model registration shall submit an application to the Commissioner of the Patent Office stating the following:
(i) the name and domicile or residence of the applicant(s) for utility model registration; and
(ii) the name and domicile or residence of the creator(s) of the device.
(2) The description, scope of claims, drawing(s) and abstract shall be attached to the application.
(3) The description as provided in the preceding paragraph shall state the following:
(i) the title of the device;
(ii) a brief explanation of the drawing(s) ; and
(iii) a detailed explanation of the device.
(4) The detailed explanation of the device as provided in item (iii) of the preceding paragraph shall be stated clearly and sufficiently so as to enable a person ordinarily skilled in the art to which the device pertains to work the device, in accordance with the relevant Ordinance of the Ministry of Economy, Trade and Industry,.
(5) The scope of claims as provided in paragraph (2) shall state a claim or claims and state for each claim all matters necessary to specify the device for which the applicant requests the grant of a utility model registration. In such case, a device specified by a statement in one claim may be the same device specified by a statement in another claim.
(6) The statement of the scope of claims as provided in paragraph (2) shall comply with each of the following items:
(i) the device for which a utility model registration is sought is stated in the detailed explanation of the device;
(ii) the device for which a utility model is sought is clear;
(iii) the statement for each claim is concise; and
(iv) the statement is composed in accordance with the relevant Ordinance of the Ministry of Economy, Trade and Industry.
(7) The abstract as provided in paragraph (2) shall state a summary of the device disclosed in the description, scope of claims or drawing(s), and any other matters as provided by the relevant Ordinance of the Ministry of Economy, Trade and Industry.
Article 6 Two or more devices may be the subject of a single application for a utility model registration in the same application provided that these devices are of a group of devices recognized as fulfilling the requirements of unity of device based on their technical relationship designated in the relevant Ordinance of the Ministry of Economy, Trade and Industry.
(Order to amend)
Article 6-2 The Commissioner of the Patent Office may order the applicant to amend the description, scope of claims or drawing(s) attached to the application, designating an adequate time limit, in any of the following items:
(i) where the device claimed in the application for a utility model registration does not pertain to the shape or structure of an article or combination of articles;
(ii) where the device claimed in the application for a utility model registration is not registrable under Article 4;
(iii) where the application for a utility model registration does not satisfy the requirement prescribed in Article 5(6)(iv) or in the preceding Article; or
(iv) where the description, scope of claims or drawing(s) attached to the application does not state all of the necessary matters or is extremely unclear.
(Prior application)
Article 7 (1) Where two or more applications for a utility model registration claiming identical devices have been filed on different dates, only the applicant who filed the application on the earliest date shall be entitled to obtain a utility model registration for the device claimed.
(2) Where two or more applications for a utility model registration claiming identical devices have been filed on the same date, none of the applicants shall be entitled to obtain a utility model registration for the device claimed.
(3) Where a device and an invention claimed in applications for a utility model registration and for a patent are identical and the applications for a utility model registration and for a patent are filed on different dates, the applicant for a utility model registration may obtain a utility model registration for the device claimed therein, only if the application for a utility model registration is filed prior to the application for a patent.
(4) Where an application for a utility model registration or a patent has been waived, withdrawn or dismissed, the application for a utility model registration or a patent shall, for the purpose of paragraphs (1) to (4), be deemed never to have been filed.
(5) Where the examiner's decision or trial decision to the effect that a patent application is to be refused has become final and binding, the patent application shall, for the purpose of paragraph (3), be deemed never to have been filed; provided, however, that this shall not apply to the case where the examiner's decision or trial decision to the effect that the patent application is to be refused has become final and binding on the basis that the latter sentence of Article 39(2) of the Patent Act is applicable to the said patent application.
(6) An application for a utility model registration or a patent filed by a person who is neither the creator nor inventor nor the successor in title to the right to obtain a utility model registration or a patent shall, for the purpose of application of paragraphs (1) to (3), be deemed to be neither an application for a utility model registration nor a patent application.
(7) Where no agreement is reached by consultations made under Article 39(4) of the Patent Act or such consultations are unable to be held, the applicant for a utility model registration shall not be entitled to obtain a utility model registration for the device claimed.
(Priority claim based on an application for a utility registration, etc.)
Article 8 (1) A person requesting the grant of a utility model registration may make a priority claim for a device claimed in the application for a utility model registration, based on a device disclosed in the description or scope of claims for a utility model registration or patent, or drawings (in the case where the earlier application was a written application in foreign language, the document in foreign language) originally attached to the application of an earlier application filed for a utility model registration or patent which the said person has the right to obtain (hereinafter an "Earlier Application"), except in the following cases:
(i) where the said application for a utility model registration is not filed within one year from the date of the filing of the Earlier Application;
(ii) where the Earlier Application is a new divisional application for a utility model registration extracted from an application for a utility model registration under Article 44(1) of the Patent Act as applied mutatis mutandis under Article 11(1), an application for a utility model registration converted from an application for a utility model registration under Article 10(1) or (2), or a new divisional patent application extracted from a patent application under Article 44(1) of the Patent Act, a patent application converted from a patent application under Article 46(1) or 46(2) of the Patent Act or a patent application based on a utility model registration under Article 46-2(1) of the Patent Act;
(iii) where at the time of filing said application for a utility model registration, the Earlier Application had been waived, withdrawn or dismissed;
(iv) where, at the time of filing said application for a utility model registration, the examiner's decision or the trial decision on the earlier application had become final and binding; and
(v) where, at the time of filing said application for a utility model registration, the registration establishing a utility model right under Article 14(2) with respect to the Earlier Application had been effected.
(2) Among devices claimed in an application for a utility model registration containing a priority claim under paragraph (1), for those that are disclosed in the description, scope of claims for a utility model registration or patent or drawings (in the case where the Earlier Application was a written application in foreign language prescribed in Article 36-2(2) of the Patent Act, the document in foreign language prescribed in paragraph (1) of the said Article) originally attached to the application of the Earlier Application on which the priority claim is based (in the case where the Earlier Application contains a priority claim under the preceding paragraph or Article 41(1) of the Patent Act, or Article 43(1) or 43-2(1) or (2) of the Patent Act (including their mutatis mutandis application under Article 11(1) of this Act), excluding any device disclosed in any documents (limited to those equivalent to the description, scope of claims for a utility model registration or patent or drawings) submitted at the time of the filing of the application on which the priority claim in the Earlier Application is based), the said application for a utility model registration shall be deemed to have been filed at the time when the Earlier Application was filed, in the case of the application of Article 3, the main clause of Article 3-2, Article 7(1) to (3), Article 30(1) to (3) of the Patent Act as applied mutatis mutandis under Article 11(1), Article 17, Articles 69(2)(ii), 72, 79, 81, 82(1) of the Patent Act as applied mutatis mutandis under Article 26, Articles 39(3) and (4) and 72 of the Patent Act, Articles 26, 31(2) and 32(2) of the Design Act (Act No. 125 of 1959), Article 29 of the Trademark Act (Act No. 127 of 1959) and Articles 33-2(3) and 33-3(3) (including their mutatis mutandis application under Article 68(3) of the Trademark Act ) of the Trademark Act.
(3) Among devices disclosed in the description, scope of claims or drawings originally attached to the application in an application for a utility model registration containing a priority claim under paragraph (1), for those that are disclosed in the description, scope of claims for a utility model registration or patent or drawings (in the case where the Earlier Application was a written application in foreign language prescribed in Article 36-2(2) of the Patent Act, the document in foreign language prescribed in paragraph (1) of the said Article) originally attached to the application of the Earlier Application on which the priority claim is based (in the case where the Earlier Application contains a priority claim under the preceding paragraph or Article 41(1) of the Patent Act, or Article 43(1) or 43-2(1) or (2) of the Patent Act (including their mutatis mutandis application under Article 11(1) of this Act), excluding any device disclosed in any documents (limited to those equivalent to the description, scope of claims for a utility model registration or patent or drawings) submitted at the time of the filing of the application on which the priority claim in the Earlier Application is based), the Utility Model Bulletin pertaining to the Earlier Application or the laying open of the Earlier Application shall be deemed to have been issued or effected at the time when the Utility Model Bulletin pertaining to the said application for a utility model registration was issued, and the main clause of Article 3-2 of the Utility Model Act or Article 29-2of the Patent Act shall apply.
(4) A person requesting to make a priority claim under paragraph (1) shall submit to the Commissioner of the Patent Office a document stating thereof and the indication of the Earlier Application along with the application for a utility model registration.
(Withdrawal, etc. of Earlier Application)
Article 9 (1) An Earlier Application on which a priority claim is based under Article 8(1) shall be deemed to have been withdrawn when one year and three months has lapsed from the filing date of said Earlier Application; provided, however, that this shall not apply to the case where an Earlier Application has been waived, withdrawn or dismissed, where the examiner's decision or trial decision on an Earlier Application has become final and binding, where the registration establishing a Utility Model Right under Article 14(2) with respect to an Earlier Application has been effected or where all priority claims based on an Earlier Application have been withdrawn.
(2) The applicant of an application for a utility model registration containing a priority claim under Article 8(1) may not withdraw the priority claim after a period of one year and three months has passed from the filing date of an Earlier Application.
(3) Where the application for a utility model registration containing a priority claim under Article 8(1) is withdrawn within one year and three months from the filing date of an Earlier Application, the said priority claim shall be deemed withdrawn simultaneously.
(Conversion of application)
Article 10 (1) An applicant for a patent may convert his/her application (excluding patent applications filed based on a utility model registration under Article 46-2(1) of the Patent Act (including patent applications deemed to have been filed at the time of filing of the original patent application under Article 44(2) of the said Act (including its mutatis mutandis application under Article 46(5) of the said Act))) into an application for a utility model registration; provided, however, that this shall not apply after the expiration of 30 days from the date the certified copy of the examiner's initial decision to the effect that the patent application is to be refused has been served or after the expiration of nine years and six months from the date of filing of the patent application.
(2) An applicant for a design registration may convert his/her application (excluding applications for a design registration deemed, under Article 10-2(2) of the Design Act as applied mutatis mutandis under Article 13(5) of the Design Act, to have been filed at the time of the original patent application which was filed based on an application for a utility model registration under Article 46-2(1) of the Patent Act (including applications for a design registration deemed to have been filed at the time of filing of the original application for a design registration under Article 10-2(2) of the Design Act)) into an application for a utility model registration; provided, however, that this shall not apply after the expiration of 30 days from the date the certified copy of the examiner's initial decision to the effect that the application for a design registration is to be refused has been served or after the expiration of nine years and six months from the date of filing of the application for a design registration.
(3) Where an application is converted under the preceding two paragraphs, the application for a utility model registration shall be deemed to have been filed at the time of filing of the patent application or the application for a design registration; provided, however, that this shall not apply for the purposes of application of Article 3-2 of this Act or Article 29-2 of the Patent Act where the application for a utility model registration falls under another application for a utility model registration prescribed in Article 3-2 of this Act or an application for a utility model registration prescribed in Article 29-2 of the Patent Act, and Articles 30(4) and 43 (1) of the Patent Act (including mutatis mutandis application of Article 43(1) of the said Act under Article 43-2(3) of the said Act as applied mutatis mutandis under the Article 11(1)).
(4) Where an application is converted under paragraph (1) or (2), for the purpose of application of Article 43(2) of the Patent Act as applied mutatis mutandis under Article 11(1) (including its mutatis mutandis application under Article 43-2(3) of the Patent Act as applied mutatis mutandis under Article 11(1)), "within one year and four months from the earliest of the following dates" in Article 43(2) shall read "within one year and four months from the earliest of the following dates or three months from the date of filing of the application of a utility model registration arising from the conversion of an application under Article 10(1) or (2) of the Utility Model Act, whichever is later."
(5) Where an application is converted under paragraph (1) or (2), the patent application or the application for design registration shall be deemed to have been withdrawn.
(6) Where the period as provided in Article 121(1) of the Patent Act is extended under Article 4 of the said Act, the 30-day period as provided in the proviso to paragraph (1) shall be deemed to have been extended only for that period as extended.
(7) Where the period as provided in Article 46(1) of the Design Act is extended under Article 4 of the Patent Act as applied mutatis mutandis under Article 68(1) of the Design Act, the 30-day period as provided in the proviso to paragraph (2) shall be deemed to have been extended only for that period as extended.
(8) Where a conversion of an application is made under paragraph (1), any statements or documents which have been submitted in relation to the original patent application and are required to be submitted in relation to the new application for a utility model registration under Article 8(4) of this Act or Article 30(4) or 43(1) and (2) of the Patent Act as applied mutatis mutandis under Article 11(1) (including mutatis mutandis application of Article 43(1) and (2) of the Patent Act under Article 43-2(3) of the said Act as applied mutatis mutandis under the next Article (1)) shall be deemed to have been submitted to the Commissioner of the Patent Office along with the new application for a utility model application.
(9) The preceding paragraph shall apply mutatis mutandis to a conversion of an application under paragraph (2).