Japanese Patent & Utility Model

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Japanese Utility Model FAQs

Utility Model

1. What subject can be claimed by a utility model in Japan?

Utility model protection is limited to devices relating to the shape or structure of an article or combination of articles.  Therefore, pharmaceutical products, materials, chemical substances, food products, software are not protectable subject matter under a utility model registration.  Unlike a patent, a method, such as product management or a manufacturing process and a product claimed as a result of a process are not protectable subject matter under a utility model. 

2. How long is the term of a utility model protection?

The term of utility model protection is 10 years.

3. What are the merits of choosing a utility model rather than a patent?

Please refer to the following site:
http://www.ondatechno.com/English/ip/patent/report/20060203.html

4. What are the risks that an applicant exposes himself to when he chooses to obtain a utility model/”petty patent” registration over a patent in Japan?

First of all, methods, pharmaceutical products, materials, and chemical substances are not protectable subject matter for utility model registration.

The utility model application is registered without examination.  When you would like to enforce the utility model, it is necessary to obtain a Registrability Report.  The Registrability Report is issued based on public domain documents.  There are oftentimes more reasons for invalidation than the information in the Registrability Report.  It is risky to enforce the utility model without thorough research.  Because, if the Japan Patent Office thereafter concludes that the utility model registration should be canceled, the registrant has the responsibility to compensate the infringer for any damages incurred by the registrant because of any warning and enforcement action by the registrant. Further, unlike a Patent case, the burden of proof is on the registrant, not the infringer, and is responsible for preparing documentation to prove the validity of the utility model registration. Therefore, if the registrant cannot prove the validity of its enforcement action, the registrant is liable for the damages incurred by the infringer.

For further information, please see:
Enforcement of Utility Model Rights
https://www.ondatechno.com/English/ip/patent/report/20060203.html

5. Is it required to change how the registered Japanese Utility Model is marking on the products regarding the expired Utility Model rights?

The utility model marking must be deleted on products upon the expiration of the registered utility model.  Please note that violation of prohibition of false marking lead to imprisonment with labor not exceeding one year or to a fine not exceeding 1,000,000 yen.

Please refer to Japanese Utility Model Law, Article 52 (Prohibition of False Marking) and 58 (Offense of False Marking)

 

Prohibition of False Marking

52. The following acts shall be unlawful:

(i) the marking of an article not covered by a registered utility model, or the packaging of such article, with an indication of a utility model registration or confusingly similar indication;

(ii) the assignment, lease or display for the purpose of assignment or lease of an article not covered by a registered utility model, where such article or its packaging is marked with an indication of a utility model registration or confusingly similar indication;

(iii) the inclusion in an advertisement of an indication that an article is covered by a registered utility model or a confusingly similar indication, for the purpose of causing others to manufacture or use the article or of assigning or leasing the article, where it is not covered by a registered utility model.

 

Offense of False Marking

58. Any person infringing Section 52 shall be liable to imprisonment with labor not exceeding one year or to a fine not exceeding 1,000,000 yen.