(Application for patent based on utility model registration)

46bis(46-2). ---- (1) The owner of a utility model right may file an application for a patent on the basis on his utility model registration as provided for in the Ordinance of the Ministry of Economy, Trade and Industry, except in the following cases. In such a case, the owner shall abandon his utility model right:

(i) when three years have expired from the filing date of the utility model application under the utility model registration;

(ii) when a request was made for a technical opinion referred to in Section 12 (1) of the Utility Model Law (hereinafter simple referred to as “a technical opinion as to registrability of a utility model” in the following paragraph) by an applicant for an utility model registration or an owner of a utility model right with respect to the utility model application under the utility model registration or the utility model registration;

(iii) thirty days have expired from the date when the first notification was received under Section 13(2) of the Utility Model Law with respect to the request for a technical opinion as to registrability of a utility model made by a person other than an applicant for a utility model registration or an owner of a utility model right with respect to the utility model application under the utility model registration or the utility model registration;

(iv) when the period first designated under Section 39(1) of the Utility Model Law expired for the invalidation trial which was demanded for the utility model registration of the utility model registration under Section 37(1) of the said Law.

(2) An application for a patent under preceding subsection shall be deemed to have been filed at the time when the application for utility model registration was filed, to the extent that the features disclosed in the description, claim(s) or drawing(s) attached to the request of the application for patent remains within the scope of the features disclosed in the description, claim(s) or drawing(s) attached to the request of the application for the utility model registration on which the patent application is based. However, this provision shall not apply where the patent application is either another application for a patent as referred to in Section 29 bis(29-2) of this Law or an application for patent as referred to in Section 3 bis(3-2) of the Utility Model Law for the purposes of those Sections and of Sections 30(4), 36 bis(36-2)(2), 41(4), 43(1)(including its application under Section 43 bis(43-2)(3)) and 48 ter(48-3)(2).

(3) Where, due to reasons outside his control, a person is unable to file an application for a patent under the subsection (1) before the expiration of the time limit prescribed paragraph (iii) of the said subsection, he may, notwithstanding the said paragraph, file the application for a patent within 14 days (where he is a resident abroad, within two months) from the date when the reasons ceased to be applicable but not later than six months, following the expiration of the said time limit.

(4) Where there is an exclusive licensee, a pledgee or non-exclusive licensee under Section 35(1) of this Law as applied under Section 11(3) of the Utility Model Law, Section 77(4) of this Law as applied under Section 18(3) of the Utility Model Law or Section 19(1) of the Utility Model Law, the owner of a utility model right may file an application for a patent only with the consent of such person.

(5) Section 44(3) and (4) shall apply mutatis mutandis to the application for a patent under subsection (1).

(Correction of description, claim(s) for utility model registration or drawing(s))

14bis(14-2). ---- (1) The owner of a utility model right shall be entitled to one opportunity to correct the description, claim(s) for utility model registration or drawing(s) attached to the request, excluding the following cases:

(i) when two months have expired from the date when the first report of a technical opinion as to registrability of the Utility Model (Jitsuyoshinan Gijutsu Hyokasho) was transmitted under Section 13(3);
(ii) when the time limit first designated in accordance with Section 39(1) with respect to a utility model invalidation trial has expired.

(2) The correction under the preceding subsection shall be limited to the following;

(i) the restriction of claim(s) for utility model registration;
(ii) a correction of errors in the expression;
(iii) a clarification of an ambiguous expression.

(3) A correction under subsection (1) shall remain within the scope of the features disclosed in the description, claim(s) for utility model registration or drawing(s) attached to the request (in the case of correction under the preceding subsection (ii), the description, claim(s) for utility model registration or drawing(s) originally attached to the request).

(4) A correction under subsection (1) may not be such as to substantially enlarge or modify the claim(s) for utility model registration.

(5) Section 4 of the Patent Law shall apply mutatis mutandis to the time limits under subsection (1)(i).

(6) Where, due to reasons outside his control, a person making the correction under subsection (1) is unable to make such correction before the time limits under subsection (1)(i), he may, notwithstanding that paragraph, make the correction within 14 days (where he is a resident abroad, within two months) from the date when the reasons ceased to be applicable but not later than six months, following the expiration of the said time limit.

(7) Subject to subsection (1), the owner of a utility model right may correct the description, claim(s) for utility model registration or drawing(s) attached to a request only where such correction has as its object the cancellation of claim(s)). However, where a utility model invalidation trial of this Law is pending before the Office, he may not correct the description, claim(s) for utility model registration or drawing(s) attached to the request after the notification under Section 156(1) of the Patent Law as applied under Section 41 of this Law (in the case of trial examination reopened under Section 156(2), after the further notification under Section 156(1)).

(8) A correction under subsection (1) and (7) may be made even after the extinguishment of the utility model right. However, this provision shall not apply after the registration has been invalidated in a utility model invalidation trial.

(9) When a correction under subsection (1) or (7) is made, a request for correction shall be produced.

(10) When a correction under subsection (1) is made, the corrected description, claim(s) for utility model registration or drawing(s) shall be attached to the request.

(11) Where a correction under subsection (1) or (7) has been made, the utility model application and the registration of the utility model right shall be deemed to have been made on the basis of the corrected description, claim(s) for utility model registration or drawing(s).

(12) Where a correction under subsection (1) has been made, the features stated in the corrected description, claim(s) for utility model registration as well as the contents of the drawing(s), and where the correction under subsection (7) has been made, such fact shall be published in the Utility Model Gazette.

(13) Sections 127 and 132(3) of the Patent Law shall apply mutatis mutandis to the case under subsections (1) and (7).

(Employees’ inventions)

35. ---- (1) An employer, a legal entity or a state or local public entity (hereinafter referred to as the “employer, etc.”) shall have a non-exclusive license on the patent right concerned, where an employee, an executive officer of a legal entity or a national or local public official (hereinafter referred to as the “employee, etc.”) has obtained a patent for an invention which by reason of its nature falls within the scope of the business of the employer, etc. and an act or acts resulting in the invention were part of the present or past duties of the employee, etc. performed on behalf of the employer, etc. (hereinafter referred to as an “employee’s invention”) or where a successor in title to the right to obtain a patent for an employee’s invention has obtained a patent therefore.

(2) In the case of an employee’s invention made by an employee, etc. which is not an employee’s invention, any contractual provision, service regulation or other stipulation providing in advance that the right to obtain a patent or the patent right shall pass to the employer, etc. or that he shall have an exclusive license on such invention shall be null and void.

(3) The employee, etc. shall have the right to a reasonable remuneration when he has enabled the right to obtain a patent or the patent right with respect to an employee’s invention to pass to the employer, etc. or has given the employer, etc. an exclusive right to such invention in accordance with the contract, service regulation or other stipulation.

(4) The payment of the remuneration in the preceding subsection, as provided for in the contract, service regulation or other stipulation shall not be considered to be unreasonable, in view of the situation under which a negotiation is carried out between employer, etc. and employee, etc. in the course of establishing the criteria for determining the remuneration, the situation under which the criteria established are disclosed, and the situation under which the views of employee, etc. are heard for calculating the amount of the remuneration, etc.

(5) Where there is no stipulation with respect to remuneration referred to in the preceding subsection or where the payment of the remuneration determined thereby shall be considered to be unreasonable, the amount of the remuneration referred to in subsection (3) shall be determined, taking into consideration the amount of profits that the employer, etc. will make from the invention, the burden assumed and contribution made by the employer, etc. in connection with the invention, and the treatment upon the employee, etc. and other circumstances.