Utility Model Act(Act No. 123 of 1959)
Last Version: Act No. 55 of 2015
TOC
History
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June 7, 2024
- Last Version: Act No. 42 of 2021
- Translated Date: December 1, 2021
- Dictionary Version: 16.0
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March 22, 2023
- Last Version: Act No. 42 of 2021
- Translated Date: December 1, 2021
- Dictionary Version: 14.0
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February 26, 2022
- Last Version: Act No. 3 of 2019
- Translated Date: March 18, 2021
- Dictionary Version: 14.0
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April 12, 2019
- Last Version: Act No. 55 of 2015
- Translated Date: June 1, 2016
- Dictionary Version: 7.0
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March 31, 2009
- Last Version: Act No. 55 of 2006
- Translated Date: April 1, 2009
- Dictionary Version: 1.0
Utility Model Act
Act No. 123 of April 13, 1959
Table of contents
Chapter I General Provisions(Articles 1 through 2-5)
Chapter II Utility Model Registration and Applications for Utility Model Registration(Articles 3 through 11)
Chapter III Technical Opinions About Utility Models(Articles 12 and 13)
Chapter IV Utility Model Rights
Section 1 Utility Model Rights(Articles 14 through 26)
Section 2 Infringement of Rights(Articles 27 through 30)
Section 3 Registration Fees(Articles 31 through 36)
Chapter V Trials and Appeals(Articles 37 through 41)
Chapter VI Retrials and Lawsuits(Articles 42 through 48-2)
Chapter VII Special Provisions Concerning International Applications under the Patent Cooperation Treaty(Articles 48-3 through 48-16)
Chapter VIII Miscellaneous Provisions(Articles 49 through 55)
Chapter IX Penal Provisions(Articles 56 through 64)
Supplementary Provisions
Chapter I General Provisions
(Purpose)
Article 1The purpose of this Act is to encourage to create devices by promoting the protection and the utilization of device in respect to the shape or structure of an article or to the combination of articles, and thereby to contribute to the development of industries.
(Definitions)
Article 2(1)The term "device" as used in this Act refers to the creation of technical ideas utilizing the laws of nature.
(2)The term "registered utility model" as used in this Act means a device for which a utility model registration has been granted.
(3)The term "work" of a device in this Act means an act of manufacturing, using, assigning, leasing, exporting or importing, or offering for assignment or lease (including an act of displaying an article for the purpose of assignment or lease, the same applies hereinafter) an article relating to the device.
(Amendment of Procedures)
Article 2-2(1)A person undertaking procedures connected with the registration of a utility model, such as the filing of an application for utility model registration or a request of utility model registration (hereinafter simply referred to as "procedures") may make an amendment thereto only while the case is pending before the Japan Patent Office; provided, however, that the person may not make an amendment to the description, the scope of claims for a utility model registration, drawings or abstract accompanying the application or a document provided in Article 43, paragraph (1) of the Patent Act (Act No.121 of 1959) as applied mutatis mutandis pursuant to Article 8, paragraph (4) or Article 11, paragraph (1) (including the case where it is applied mutatis mutandis pursuant to Article 43-2, paragraph (2) as applied mutatis mutandis pursuant to Article 11, paragraph (1) (including the case where it is applied mutatis mutandis pursuant to Article 43-3, paragraph (3) of the relevant Act as applied mutatis mutandis pursuant to Article 11, paragraph (1)) and Article 43-3, paragraph 3 of the relevant Act) after a period specified by an Order of the Ministry of Economy, Trade and Industry has lapsed.
(2)Any amendment to the description, scope of claims for a utility model registration or drawings pursuant to the provisions of the main clause of paragraph (1) must be made within the scope of matters stated in the description, scope of claims for a utility model registration or drawings originally accompanying the application.
(3)Notwithstanding the provisions of paragraph (1), a corrected description, scope of claims for a utility model registration or drawings accompanying a correction form with respect to a correction referred to in Article 14-2, paragraph (1) may not be amended.
(4)In the following cases, the Commissioner of the Patent Office may order that a procedural amendment be made within a reasonable, specified period of time:
(i)if the procedure violates the provisions of Articles 7, paragraphs (1) through (3) or Article 9 of the Patent Act as applied mutatis mutandis pursuant to Article 2-5, paragraph (2) of this Act;
(ii)if the procedure violates the requirements specified by this Act or an order based thereon;
(iii)if registration fees payable for the procedures under the provisions of Article 32, paragraph (1) have not been paid;
(iv)if fees payable for the procedures under the provisions of Article 54, paragraph (1) or (2) have not been paid;
(5)A written amendment (except in the case of a payment of registration fees or other fees), must be submitted for any procedures to be amended.
(Dismissal of a Procedure)
Article 2-3The Commissioner of the Patent Office may dismiss the procedures if the person ordered to make an amendment thereto under the provisions of Article 2-2, paragraph (4), Article 6-2 or Article 14-3 fails to make the amendment within a period designated under the relevant provisions.
(Capacity of Associations Which Are Not Legal entity to Undertake Procedures)
Article 2-4(1)An association or foundation that is not a legal entity but for which a representative or an administrator has been appointed may, in its own name, undertake any of the following procedures:
(i)file a request for the technical opinion about a utility model provided in Article 12, paragraph (1);
(ii)demand a trial or appeal:
(iii)demand a retrial against the final and binding trial decision.
(2)An association or foundation that is not a legal entity but for which a representative or an administrator has been appointed may, in its name, receive a request for retrial against the final and binding trial decision.
(Application Mutatis Mutandis of the Patent Act)
Article 2-5(1)The provisions of Articles 3 and 5 of the Patent Act apply mutatis mutandis to the periods and dates provided in this Act.
(2)The provisions of Articles 7 through 9, 11 through 16 and 18-2 through 24 of the Patent Act apply mutatis mutandis to procedures.
(3)The provisions of Article 25 of the Patent Act apply mutatis mutandis to utility model rights and other rights relating to utility model registrations.
(4)The provisions of Article 26 of the Patent Act apply mutatis mutandis to utility model registrations.
Chapter II Utility Model Registration and Applications for Utility Model Registration
(Requirements for Utility Model Registration)
Article 3(1)A person who created a device that relates to the shape or structure of an article or a combination of articles and is industrially applicable may be entitled to obtain a utility model registration for the relevant device, except the following devices:
(i)a device that is public knowledge in Japan or in a foreign country, prior to the filing of the application for the utility model registration;
(ii)a device that is public knowledge worked in Japan or a foreign country, prior to the filing of the application for the utility model registration; or
(iii)a device that is described in a distributed publication, or is made publicly available through electric telecommunication lines in Japan or a foreign country, prior to the filing of the application for the utility model registration.
(2)Notwithstanding the preceding paragraph, a person may not obtain a utility model registration , if a person of ordinary skill in the art of the device would have easily created the device prior to the filing of the application for a utility model registration, based on any device listed in any of the items of the preceding paragraph.
Article 3-2If a device claimed in an application for utility model registration is identical with a device or invention (in the case if a person who created the device or invention is identical with the creator of the device claimed in the relevant application for utility model registration, excluding the device or invention) stated in the description, scope of claims for a utility model registration or scope of claims for a patent or drawings (in the case of the written application in foreign language referred to in Article 36-2, paragraph (2) of the Patent Act, the document in foreign language referred to in Article 36-2, paragraph (1)) originally accompanying the application of another application for utility model registration or for patent which has been filed prior to the filing date of the relevant application for utility model registration and published after the filing of the relevant application for utility model registration in the utility model gazette under the provisions of Article 14, paragraph (3) (hereinafter the "utility model gazette") or in the patent gazette under the provisions of Article 66, paragraph (3) of the Patent Act stating matters listed in each of the items of the respective paragraph or for which the publication of the patent application has been effected, a utility model registration is not be granted for such device notwithstanding the provisions of paragraph (1) of the preceding Article; provided, however, this does not apply if, at the time of the filing of the relevant application for utility model registration, the applicant of the relevant application and the applicant of the other application for utility model registration or for patent are the same person.
(Unregisterable Devices)
Article 4Notwithstanding the provisions of Article 3, paragraph (1), any device that has a risk to be dangerous to public order, morals or public health may not be registered as a utility model.
(Provisional Non-Exclusive Licenses)
Article 4-2(1)Any person who holds the right to obtain a utility model registration may grant a provisional non-exclusive license for the utility model right to be obtained based on the right to obtain a utility model registration to any third party within the scope of the matters indicated in the description, scope of claims for a utility model registration or drawings originally accompanying the application of the application for the utility model registration.
(2)When the establishment a utility model right has been registered for an application for utility model registration with respect to a provisional non-exclusive license under the provisions of the preceding paragraph, a non-exclusive license is deemed to have been granted for the utility model right to a person who holds the relevant provisional non-exclusive license within the scope specified by the contract granting the relevant provisional non-exclusive license.
(3)The provisions of Article 33, paragraphs (2) and (3), Article 34-3, paragraphs (4) through (6) and (8) through (10) and Article 34-5 of the Patent Act apply mutatis mutandis to provisional non-exclusive licenses.In this case, the phrases "Article 46, paragraph (1) with regard to an application for utility model registration pertaining to a provisional non-exclusive license under the provisions of Article 4-2, paragraph (1) of the Utility Model Act" in Article 34-3, paragraph (8) of the relevant act and "Article 46, paragraph (2)" in paragraph (9) of the relevant article are deemed to be replaced with "Article 10, paragraph (1) of the Utility Model Act with regard to a patent application pertaining to a provisional non-exclusive license under the provisions of Article 34-3, paragraph (1) or Article 34-2, paragraph (4)" and "Article 10, paragraph (2) of the Utility Model Act", respectively.
(Applications for a Utility Model Registration)
Article 5(1)Any person who intends to obtain a utility model registration must submit an application to the Commissioner of the Patent Office stating the following particulars:
(i)the name and address or residence of the applicants of a utility model registration; and
(ii)the name and address or residence of the creator or creators of the device.
(2)A description, scope of claims for a utility model registration, drawings and an abstract are to be accompanying the application.
(3)A description referred to in the preceding paragraph must state the following particulars:
(i)the title of the device;
(ii)a brief description of the drawings; and
(iii)a detailed description of the device.
(4)The detailed description of the device referred to in item (iii) of the preceding paragraph must be clear and sufficient so as to enable a person of ordinary skill in the art of the device to work the device as provided by Order of the Ministry of Economy, Trade and Industry.
(5)The scope of claims for a utility model registration referred to in paragraph (2) the applicant must state all particulars that the applicant finds to be necessary for identifying the device for which the applicant intends to obtain a utility model registration, separately for each claim. This does not preclude the device under one claim from being the same as the device under another claim.
(6)The description of the scope of claims for a utility model registration referred to in paragraph (2) must 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 the utility model registration is sought is clear;
(iii)the statement for each claim is concise; and
(iv)other matters stated pursuant to the provisions of the Order of the Ministry of Economy, Trade and Industry.
(7)The abstract referred to in paragraph (2) must summarize the device in the description, scope of claims for a utility model registration or drawings, and any other matters specified by Order of the Ministry of Economy, Trade and Industry.
Article 6A single application for utility model registration may be filed for two or more devices provided that these devices fall under a group of devices recognized as fulfilling the requirements of the unity of devices based on their technical relationship specified by Order of the Ministry of Economy, Trade and Industry.
(Order to Amend)
Article 6-2The Commissioner of the Patent Office may order the applicant to make an amendment to the description, scope of claims for a utility model or drawings accompanying an application, specifying a reasonable period of time, if the application for utility model request falls under any of the following items:
(i)if the device claimed in the application for a utility model registration is not in the shape or structure of an article or a combination of articles;
(ii)if the device claimed in the application for a utility model registration is not registrable under the provisions of Article 4;
(iii)when the application for utility model registration does not satisfy the requirement provided in Article 5, paragraph (6), item (iv) or in the preceding Article; or
(iv)if the description, scope of claims for a utility model registration or drawings accompanying the application does not state all of the necessary matters or is extremely unclear.
(Prior Application)
Article 7(1)If two or more applications for a utility model registration have been filed with regard to the same device on different dates, only the applicant that filed the application on the earliest date may be entitled to obtain a utility model registration for the claimed device.
(2)If two or more applications for utility model registration have been filed with regard to the same device on the same date, none of the applicants is not entitled to obtain a utility model registration for the claimed device.
(3)If a device claimed in an application for utility model registration and the invention claimed in a patent application are identical and the applications for the utility model registration and the patent application are filed on different dates, the applicant for the utility model registration may be entitled to obtain a utility model registration for the claimed device, only if the application for the utility model registration is filed before the patent applicant files a patent application.
(4)If an application for utility model registration or a patent application has been waived, withdrawn or dismissed, in applying the provisions of the preceding three paragraphs, the application for utility model registration or a patent application is deemed never to have been filed.
(5)If the examiner's decision or trial decision to reject a patent application has become final and binding, the patent application is to, for the purpose of paragraph (3), be deemed never to have been filed from the beginning; provided, however, that this does not apply to cases where the examiner's decision or trial decision to the effect that the patent application is to be rejected has become final and binding on the ground that the latter sentence of Article 39, paragraph (2) of the Patent Act is applicable to the relevant patent application.
(6)If no agreement is reached by consultations made under Article 39, paragraph (4) of the Patent Act or the consultations are unable to be held, the applicant for a utility model registration is not entitled to obtain a utility model registration for the device claimed.
(Claim of Priority Based on an Application for Utility Registration)
Article 8(1)Except in the following cases, a person who intends to obtain a utility model registration may claim priority for a device claimed in the application for a utility model registration, based on a device stated in the description or scope of claims for a utility model registration or patent claim, or drawings (in the case if the earlier application was a written application in a foreign language referred to in Article 36-2, paragraph (2) of the Patent Act, the document in a foreign language referred to in paragraph (1) of the relevant Article) originally accompanying the application of an earlier application filed for a utility model registration or patent over which the relevant person holds the right to obtain (hereinafter referred to as "earlier application"): provided however, that if there is any person who holds a provisional exclusive license with regard to the earlier application, priority may be claimed only if the consent of the person is obtained at the time of filing the relevant application for the utility model registration:
(i)if the relevant application for utility model registration is not filed within one year from the date of filing of the earlier application (excluding cases where there are justifiable grounds for the failure to file the application for utility model registration within one year from the date of filing, and it was filed within a period specified by Order of the Ministry of Economy, Trade and Industry);
(ii)if the earlier application is a new divisional application for utility model registration extracted from an application for utility model registration under the provisions of Article 44, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1), of an application for utility model registration with respect to an application for utility model registration under Article 10, paragraph (1) or (2), or a new divisional patent application with respect to a patent application under Article 44, paragraph (1) of the Patent Act, a patent application with respect to a patent application under Article 46, paragraph (1) or (2) of the Patent Act or a patent application based on a utility model registration under the provisions of Article 46-2, paragraph (1) of the Patent Act;
(iii)at the time the relevant application for the utility model registration is filed, the earlier application had been abandoned, withdrawn or dismissed;
(iv)at the time the relevant application for the utility model registration is filed, an examiner's decision or the trial decision on the earlier application has become final and binding; and
(v)at the time the relevant application for utility model registration is filed, the establishing a utility model right provided in Article 14, paragraph (2) has been registered with respect to the earlier application.
(2)Among devices claimed in an application for utility model registration containing a priority claim under the provisions of paragraph (1), for those that are stated in the description, scope of claims for a utility model registration or patent or drawings (in the case where the earlier application was an application written in foreign language referred to in Article 36-2, paragraph (2) of the Patent Act, the document in foreign language referred to in paragraph (1) of the relevant Article) originally accompanying 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 provisions of the preceding paragraph or Article 41, paragraph (1) of the Patent Act (including the case where it is applied mutatis mutandis pursuant to Article 43-3, paragraph (3) of the relevant Act), or Article 43, paragraph (1) or 43-2, paragraph (1) or (2) of the Patent Act (including the case when these provisions apply mutatis mutandis pursuant to Article 11, paragraph (1) of the relevant Act), excluding any device stated 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 relevant application for utility model registration is deemed to have been filed at the time when the earlier application was filed with respect to the application of the provisions of Article 3, the main clause of Article 3-2, Article 7, paragraphs (1) through (3), Article 30, paragraphs (1) and (2) of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1), Article 17, Articles 69, paragraph (2), item (ii) as applied mutatis mutandis pursuant to Article 26, Articles 79 and 81, Article 82, paragraph (1), and Articles 39, paragraphs (3) and (4) and Article 72 of the Patent Act, Article 26, Article 31, paragraph (2) and Article 32, paragraph (2) of the Design Act (Act No. 125 of 1959), Article 29, Article 33-2, paragraph (3) and Article 33-3, paragraph (3) of the Trademark Act (Act No. 127 of 1959) (including if these provisions apply mutatis mutandis pursuant to Article 68, paragraph (3) of the Trademark Act) of the Trademark Act.
(3)Among devices stated in the description, scope of claims for a utility model registration or drawings originally accompanying the application in an application for utility model registration containing a priority claim under the provisions of paragraph (1), for those that are stated in the description, scope of claims for a utility model registration or claims or drawings (in the case when the earlier application was an application written in foreign language referred to in Article 36-2, paragraph (2) of the Patent Act, the document in foreign language referred to in paragraph (1) of the relevant Article) originally accompanying the application of the earlier application on which the priority claim is based (in the case where the relevant earlier application contains a priority claim under the provisions of the preceding paragraph or Article 41, paragraph (1) of the Patent Act, Article 43-2, paragraph 1 (including the case where it is applied mutatis mutandis pursuant to Article 43-3, paragraph (3) of the relevant Act) or Article 43-3, paragraph (1) or (2) of the Patent Act (including the case where these provisions apply mutatis mutandis under Article 11, paragraph (1) of this Act), excluding any device stated 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 gazette with regard to the earlier application or the publication of the earlier application is deemed to have been issued or effected at the time when the utility model gazette with regard to the relevant application for utility model registration was issued so as to apply the provisions of the main clause of Article 3-2 of the Utility Model Act or Article 29-2 of the Patent Act.
(4)A person seeking a priority claim under the provisions of paragraph (1) must submit to the Commissioner of the Patent Office a document stating the effect thereof and the indication of the earlier application within a priority claim specified by Order of the Ministry of Economy, Trade and Industry.
(Withdrawal of an Earlier Application)
Article 9(1)An earlier application on which a priority claim is based under the provisions of Article 8, paragraph (1) is deemed to have been withdrawn when a period specified by Order of the Ministry of Economy, Trade and Industry has lapsed from the filing date of the relevant earlier application; provided, however, that this does not apply to the case where an earlier application has been abandoned, withdrawn or dismissed, if the examiner's decision or trial decision on the relevant earlier application has become final and binding with regard to the relevant application, where the establishment of the relevant earlier application provided in Article 14, paragraph (2) has been registered or where all of the claims of priority based on the relevant earlier application have been withdrawn.
(2)An applicant filing for an application for a utility model registration containing a priority claim under the provisions of Article 8, paragraph (1) may not withdraw the priority claim after a period specified by Order of the Ministry of Economy, Trade and Industry has lapsed from the filing date of the earlier application.
(3)If an application for a utility model registration containing a priority claim under the provisions of Article 8, paragraph (1) is withdrawn within a period specified by Order of the Ministry of Economy, Trade and Industry from the filing date of the earlier application, the relevant priority claim is deemed to be withdrawn simultaneously.
(Conversion of Application)
Article 10(1)A patent applicant may convert that patent application (other than one that has been filed based on a utility model registration under the provisions of Article 46-2, paragraph (1) of the Patent Act (this includes patent applications deemed to have been filed at the time of the filing of the original patent application under the provisions of Article 44, paragraph (2) of the relevant Act (including the case where it is applied mutatis mutandis pursuant to Article 46, paragraph (6) of the relevant Act))) into an application for a utility model registration; provided, however, that this does not apply after three months from the date on which the certified copy of the examiner's initial decision to the effect that the patent application to be rejected was served or once nine years and six months have passed since the filing date of the patent application.
(2)An applicant for design registration may convert that application for design registration (other than a design registration deemed, pursuant to the provisions of Article 10-2, paragraph (2) of the Design Act as applied mutatis mutandis pursuant to Article 13, paragraph (6) of the Design Act, to have been filed at the time of the original patent application which was filed based on an application for utility model registration under the provisions of Article 46-2, paragraph (1) of the Patent Act (including applications for a design registration deemed to have been filed at the time of the filing of the original application for design registration under the provisions of Article 10-2, paragraph (2) of the Design Act)) into an application for a utility model registration; provided, however, that this does not apply after three months from the date the certified copy of the examiner's initial decision to the effect that the application for a design registration to be rejected, has been served or nine years and six months from the filing date of the application for design registration have lapsed.
(3)If an application is converted under the provisions of the preceding two paragraphs, the application for utility model registration is deemed to have been filed at the time that the patent application or the application for design registration was filed; provided, however, that this does not apply if the purpose of the application of the provisions of Article 3-2 of this Act or Article 29-2 of the Patent Act is an application for a utility model registration that falls under another application for a utility model registration provided in Article 3-2 of this Act or an application for a utility model registration provided in Article 29-2 of the Patent Act, and the application of the provisions of Article 30, paragraph (3) of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1).
(4)If an application is converted under the provisions of paragraph (1) or (2), for the purpose of the application of the provisions of Article 43, paragraph (2) of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1) (including cases when it is applied mutatis mutandis under Article 43-2, paragraph (2) of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1) (including cases when it is applied mutatis mutandis pursuant to Article 43-3, paragraph (3) of the relevant Act as applied mutatis mutandis pursuant to Article 11, paragraph (1)) and Article 43-3, paragraph (3)), the term "within one year and four months from the earliest of the following dates" in Article 43, paragraph (2) is replaced with "within one year and four months from the earliest of the following dates or three months from the filing date of the application for utility model registration with respect to the conversion of an application under the provisions of Article 10, paragraph (1) or (2) of the Utility Model Act, whichever comes later."
(5)If an application is converted as under the provisions of paragraph (1) or (2), the patent application or the application for design registration is deemed to have been withdrawn.
(6)If the period prescribed in Article 121, paragraph (1) of the Patent Act is extended pursuant to the provisions of Article 4 of the relevant Act, the three-month period provided in the proviso to paragraph (1) is deemed to have been extended only for that extended period.
(7)If the period prescribed in Article 46, paragraph (1) of the Design Act is extended pursuant to the provisions of Article 4 of the Patent Act as applied mutatis mutandis pursuant to Article 68, paragraph (1) of the Design Act, the three-month period provided in the proviso to paragraph (2) is deemed to have been extended, but only for the length of time that the period prescribed in Article 46, paragraph (1) of the Design Act is extended.
(8)If an application is converted as provided in paragraph (1), any papers or documents that have been submitted in connection with the original patent application and that are required to be submitted in connection with a new application for utility model registration under the provisions of Article 8, paragraph (4) of this Act or Article 30, paragraph (3) or Article 43, paragraphs (1) and (2) of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1) (including cases where these provisions apply mutatis mutandis pursuant to Article 43-2, paragraph (2) of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1) (including cases where it is applied mutatis mutandis pursuant to Article 43-3, paragraph 3 of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph 1) and Article 43-3, paragraph 3) is deemed to have been submitted to the Commissioner of the Patent Office simultaneously along with the new application for a utility model application.
(9)If a person who holds a provisional exclusive license in connection with a patent application, the patent applicant may only convert that application as under paragraph (1) with the consent of that person.
(10)The provisions of paragraph (8) apply mutatis mutandis to the conversion of an application as under the provisions of paragraph (2).
(Application Mutatis Mutandis of the Patent Act)
Article 11(1)The provisions of Article 30 (Exception to the Lack of Novelty of Invention), Article 38 (Joint Applications) and Articles 43 and 44 (Procedure for a Priority Claim under the Paris Convention and Division of Patent Applications) of the Patent Act apply mutatis mutandis to applications for utility model registration.
(2)The provisions of Article 33 and Article 34, paragraphs (1), (2), and (4) through (7) (Right to Obtain a Patent) of the Patent Act apply mutatis mutandis to the right to obtain a utility model registration.
(3)The provisions of Article 35 (excluding the part with respect to provisional exclusive licenses) (Inventions by Employees) of the Patent Act apply mutatis mutandis to devices created by employees, corporate officers of corporations, or national or local public officers.
Chapter III Technical Opinion About a Utility Model
(Request for a Technical Opinion About a Utility Model)
Article 12(1)Any person may file a request with the Commissioner of the Patent Office with respect to an application for utility model registration or a utility model registration,for a technical opinion about the device claimed in that application or about the registered utility model, as concerns what is provided in the provisions of Article 3, paragraph (1), item (iii) and Article 3, paragraph (2) (limited to its application based on the device as set forth in Article 3, paragraph (1), item (iii)), Article 3-2, and Article 7, paragraphs (1) through (3) and (6) (hereinafter referred to as "technical opinion about a utility model"). Similarly, in respect of applications or registered utility models that contain two or more claims, such a request may be filed for each individual claim.
(2)A request as under the provisions of the preceding paragraph may be filed even after the lapse of the utility model; provided, however, that this does not apply if the utility model is invalidated in a trial for invalidation of the registration of a utility model.
(3)Notwithstanding the preceding two paragraphs, a request as under the provisions of paragraph (1) may not be filed subsequent to the filing of a patent application under Article 46-2, paragraph (1) of the Patent Act which is based on that utility model registration.
(4)When a request as under the provisions of paragraph (1) is filed, the Commissioner of the Patent Office must have an examiner to prepare a written report giving a technical opinion about a utility model (hereinafter referred to as a "written technical opinion about a utility model").
(5)The provisions of Article 47, paragraph (2) of the Patent Act apply mutatis mutandis to the preparation of a written technical opinion about a utility model.
(6)A request as under the provisions of paragraph (1) may not be withdrawn.
(7)If after the filing of a request as under the provisions of paragraph (1) was filed by a person that is neither the applicant for the utility model registration nor the utility model holder, a patent application as under the provisions of Article 46-2, paragraph (1) of the Patent Act is filed based on the utility model registration to which the request pertains (this includes a utility model registration linked to an application for utility model registration to which a request as under the provisions of paragraph (1) pertains), the request is deemed not to have been filed. In such a case, the Commissioner of the Patent Office must notify the person filing the request of this.
Article 13(1)If a request for technical opinion about a utility model is filed prior to publication of the utility model gazette, the Commissioner of the Patent Office must publish the indication of this in the utility model gazette either at the time of publication of the relevant utility model gazette or thereafter without delay, and when such a request is filed after the publication of the utility model gazette, without delay after the publication of the utility model gazette.
(2)If a request for a technical opinion about a utility model is filed by a person that is neither the person applying for a utility model registration nor the utility model holder, the Commissioner of the Patent Office must notify the person applying for the utility model registration or the utility model holder of this.
(3)Once a written technical opinion about a utility model is prepared, the Commissioner of the Patent Office must serve a certified copy on the requester if the requester is either the person applying for the utility model registration or the utility model holder and must serve a copy of the written technical opinion about a utility model on the person applying for the utility model registration or the utility model holder, if the requester is neither the person applying for the utility model registration nor the utility model holder.
Chapter IV Utility Model
Section 1 Utility Model
(Registration of Establishment a Utility Model)
Article 14(1)A utility model comes into effect by virtue of the registration that establishes it.
(2)Once an application for the registration of a utility model has been filed, a registration that establishes that utility model is effected unless the application is abandoned, withdrawn or dismissed.
(3)Once a registration as referred to in the preceding paragraph is effected, the following information must be stated in the utility model gazette.
(i)the name and the address or residence of the utility model holder;
(ii)the number and the filing date of the application for utility model registration;
(iii)the name and the address or residence of the creator of the device;
(iv)the matters indicated in the description and scope of claims for the utility model registration accompanying the request and the contents of the drawings accompanying that request;
(v)the matters indicated in the abstract accompanying the request;
(vi)the registration number and the date of the registration establishing the utility model; and
(vii)other necessary particulars beyond what is listed in the preceding items.
(4)The provisions of Article 64, paragraph (3) of the Patent Act apply mutatis mutandis if the particulars stated in the abstract referred to in item (v) of the preceding paragraph are published in the utility model gazette under the provisions of the preceding paragraph.
(Correction of the Description, Scope of Utility Model Registration Claims, and Drawings)
Article 14-2(1)Except in the following cases, the utility model holder may correct the description, utility model registration claims or drawings accompanying the application, but only once.
(i)if two months have passed since the date on which the first Written Technical Opinion About a Utility Model was served under the provisions of Article 13, paragraph (3); and
(ii)the period initially designated under the provisions of Article 39, paragraph (1) for a trial for invalidation of the registration of a utility model has expired.
(2)Any correction made under the preceding paragraph is limited to those for the following purposes:
(i)restriction of the scope of utility model registration claims;
(ii)correction of errors;
(iii)clarification of an ambiguous statement; and
(iv)rewriting a claim that cites another claim into a claim that does not cite that other claim.
(3)Any correction as referred to in paragraph (1) must remain within the confines of the matters indicated in the description, scope of utility model registration claims and drawings accompanying the request (or, in the case of a correction for the purpose set forth in item (ii) of the preceding paragraph, the description, utility model registration claims, and drawings originally accompanying the request).
(4)A correction as referred to in paragraph (1) must not substantially enlarge or alter the scope of utility model registration claims.
(5)The provisions of Article 4 of the Patent Act apply mutatis mutandis to the period provided in paragraph (1), item (i).
(6)Notwithstanding the provisions of item (i) of paragraph (1), if a person making a correction as referred to in paragraph (1), is unable to make that correction within the period provided for in item (i) due to reasons beyond that person's control, the person in the relevant item, the person may make the correction within 14 days (or within two month if the applicant is an overseas resident) after the date on which the reasons cease to exist, but no later than six months after the relevant period
(7)Beyond the corrections referred to in paragraph (1) a utility model holder may correct the description, scope of claims for a utility model registration or drawings accompanying the application so long as this correction is made for the purpose of deleting a claim or claims; provided, however, that if a trial for invalidation of the registration of a utility model is pending before the Japan Patent Office, the description, scope of claims for a utility model registration or drawings accompanying the application may not be corrected after a notice is given under the provisions of Article 156, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 41 (or if the proceedings have been resumed under the provisions of Article 156, paragraph (3) of the Patent Act, after further notice is given under the provisions of Article 156, paragraph (1) of the Patent Act).
(8)A correction as referred to in paragraph (1) or (7) may be made even after a lapse of the utility model right; provided, however, that this does not apply after if the utility model registration has been invalidated in a trial for invalidation of the registration of a utility model.
(9)A correction form must be submitted in order for a correction as referred to in paragraph (1) or (7) is to be made
(10)The corrected description, the scope of utility model registration claims or drawings must accompany the correction form if a correction as referred to in paragraph (1) is being made.
(11)If a correction as referred to in under paragraph (1) or (7) is made, the filing of the application for utility model registration and the registration is deemed to be made, and the registration that establishes the utility model is deemed to be effected based on the corrected description, scope of claims for the utility model registration or drawings.
(12)If a correction as referred to in paragraph (1) or (7) is made, the matters indicated in the corrected description, for the scope of utility model registration claims and the contents of the corrected drawings must be published in the utility model gazette and if a correction as referred to in paragraph (7), is made an indication of this must be published in the utility model gazette..
(13)The provisions of Article 127 and Article 132, paragraph (3) of the Patent Act apply mutatis mutandis to the cases of paragraphs (1) and (7).
(Order to Amend With Respect to Correction)
Article 14-3If a correction form (limited to a correction referred to paragraph (1) of the preceding Article) has been submitted and any particulars stated in the corrected description, scope of a utility model registration claim or drawings accompanying the correction form falls under any of the following items, the Commissioner of the Patent Office may order to make an amendment of the corrected description, scope of a utility model registration claim or drawings accompanying the correction form, designating a reasonable period:
(i)if the device identified by the matters indicated in the corrected utility model registration claims accompanying the correction form is not an device in the shape or structure of an article or combination of articles;
(ii)if the device identified by the matters indicated in the corrected scope of utility model registration claims accompanying to the correction form is not registrable as pursuant to the provisions of Article 4;
(iii)if the statement of the corrected description, scope of the utility model registration claims or drawings accompanying the correction form does not satisfy the requirement provided in Article 5, paragraph (6), item (iv) or Article 6; or
(iv)if the corrected description, scope of utility model registration claims or drawings accompanying the correction form does not indicate all the necessary matters or are extremely unclear.
(Duration of a Utility Model)
Article 15The term of protection for a utility model right expires after ten years after the filing date of the application for the utility model registration.
(Effect of Utility Model)
Article 16The utility model holder has the exclusive right to work the registered utility model in the course of trade; provided, however, that, if the holder grants an exclusive license to the utility model this does not apply inasmuch as the exclusive licensee is licensed to exclusively work the registered utility model.
(Relationship to the Registered Utility Model of Another Party)
Article 17It is not permissible for the utility model holder exclusive licensee, or non-exclusive licensees to work the registered utility model in the course of trade if the registered utility model uses a registered utility model, patented invention, or registered design that another person has filed an application for prior to the filing date of the application for the utility model registration in question, or uses a registered design similar thereto; or if the utility model is in conflict with design rights or rights under a trademark that another person has filed an application prior to the filing date of the application for the utility model registration in question
(Special Provisions on the Transfer of a Utility Model)
Article 17-2(1)If a utility model registration falls under the requirements prescribed in Article 37, paragraph (1), item (ii) (but only if the utility model registration has been obtained in violation of the provisions of Article 38 of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1)) or the requirements prescribed in Article 37, paragraph (1), item (v), the person with the right to obtain a utility model registration for the device under that utility model registration may demand that the utility model holder, transfer that utility model in accordance with Order of the Ministry of Economy, Trade and Industry.
(2)If the transfer of a utility model is registered based on a demand as under the provisions of the preceding paragraph, the utility model is deemed to have belonged from the beginning to the person that has had this registered.
(3)The provisions of Article 73, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 26 does not apply if a share of a jointly owned utility model is transferred based on a demand as under the provisions of paragraph (1).
(Exclusive Licenses)
Article 18(1)The utility model holder may grant an exclusive license to the utility model
(2)The exclusive licensee has the exclusive right to work the registered utility model in the course of trade, within the scope specified in the contract granting the license.
(3)The provisions of Articles 77, paragraphs (3) through (5) (Transfer), Article 97, paragraph (2) (Abandonment) and Article 98, paragraph (1), item (ii) and paragraph (2) (Effect of Registration) of the Patent Act apply mutatis mutandis to exclusive licenses.
(Non-Exclusive License)
Article 19(1)A utility model holder may grant a non-exclusive license to the utility model to any third party.
(2)A non-exclusive licensee has the right to work the registered utility model in the course of trade, pursuant to the provisions of this Act or within the scope specified in the contract granting the license.
(3)The provisions of Articles 73, paragraph (1) (Joint Ownership), Article 97, paragraph (3) (Abandonment) and Article 99 (Perfection of Non-exclusive License) of the Patent Act apply mutatis mutandis to non-exclusive licenses.
(Non-Exclusive Licenses based on the Working of the Utility Model Prior to the Registration of the Demand for a Trial for Patent Invalidation)
Article 20(1)Before a demand for a trial for patent invalidation as referred to in Article 123, paragraph (1) of the Patent Act (simply referred to in this paragraph as " trial for patent invalidation"), is registered, if a person falling under the following items has been engaging or preparing to engage in business that involves the working of an invention in Japan without knowing that the patent falls under one of the items of Article 123, paragraph (1) of the Patent Act, that person has a non-exclusive license to the utility model right or under any exclusive license existing at the time of the invalidation of the patent, but only within the scope of the invention that the person has been working or preparing to work and within the purview of that business purpose:
(i)the original patentee, if the device under the utility model registration and the patented invention are identical and the patent is invalidated;
(ii)the original patentee, if after the patent has been invalidated, a utility model registration is granted to the person that is entitled to obtain a utility model for an device which is identical to that invention; and
(iii)a person that, at the time the demand for the trial for patent invalidation is registered. has an exclusive license under the patent with this invalidates, or a non-exclusive license under such a patent or exclusive license, in a case as set forth in item (i) or (ii)
(2)A utility model holder or an exclusive licensee is entitled to receive reasonable compensation from a person that holds a non-exclusive licensee pursuant to the provisions of the preceding paragraph.
(Award of a Non-Exclusive License if a Registered Utility Model is not Worked)
Article 21(1)If a registered utility model has not been sufficiently and continuously worked for three years or longer in Japan, a person seeking to work the registered utility model may request the utility model holder or exclusive licensee to hold discussions toward an agreement to grant of a non-exclusive license; provided, however, that this does not apply unless four years have passed since the filing date of the application based on which the utility model registration was granted.
(2)If the agreement referred to in the preceding paragraph is not reached or if discussions toward such an agreement cannot be held, the person seeking to work the registered utility model may file a request to be awarded a non-exclusive license by the Commissioner of the Patent Office.
(3)The provisions of Articles 84 through 91-2 (Procedures in Connection with an Award) of the Patent Act apply mutatis mutandis to the award referred to in the preceding paragraph.
(Award Granting a Person a Non-Exclusive License to Work the Person's Own Registered Utility Model)
Article 22(1)If a registered utility model falls under any of the cases provided for in Article 17, the utility model holder or exclusive licensee may request the other person referred to in that Article to hold discussions towards an agreement to grant the holder or exclusive licensee a non-exclusive license under the person's patent or design right.
(2)If requested to hold discussions towards an agreement as referred to in the preceding paragraph, the other person that is referred to in Article 17 may request the utility model holder or the exclusive licensee that is requesting that person's agreement to hold discussions toward an agreement to grant the person a non-exclusive license within the scope of the registered utility model that the holder or exclusive licensee seeks to work as a result of the person's agreement to grant a non-exclusive license to the relevant utility model or under the relevant patent or design rights.
(3)If the agreement is referred to in paragraph (1), is not reached or if discussions toward such an agreement cannot be held, the utility model holder or the exclusive licensee may file a request to be awarded a non-exclusive license by the Commissioner of the Patent Office for a ruling.
(4)If the agreement referred to in paragraph (2) is not reached or discussions toward such an agreement cannot be held and a request for an award as referred to in the preceding paragraph is filed, the other person that is referred to in Article 17 may file a request to be awarded a non-exclusive license by the Commissioner of the Patent Office, but only within the period that the commissioner has designated for the person to submit a written answer, pursuant to Article 84 of the Patent Act as applied mutatis mutandis pursuant to paragraph (7).
(5)In a case as referred to in paragraph (3) or (4), the Commissioner of the Patent Office may not render an award granting a non-exclusive license if granting the non-exclusive license would be unreasonably prejudicial to the interests of the other person that is referred to in Article 17, the utility model holder. or the exclusive licensee.
(6)In the case of paragraph (4), beyond the case provided in the preceding paragraph, the Commissioner of the Patent Office may not render a ruling ordering a non-exclusive license to be established if the ruling ordering the non-exclusive license to be established is not rendered with respect to the request for ruling referred to in paragraph (3).
(7)The provisions of Articles 84, 84-2, Article 85, paragraph (1) and Articles 86 through 91-2 (Procedures in Connection with an Award) of the Patent Act apply mutatis mutandis to an award as referred to in paragraph (3) or (4).
(Granting a Non-Executive License Award in the Public Interest)
Article 23(1)If the working of a registered utility model is particularly necessary to the public interest, a person seeking to work the registered utility model may request the utility model holder or exclusive licensee to hold discussions toward an agreement to grant the person a non-exclusive license.
(2)If the agreement referred to in the preceding paragraph, is not reached or discussions towards such an agreement cannot held, the person seeking to work the registered utility model may file a request to be awarded a non-exclusive license by the Minister of Economy, Trade and Industry for a ruling.
(3)The provisions of Articles 84, 84-2, Article 85, paragraph (1) and Articles 86 through 91-2 (Procedures in Connection with an Award) of the Patent Act apply mutatis mutandis to an award as referred to in the preceding paragraph.
(Transfer of a Non-Exclusive License)
Article 24(1)With the exception of a non-exclusive license under an award as referred to in Article 21, paragraph (2), Article 22, paragraph (3) or (4), or Article 23, paragraph (2), Article 92, paragraph (3) of the Patent Act or Article 33, paragraph (3) of the Design Act, a non-exclusive license may be transferred only if the business linked to the working of the relevant registered utility model is also transferred, with the consent of the holder of a utility model holder (or, if it is a non-exclusive license with regard to the exclusive license, the holder of utility model right and the exclusive licensee) is obtained or when the transfer occurs as a result of inheritance or another general succession.
(2)With the exception of a non-exclusive license under an award as referred to in Article 21, paragraph (2), Article 22, paragraph (3) or (4), or Article 23, paragraph (2), Article 92, paragraph (3) of the Patent Act or Article 33, paragraph (3) of the Design Act, a non-exclusive licensee may establish a right of pledge with regard on the non-exclusive license only with the consent of the utility model holder (or, if it is a non-exclusive license under an exclusive license, the consent of the utility model holder and the exclusive licensee).
(3)A non-exclusive license under an award as referred to in Article 21, paragraph (2) or Article 23, paragraph (2) may be transferred only if the business linked to the working of the relevant registered utility model is also transferred.
(4)A non-exclusive license under an award as referred to in Article 22, paragraph (3) of this Act, Article 92, paragraph (3) of the Patent Act, or Article 33, paragraph (3) of the Design Act, is transferred if the utility model, patent, or design right under which the non-exclusive licensee licensed is transferred together with the business linked to the work; and is extinguished if that utility model, patent, or design right is transferred independently of the business linked to the work.
(5)A non-exclusive license under an award as referred to in Article 22, paragraph (4) is transferred together with the utility model, patent right or design right under which the non-exclusive licensee is licensed and is extinguished if the utility model, patent, or design right is extinguished.
(Right of Pledge)
Article 25(1)Unless otherwise stipulated by contract, if a right of pledge is established on a utility model, exclusive license or non-exclusive license, the pledgee may not work the registered utility model.
(2)The provisions of Article 96 (Extension of a Right of Pledge to the Proceeds of the Patent Right) of the Patent Act apply mutatis mutandis to a right of pledge established on a utility model right, exclusive license or non-exclusive license.
(3)The provisions of Article 98, paragraph (1), item (iii) and paragraph (2) (Effect of Registration) of the Patent Act apply mutatis mutandis to a right of pledge established on a utility model or exclusive license.
(Application Mutatis Mutandis of the Patent Act)
Article 26The provisions of Articles 69, paragraphs (1) and (2) and Articles 70 through 71-2 (Limitations of a Patent Right and Technical scope of a Patented Invention), Article 73 (Joint Ownership), Article 76 (Expiration of a Patent in Absence of an Heir), Article 79 (Non-exclusive License Based on Prior Use), Article 79-2 (Non-exclusive License Based on the Working of the Invention Prior to the Registration of the Transfer of a Patent Right), Articles 81 and 82 (Non-exclusive Licenses after the Expiration of the Term of a Design Right), Article 97, paragraph (1) (Abandonment), and Article 98, paragraph (1), items (i) and (ii) (Effect of Registration) apply mutatis mutandis to utility models.
Section 2 Infringement of Rights
(Right to an Injunction)
Article 27(1)A utility model holder or an exclusive licensee may file a claim against a person that infringes or is likely to infringe the utility model or exclusive license (hereinafter referred to as the "infringer") to cease or prevent the infringement.
(2)In filing the claim under the provisions of the preceding paragraph, the utility model holder or exclusive licensee may request measures necessary for the prevention of such an infringement including the disposal of articles constituting such an act of infringement (including a computer program, etc. (meaning a computer program, etc. provided in Article 2, paragraph (4) of the Patent Act, the same applies in the following Article), the same applies hereinafter), the removal of facilities used for the act of infringement and other necessary measures.
(Acts Deemed to Constitute Infringement)
Article 28The following acts are deemed to constitute the infringement of a utility model or exclusive license:
(i)producing an article whose only use is in the manufacture of the product covered by the registered utility model, transferring ownership, etc. of such an article (meaning transferring ownership of it or lending it out; this includes providing it through a telecommunications line, if it is a computer program, etc., the same applies hereinafter), importing it, or offering to transfer ownership,, etc. of it (including displaying it with the objective of transferring ownership, etc. of it; the same applies hereinafter) in the course of trade:
(ii)producing, transferring ownership, etc. of importing, or offering to transfer ownership, etc. in the course of trade, of an article (other than one that is widely distributed within Japan) that is used in the manufacture of the product covered by the registered utility model, and that is essential in enabling the device to solve the problem it solves, knowing that the relevant device is a registered utility model and that the article is used in working of the device;
(iii)possessing the product covered by the registered utility model with the objective of transferring ownership of it, lending it out, or exporting it.
(Estimation of Losses)
Article 29(1)If a utility model holder or exclusive licensee claims compensation for damage that the utility model holder or exclusive licensee personally incurs due to infringement, against a person that, intentionally or due to negligence, infringes the utility model or exclusive license, and the infringer has transferred ownership of articles that infringe the amount calculated by, multiplying the number of articles transferred (hereinafter referred to in this paragraph as the "number transferred") by the amount of profit per unit from the products that the holder or exclusive licensee could have sold if there had been no infringement, may be fixed as the value of the damage that the utility model holder or exclusive licensee has incurred, within the limits of an amount proportionate to the ability of the holder or the exclusive licensee to work the device; provided, however, that if there are circumstances due to which the holder or the exclusive licensee would have been unable to sell the assigned quantity in whole or in part, an amount proportionate to the number of products that could not have been sold due to such circumstances is to be deducted from the value of the domestic dispute.
(2)If a utility model holder or an exclusive licensee claims compensation for damage that the utility model holder or exclusive licensee personally incurs due to infringement, against a person that, intentionally or due to negligence, infringes the utility model or exclusive license, and the infringer has made a profit from infringement, the amount of profit is presumed to be the value of the damage incurred by the utility model holder or exclusive business.
(3)If a utility model right exclusive licensee claims compensation for damage that the utility model or exclusive licensee personally incurs due to infringement against a person that, intentionally or due to negligence, and the infringes the utility model or exclusive license, and the infringer has made a profit from the infringement, the amount of the profit is presumed to be the value of the damage incurred by the utility model holder or exclusive licensee.
(4)The provisions of the preceding paragraph do not preclude a claim for compensation of damages exceeding the amount provided therein. In such a case, the court may consider the absence of intent or gross negligence by the person that has infringed the utility model or exclusive license, in determining the amount of compensation.
(Presentation of a Written Technical Opinion About a Utility Model)
Article 29-2A utility model holder or exclusive licensee may not exercise the utility model or exclusive license against an infringer, etc. until after having warned the infringer, etc. by presenting the Written Technical Opinion About the Utility Model for that registered utility model.
(Liability of the Utility Model Holder)
Article 29-3(1)If a trial decision invalidating a utility model registration (other than one rendered on the grounds set forth in Article 37, paragraph (1), item (vi)) becomes final and binding after the holder of a utility model holder or exclusive licensee exercises rights against an infringer, etc., or warns the infringer, etc. of the same, the holder or exclusive licensee is liable to compensate for damage incurred by the other party as a result of the exercise of those rights or as a result of the warning; provided, however, that this does not apply if the holder or exclusive licensee exercises those rights or gives warning of the same based on the technical opinion about a utility model that is given in the written technical opinion about the utility model (other than the opinion that the device claimed in the application for utility model registration or the registered utility model cannot be registered pursuant to the provisions of Article 3, paragraph (1), item (iii) and paragraph (2) (this is limited to an opinion about an device as set forth in Article 3-2, and Article 7, paragraphs (1) through (3) and (6)) or with other reasonable care in exercising those rights or in giving warning of the same.
(2)The provisions of the preceding paragraph apply mutatis mutandis if the utility model holder or the exclusive licensee exercises rights, or gives warning of the same with respect to an device that has come to fall outside the confines of what is described in the utility model registration claims at the time of the registration that establishes the utility model, due to a correction as referred to in Article 14-2, paragraph (1) or (7) that is made to description, utility model claims, or drawings accompanying the request in the application for the utility model registration.
(Application Mutatis Mutandis of the Patent Act)
Article 30The provisions of Articles 104-2 through 106 (Duty to Clarify the Specific Circumstances; Restriction on Exercise of Rights by the Patentee; Restriction on Assertion; Submission of Documents; Expert Opinion for Calculation of Damage; Approval of a Reasonable Amount as the Value of Damages; Confidentiality Protective Orders; Notice of a Request for Inspection of Record; Ban on Open Examination of Parties; and Measures to Restore Credibility) of the Patent Act apply mutatis mutandis to infringement of utility model or exclusive license.In this case, the terms "the following decision or trial decision has become final and binding" and "the relevant decision or trial decisions becomes final and binding" in Article 104-4 of that Act is deemed to be replaced with "the trial decision set forth in item (i) becomes final and binding, or the correction set forth in item (iii) is made" and the phrase "the relevant trial decision has become final and binding, or that a correction has been made," respectively, and the phrase "a decision or a trial decision as provided by Cabinet Order correcting the description" in item (iii) of the relevant Article is deemed to be replaced with "a correction referred to in Article 14-2, paragraph (1) or (7) of the Utility Model Act and as provided by Cabinet Order, to the description."
Section 3 Registration Fees
(Registration Fees)
Article 31(1)The person obtaining the registration that establishes a utility model or the utility model holder must pay the amount listed in the lower column of the following table in accordance with the term set forth in the upper column as a registration fee, for each registered utility model and in each year from the date of the registration that establishes the utility model to the expiration of the duration of protection prescribed in Article 15:
Period within term
|
Amount
|
First to third year
|
Annually 2,100 yen plus 100 yen per claim
|
Fourth to sixth year
|
Annually 6,100 yen plus 300 yen per claim
|
Seventh to tenth year
|
Annually 18,100 yen plus 900 yen per claim
|
(2)The provisions of the preceding paragraph do not apply to a utility model that belongs to the national government.
(3)Notwithstanding the provisions of paragraph (1), if a utility model is held under joint ownership with the national government or with a person or persons receiving a reduction in or exemption from the registration fees as under Article 32-2 or the provisions of any other laws and regulations (hereinafter referred to as a "Reduction or Exemption"), and the joint owners' shares have been agreed upon the amount of the registration fee provided for in paragraph (1) is the sum total calculated by first multiplying, for each joint owner other than the national government, the applicable patent fee provided for in that paragraph (for a person receiving a reduction or exemption, this means the amount of the registration fee provided for in that paragraph after deducting the reduction or exemption) by the percentage that represents that person's share, and then adding together the amounts so arrived at and this sum total is the amount that the persons other than the national government must pay.
(4)For the amount of registration fees calculated under the provisions of the preceding paragraph, fractional figures of less than ten yen is discarded.
(5)Payment for a registration fee referred to in paragraph (1) must be made with patent revenue stamps, pursuant to Order of the Ministry of Economy, Trade and Industry; provided, however, that if so stipulated by Order of the Ministry of Economy, Trade and Industry, a payment in cash thereof may be made.
(Due Date for the Payment of Registration Fees)
Article 32(1)The registration fees for all years from the first year to the third year as under the provisions of Article 31, paragraph (1) must be paid in a lump sum at the same time as the filing of the application for utility model registration (or, in cases when an application is converted as under Article 10, paragraph (1) or (2) or is divided under the provisions of Article 44, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1), at the same time of the conversion or division of the application).
(2)The registration fees for each of the fourth to subsequent years as under the provisions of Article 31, paragraph (1) must be paid by the end of the previous year.
(3)At the request from the person that is to pay the registration fee the Commissioner of the Patent Office may extend the due date provided for in paragraph (1) by up to 30 days.
(4)Notwithstanding the provisions of paragraphs (1) and (3), due to reasons beyond the control of the person who is to pay the registration fee, if the person is unable to pay the registration fee within the extended period under the provisions of the preceding paragraph, the person may pay the registration fee within 14 days (within two months, if the applicant is an overseas resident) from the date on which the reasons ceased to exist, but not later than six months after the relevant period lapsed.
(Reduction, Exemption or Deferment of Registration Fees)
Article 32-2If the person that is responsible for paying the registration fees for all years from the first year to the third year as under the provisions of Article 31, paragraph (1) is the creator of the device claimed in the application for a utility model registration or the creator's heir, and the Commissioner of the Patent Office finds that the person is having difficulty paying the registration fees due to f, the Commissioner of the Patent Office may reduce the registration fees,, exempt the person from paying those registration fees, or give the person a deferment for the payment of those registration fees as prescribed by Cabinet Order.
(Late Payment of Registration Fees)
Article 33(1)If the utility model holder is unable to pay a registration fee within the frame provided for in Article 32, paragraph (2) or the time frame for deferred payment as under the provisions of Article 32-2, the holder may make a late payment for the registration fee even after the end of that time frame, if this is done within six months after the end of that time frame..
(2)A utility model holder making a late payment for a registration fee pursuant to the provisions of the preceding paragraph must pay, a registration surcharge in the same amount as the registration fee, beyond the registration fee to be paid pursuant to Article 31, paragraph (1).
(3)Payment for a registration surcharge referred to in the preceding paragraph must be made with patent revenue stamps, pursuant to Order of the Ministry of Economy, Trade and Industry; provided, however, if so specified by Order of the Ministry of Economy, Trade and Industry, a cash payment may be made.
(4)If a utility model holder fails to pay a registration fee in the fourth or subsequent year and the registration surcharge referred to paragraph (1), within the time frame during which the holder is permitted to make a late payment for a registration fee pursuant to the provisions of Article 31, paragraph (1) and the registration surcharge referred to in paragraph (2), the utility model right is deemed to have been extinguished retroactively upon the expiration of the period provided in Article 32, paragraph (2).
(5)If the utility model holder fails to pay a registration fee whose payment has been deferred pursuant to Article 32-2 and the registration surcharge referred to in paragraph (2) within the time frame during which the holder is permitted to make a late payment for a registration fee pursuant to the provisions of paragraph (1), the utility model is deemed never to have existed.
(Restoration of A Utility Model By Late Payment of Registration Fees)
Article 33-2(1)If the original holder of the utility model that is deemed to have been forfeited pursuant to Article 33, paragraph (4), or that is deemed never to have existed pursuant to Article 33, paragraph (5) has a legitimate reason for not having been able to pay the relevant fee and the registration surcharge provided in Article 33, paragraph (4) or (5) within the time frame during which the holder is permitted to make a late payment for a registration fee pursuant to Article 33, paragraph (1), the original holder may make a late payment for the registration fee and the surcharge within two months after the date on which that reason ceases to exist, but not later than one year after the end of the relevant time frame;
(2)If the registration fees and the registration surcharge are paid under the preceding paragraph, the utility model is deemed to have continued retroactive from the time frame ended as provided in Article 32, paragraph (2) or to have existed from the beginning.
(Restriction on the Effect of a Restored Utility Model)
Article 33-3(1)If a utility model is restored pursuant to paragraph (2) of the preceding Article, the utility model is not effective against an article covered by the registered utility model which was imported into or manufactured or acquired within Japan after the end of the time frame during which the holder is permitted to make a late payment for registration fees pursuant to Article 33, paragraph (1) and before the restoration of the utility model is registered.
(2)A utility model restored pursuant to paragraph (2) of the preceding Article is not effective on the following actions as performed after the end of the time frame during which the holder is permitted to make a late payment for a registration fee pursuant to Article 33, paragraph (1) and before the restoration of the utility model is registered:
(i)working the device;
(ii)producing, transferring ownership, etc. of, importing, or offering to transfer ownership, etc. of an article used to make the product covered by the registered utility model; and
(iii)possessing the product covered by the registered utility model with the objective of transferring ownership of it, lending it out or exporting it.
(Refunding of Registration Fees)
Article 34(1)The following registration fees are from the person who paid them:
(i)registration fees paid in error or in excess;
(ii)the registration fee in a case in which a disposition dismissing the application for utility model registration becomes final and binding;
(iii)annual registration fees for each year following that in which a trial decision invalidating the utility model registration becomes final and binding; and
(iv)annual registration fees for each year following that in which the term of protection for the utility model expires.
(2)A request for a refund of a registration fee as under the provisions of the preceding paragraph may not be filed once one year has passed since the date that the registration fee referred to in item (i) above, of the preceding paragraph was paid; once six months have passed since the date on which the disposition or trial decision became final and binding in respect of a registration fee referred to in item (ii) or (iii) of that paragraph; or once one year has passed since the date on which the registration is made establishing the utility model in respect of a registration fee referred to in item (iv) of that paragraph.
(3)When a person requesting the refund of the registration fee pursuant to the provisions of paragraph (1) cannot make a request within the time requested prescribed in the preceding paragraph for reasons beyond the control of the person, notwithstanding the provisions of paragraph (1), the person may file a request within 14 days (within two months for overseas residents) from the date in which the reason no longer applies, but no later than six months after the expiration of the relevant period.
Article 35Deleted
(Mutatis Mutandis Application of the Patent Act)
Article 36The provisions of Article 110 of the Patent Act (payment of patent fees by interested persons) apply mutatis mutandis to registration fees.
Chapter V Trials and Appeals
(Trial for Invalidation of the Registration of a Utility Model)
Article 37(1)If a utility model registration falls under one of the following items, a demand may be filed for trial for invalidation of the registration of a utility model.In this case, if there are two or more claims, a request for trial for invalidation of the registration of a utility model may be filed for each claim.
(i)the utility model registration has been granted on an application for utility model registration with an amendment that does not comply with the requirements stipulated in Article 2-2, paragraph (2);
(ii)the utility model registration has been granted in violation of the provisions of Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 2-5, paragraph (3) of the Utility Model Act, Articles 3, 3-2, 4, Article 7, paragraphs (1) through (3) or Article 7, paragraph (6), or Article 38 of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1) of the Utility Model Act (if the utility model registration has been granted in violation of Article 38 of the provisions of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1) of this Act, this excludes a case in which the transfer of the utility model to which the utility model registration pertains has been registered based on a request made under the provisions of Article 17-2, paragraph (1) of this Act);
(iii)the utility model registration has been granted in violation of a treaty;
(iv)the utility model registration has been granted with respect to an application for utility model registration that does not comply with the requirements stipulated in Article 5, paragraph (4) or (6) (excluding item (iv));
(v)the utility model registration has been granted on an application for utility model registration filed by a person with no right to obtain a utility model registration for the device (unless the transfer of the utility model to which the relevant utility model registration pertains has been registered based on a request made under the provisions of Article 17-2, paragraph (1));
(vi)after being granted the utility model registration, the utility model holder comes to fall under a category of person that is not permitted the enjoyment of a utility model pursuant to Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 2-5, paragraph (3), or the utility model registration comes to violate a treaty after being granted; and
(vii)a correction to the description, utility model registration claims, or drawings accompanying the request to the application for the utility model registration has been made in violation of the provisions of Article 14-2, paragraphs (2) through (4).
(2)Any person may file a demand for a trial for invalidation of the registration of a utility model; provided, however, that if a demand is filed for a trial for invalidation of the registration of a utility model on the grounds that the utility model registration falls under item (ii) of the preceding paragraph (limited to a case in which the utility model registration has been obtained in violation of Article 38 of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1)) or item (v) of the preceding paragraph, only a person with the right to obtain a utility model registration for the device to which the utility model registration pertains may file
(3)A demand for a trial for invalidation of the registration of a utility model may be filed even after the forfeiture of the utility model.
(4)If a demand is filed for a trial for invalidation of the registration of a utility model, the chief administrative judge must notify the exclusive licensee under the utility model of this and notify other persons with registered rights under the utility model of the same.
(Formal Requirements for a Demand for Trials)
Article 38(1)A person demanding a trial must submit a written demand stating the following to the Commissioner of the Patent Office:
(i)the full name and business name the addresses or residences of the party and the agent thereof;
(ii)an identification of the trial case; and
(iii)the object of claim and grounds for the demand
(2)In the grounds for the demand that are set forth in item (iii) of the preceding paragraph, the facts on that are the basis for invalidating the utility model registration must be concretely identified, and the relationship of each fact that needs to be proved to the evidence must be stated.
(Amendment of a Written Demand for Trial)
Article 38-2(1)The amendment of a written demand submitted pursuant to paragraph (1) of the preceding Article must not change the outline thereof; provided, however, that this does not apply if allowed by the chief administrative judge as under the provisions of the following paragraph.
(2)If the amendment of the grounds for the demand set forth in Article 38, paragraph (1), item (iii) changes the outline thereof, the chief administrative judge may rule to allow the amendment will unreasonably delay of the proceedings and that the circumstances fall under one of the following items:
(i)there has been a correction as referred to in Article 14-2, paragraph (1) and this has given rise to a need for an amendment of the grounds for the request; and
(ii)there are reasonable grounds other than what is set forth in in the preceding item,for the the grounds for the demand as amended not having been included in the written demand.at the time the demand for the trial or appeal was filed, and the respondent agrees to the amendment.
(3)Allowances for an amendment as referred to in the preceding paragraph may not be made if the procedural amendment form for that amendment is submitted prior to the service of a copy of the written demand under the provisions of Article 39, paragraph (1).
(4)No appeal may be filed against the ruling referred to in paragraph (2) or inaction thereof.
(Submission of a Written Answer)
Article 39(1)Once a demand for trial or appeal is filed, the chief administrative judge must serve a copy of the written demand on the respondent and give the respondent an opportunity to submit a written answer within a reasonable, specified period of time.
(2)If the chief administrative judge allows the amendment of a written demand pursuant to the provisions of Article 38-2, paragraph (2), the judge must serve a copy of the procedural form for that amendment on the respondent, and give the respondent an opportunity to submit a written answer within a reasonable, specified period of time; provided, however, that this does not apply if there are special circumstances due to which there is found to be no need to give the respondent an opportunity to submit a written answer.
(3)Once the chief administrative judge accepts a written answer as provided in paragraph (1) or the main clause of the preceding paragraph, or once a correction as referred to in Article 14-2, paragraph (1) or (7) has been made while a trial for invalidation of the registration of a utility model is pending at the Japan Patent Office, the chief trial examiner must serve a copy thereof on the demandant.
(4)The chief administrative judge may question the parties and the intervenors in connection with the trial or appeal.
(5)If a patent application under the provisions of Article 46-2, paragraph (1) of the Patent Act is filed based on the utility model registration after a demand is filed for a trial for invalidation of the registration of a utility model , the chief administrative judge must notify the demandant and the intervenors of this.
(Withdrawal of Demand For Trial or Appeal)
Article 39-2(1)A demand for trial or appeal may be withdrawn up until such time as the trial decision becomes final and binding.
(2)Once the written answer referred to in Article 39, paragraph (1) has been submitted, the demand for trial or appeal may not be withdrawn without the consent of the adverse party.
(3)Notwithstanding the preceding paragraph, if the demandant receives a notice under the provisions of Article 39, paragraph (5), the demandant may withdraw the demand for trial or appeal but only within 30 days from the date on which the demandant received the notice.
(4)The provisions of Article 4 of the Patent Act apply mutatis mutandis to the period provided for in the preceding paragraph.In this case, the term "The Commissioner of the Patent Office" in that Article is deemed to be replaced with "the chief administrative judge".
(5)Notwithstanding the provisions provided in paragraph (3), if the demandant is unable to withdraw the demand for trial or appeal within the period provided for in that paragraph, due to reasons beyond the demandant's control, the demandant may, file the demand within 14 days (or within two months, if the demandant is an overseas resident) from the date on which those reasons fail to apply, but no later than six months after the end of the aforementioned period.
(6)If a demand for a trial for invalidation of the registration of a utility model is filed in respect of two or more claims in a utility model registration that covers two or more claims, the demand may be withdrawn on a claim-by-claim basis.
(Connection with Litigation)
Article 40(1)If it is found to be necessary during a trial or appeal, the trial or appeal proceedings may be suspended until a trial decision from another trial or appeal before the Japan Patent Office becomes final and binding or until civil litigation proceedings conclude.
(2)If a civil action has been instituted or a motion has been filed for an order of provisional seizure or an order of provisional disposition and the civil court finds it to be necessary, the court may suspend civil litigation proceedings until a trial decision by the Japan Patent Office becomes final and binding.
(3)The court is to notify the Commissioner of the Patent Office if a civil action is instituted with respect to the infringement of a utility model or an exclusive license. It must also do this once such litigation proceedings conclude.
(4)If the Commissioner of the Patent Office is notified as provided in the preceding paragraph, the commissioner is to notify the civil court of whether a demand for trial or appeal has been filed with the Japan Patent Office with regard to that utility model. The commissioner must also do this once the Japan Patent Office issues a ruling dismissing the written demand for such a trial or appeal, or renders the trial decision or if the demand for such a trial or appeal is withdrawn.
(5)If the civil court is notified pursuant to the preceding paragraph that a demand for a trial or appeal has been filed with regard to the relevant utility model, it must notify the Commissioner of the Patent Office if a document containing an allegation or defense as under Article 104-3, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 30 has already been submitted in the litigation prior to that notice and must notify the commissioner if the document is submitted for the first time after that notice.
(6)If the Commissioner of the Patent Office is notified as provided in the preceding paragraph, the commissioner may request the court to deliver a copy of any documentary record of the court proceedings that the administrative judge finds to be necessary for the trial or appeal with the Japan Patent Office.
(Mutatis Mutandis Application of the Patent Act)
Article 41The provisions of Articles 125, 132 through 133-2, 135 through 154, Article 156, paragraphs (1), (3) and (4), Articles 157, 167 and 167-2, Article 169, paragraphs (1), (2), (5) and (6), and Article 170 of the Patent Act apply mutatis mutandis to trials and appeals.In this case, the term "In a trial other than a trial for patent invalidation, when the case" in Article 156, paragraph (1) of that Act is deemed to be replaced with "When a case".
Chapter VI Retrial and Litigation
(Demand for Retrial)
Article 42(1)A party or an intervenor may demand a retrial to overturn a final and binding trial decision.
(2)The provisions of Articles 338, paragraphs (1) and (2) and Article 339 (Grounds for retrial) of the Code of Civil Procedure (Act No109 of 1996) apply mutatis mutandis to a demand for a retrial as referred to in the preceding paragraph.
Article 43(1)Where a demandant and respondent in a trial or appeal before the Japan Patent Office have conspired to bring about a the trial decision with the aim of harming the rights or interests of any third party, the third party may demand a retrial to overturn the final and binding trial decision.
(2)A demand for a retrial referred to in the preceding paragraph must be filed with the demandant and the respondent from the trial or appeal as the joint respondents.
(Limitations on the Effect of a Utility Model Restored on Retrial)
Article 44(1)If a utility model under an invalidated utility model registration is restored on retrial, the utility model has no effect against an article covered by the registered utility model that was imported into or manufactured or acquired within Japan in good faith, after the trial decision became final and binding and before the demand for a retrial was registered.
(2)If the utility model to which an invalidated utility model registration pertains is restored on retrial, the utility model has no effect against the following actions as performed after the trial decision became final and binding and before the demand for a retrial was registered:
(i)working the device in good faith;
(ii)producing, transferring ownership, etc., importing, or offering to transfer ownership, etc., of any article used to make the product covered by the registered utility model, in good faith; and
(iii)possessing the product covered by the registered utility model, in good faith, with the objective of transferring ownership of it, lending it out, or exporting it.
(Mutatis Mutandis Application of the Patent Act)
Article 45(1)Articles 173 (Period for Demanding a Retrial), 174, paragraphs (3) and (5) (Mutatis Mutandis Application of Provisions on Trials and Appeals), and 176 (Non-exclusive License based on the Working of the Invention Prior to the Registration of the Request for a Retrial) of the Patent Act apply mutatis mutandis to retrials.In this case, in Article 174, paragraph (3) of the relevant Act, the phrase "Article 131, paragraph (1), the main clause of Article 131-2, paragraph (1)," "Article 134, paragraphs (1), (3) and (4)" and "and Article 168" is deemed to be replaced with "Article 38, paragraph (1), the main clause of Article 38-2", "Article 39, paragraphs (1), (3) and (4) of the Utility Model Act," and "Article 167-2, Article 40 of the Utility Model Act," respectively.
(2)The provisions of Article 4 of the Patent Act apply mutatis mutandis to the period provided for in Article 173, paragraph (1) of the relevant Act as applied mutatis mutandis pursuant to the preceding paragraph.
Article 46Deleted
(Action Seeking to Overturn Trial Decisions)
Article 47(1)The Tokyo High Court has exclusive jurisdiction over any action seeking to overturn a trial decision or a ruling dismissing a written request for a trial or appeal, or a retrial.
(2)The provisions of Article 178, paragraphs (2) through (6) (Statute of Limitations for Filing an Action), Articles 179 through 182-2 (The Proper Defendant; Notice of the Filing of an Action etc.; Opinion of the Commissioner of the Patent Office in Litigation Seeking to Overturn a Trial Decision; Overturning a Trial Decision or Ruling; Delivery of the Original Copy of the Judicial Decision; Composition of a Panel) of the Patent Act apply mutatis mutandis to an action as referred to in the preceding paragraph.
(Action Protesting the Amount of Consideration)
Article 48(1)If a person receiving an award as referred to in Article 21, paragraph (2), Article 22, paragraph (3) or (4), or Article 23, paragraph (2) is dissatisfied with the amount of consideration determined in the award, that person may institute an action demanding an increase or decrease in that amount.
(2)The provisions of Articles 183, paragraph (2) (Statute of Limitations for Filing an Action) and Article 184 (The Proper Defendant) of the Patent Act apply mutatis mutandis to actions referred to in the preceding paragraph.
Article 48-2Deleted
Chapter VII Special Provisions for International Applications under the Patent Cooperation Treaty
(The Filing of an Application for Utility Model Registration through an international application)
Article 48-3(1)An international application (limited only to an application for utility model registration) to which an international filing date is accorded based on the provisions of Article 11 (1), Article 11 (2) (b) or Article 14 (2) of the Patent Cooperation Treaty signed in Washington on June 19, 1970 (hereinafter referred to as the "Treaty" in this Chapter) and which includes Japan as a designated State under Article 4 (1) (ii) of the Treaty is deemed to be an application for a utility model registration filed on the relevant international filing date.
(2)The provisions of Article 184-3, paragraph (2) (The Filing of a Patent Application Through an International Application) of the Patent Act apply mutatis mutandis to the filing of an international application that has been deemed to be an application for utility model registration pursuant to the provisions of the preceding paragraph (hereinafter referred to as "international application for utility model registration").
(Translations of International Applications for Utility Model Registration filed in a Foreign Language)
Article 48-4(1)An applicant filing an international application for utility model registration in a foreign language (hereinafter referred to as "Foreign Language Application for Utility Model Registration") must submit Japanese translations of the description, claims, drawings (but only the descriptive text in the drawings, hereinafter the same applies in this Article), and the abstract, provided for in Article 3 (2) of the Treaty, as they stand on the international filing date provided for in paragraph (1) of the preceding Article (hereinafter referred to as the "international filing date") to the Commissioner of the Patent Office, within two years and six months (hereinafter referred to as the "time limit for the submission of national documents") from the priority date referred to in Article 2 (xi) of the Treaty (hereinafter referred to as the "priority date") to two years and six months therefrom; provided, however, that the applicant filing a foreign language application for utility model registration that has submitted the document provided for in paragraph (1) of the following Article between two months before the end of the time limit for submitting national documents and the end of that time limit (unless the translations have been submitted prior to the submission of those documents) may submit the relevant translations within two months from the date of submission of those documents (hereinafter referred to as the "special time limit for the submission of translations").
(2)In a case as referred to in the preceding paragraph, if the applicant filing the foreign language application for utility model registration makes an amendment by virtue of Article 19 (1) of the Treaty, in lieu of submitting a translation of the claims as provided in the preceding paragraph, the applicant may submit a translation of the amended claims.
(3)If the translation of the description provided for in paragraph (1) and the translation of the claims provided for in the preceding two paragraphs (hereinafter referred to as the "translations of the description, etc.") are not been submitted within the time limit for submitting national documents (or, if the application is a foreign language application for utility model registration as referred to in the proviso to paragraph (1), within the special time limit for submitting translations; hereinafter the same applies in this Article), the international application for utility model registration is deemed to be withdrawn.
(4)If an applicant filing an international application for utility model registration that is deemed to be withdrawn pursuant to the provisions of the preceding paragraph, has a legitimate reason for having not been able to submit the translation of the description, etc., within the time limit for submitting national documents, the applicant may submit the translation of the description, etc. and the translations of the drawings and the abstract provided in paragraph (1) to the Commissioner of the Patent Office within two months after the date on which the reasons cease to exist, but not later than one year after the end of the time limit for submitting national documents.
(5)Translations submitted under the provisions of the preceding paragraph are deemed to have been submitted to the Commissioner of the Patent Office at the time just before the time limit for the submitting national documents expires.
(6)If any amendment by virtue on the provisions of Article 19 (1) of the Treaty is made, the applicant submitting the translation of the claims provided for in paragraph (1) may further submit a Japanese translation of the amended claims no later than the date on which the time limit for submitting national documents expires (or, if the applicant makes a request under the provisions of Article 23 (2) or Article 40 (2) of the Treaty within the time limit for submitting national documents (hereinafter referred to as "request for national processing"), the time of filing the request for national processing, (hereinafter referred to as "standard time for national processing")).
(7)The provisions of the main clause of Article 184-7, paragraph (3) of the Patent Act apply mutatis mutandis if a translation provided for in paragraph (2) or the preceding paragraph is not submitted.
(Submission of Documents and Order to Amend Procedures)
Article 48-5(1)An applicant filing an international application for utility model registration must submit a document to the Commissioner of the Patent Office within the time limit for submitting national documents, stating the following particulars:
(i)the name, and the address or residence of the applicant;
(ii)the name, and the address or residence of the creator of the device; and
(iii)the international application number and other particulars specified by Order of the Ministry of Economy, Trade and Industry.
(2)In the following cases, the Commissioner of the Patent Office may order that a procedural amendment be made within a reasonable, specified period of time:
(i)the document that must be submitted pursuant to the provisions of the preceding paragraph is not submitted within the time limit for submitting national documents;
(ii)the procedure under the provisions of the preceding paragraph violate the provisions of Articles 7, paragraphs (1) through (3) or Article 9 of the Patent Act as applied mutatis mutandis pursuant to Article 2-5, paragraph (2);
(iii)the procedure under the provisions of the preceding paragraph violates the formal requirements specified by an Order of the Ministry of Economy, Trade and Industry;
(iv)the translation of the abstract that must be submitted pursuant to provisions of paragraph (1) of the preceding Article is not submitted within the time limit for submitting national documents (or, if the application is a foreign language application for utility model registration as referred to in the proviso to paragraph (1) of the preceding Article, the special time limit for submitting translations);
(v)a fee that must be paid pursuant to Article 32, paragraph (1) not paid within the time limit for submitting national documents;
(vi)a fee that must be paid pursuant to the provisions of Article 54, paragraph (2) are not paid within the time limit for submitting national documents.
(3)The provisions of Article 184-5, paragraph (3) of the Patent Act apply mutatis mutandis to an amendment that is based on an order under the provisions of the preceding paragraph.
(4)An applicant filing an international application for utility model registration may not file a request for national processing, with respect to an international application for utility model registration filed in a Japanese language (hereinafter referred to as a "Japanese language application for utility model registration" until after undertaking the procedure under paragraph (1); may not file a request for national processing with respect to the relevant foreign language application for utility model registration until after undertaking procedures under the provisions of paragraph (1) and Article 48-4; and may not file a request for national processing with respect to either such application until after paying the registration fees that must be paid pursuant to Article 32, paragraph (1) and the fees that must be paid pursuant to Article 54, paragraph (2).
(Effect of the Application or Description, in an International Application)
Article 48-6(1)The request in an international application for utility model registration as of the international filing date is deemed to be a request submitted pursuant to Article 5, paragraph (1).
(2)The description, as of the international filing date, of a Japanese language application for utility model registration, or the translation of the description, as of the international filing date of a foreign language application for utility model registration is deemed to be the description submitted with the request pursuant to Article 5, paragraph (2); the utility model registration claims as of the international filing date, of a Japanese language application for utility model registration or the translation of the claims, as of the international filing date, of a foreign language application for utility model registration are deemed to be the claims submitted with the request pursuant to that paragraph: the drawings, as of the international filing date, of a Japanese language application for utility model registration, or the drawings (other than the descriptive text in the drawings) and the translation of the descriptive text in the drawings as of the international filing date, of a foreign language application for utility model registration are deemed to be the drawings, submitted with the request pursuant to that paragraph; are deemed to be the drawings submitted with the request pursuant to that paragraph; and the abstract of the Japanese language application for utility model registration or the translation of the abstract of a foreign language application for utility model registration is deemed to be the abstract submitted with the request pursuant to that paragraph.
(3)Notwithstanding the preceding paragraph, if a translation of the claims as amended by virtue of Article 19 (1) of the Treaty is submitted pursuant to Article 48-4, paragraph (2) or (6), the translation of the amended claims is deemed to be the utility model registration claims submitted with the request pursuant to Article 5, paragraph (2).
(Submission of Drawings)
Article 48-7(1)If an international application for utility model registration does not include a drawing,, the applicant must submit one to the Commissioner of the Patent Office within the standard time for national processing.
(2)If a drawing as under the provisions of the preceding paragraph is not submitted within the standard time for national processing, the Commissioner of the Patent Office may order the applicant filing the international application for utility model registration to submit one within a reasonable period of time.
(3)If a person ordered to submit a drawing pursuant to the provisions of the preceding paragraph does not submit one within the period of time that the Commissioner of the Patent Office specifies pursuant to that paragraph, the commissioner may dismiss the relevant international application for utility model registration.
(4)The submission of a drawing pursuant to the provisions of paragraph (1) or based on the order under the provisions of paragraph (2) (if a brief description of the drawing is submitted with it, this means the submission of the drawing description) is deemed to be a procedural amendment under the provisions of Article 2-2, paragraph (1). The provisions of the proviso to Article 2-2, paragraph (1) does not apply in such a case.
(Special Provisions Concerning Amendment)
Article 48-8(1)The provisions of the proviso to Article 2-2, paragraph (1) does not apply to an amendment that is, pursuant to the provisions of Article 184-7, paragraph (2) and Article 184-8, paragraph (2) of the Patent Act as applied mutatis mutandis pursuant to Article 48-15, paragraph (1), to be an amendment under the provisions of Article 2-2, paragraph (1).
(2)The provisions of the proviso to Article 2-2, paragraph (1) does not apply to the amendment of an international application for utility model registration by virtue of Article 28 (1) or Article 41 (1) of the Treaty.
(3)With regard to the allowable scope of amendment to the description, utility model registration claims or drawings in a foreign language application for utility model registration, the phrase "the description, utility model registration claims, or drawings originally accompanying the request" in Article 2-2, paragraph (2) is deemed to be replaced with "the description, claims, or drawings in the international application as of the international filing date referred to in Article 48-4, paragraph (1)."
(4)The provisions of Article 184-12, paragraph (1) of the Patent Act apply mutatis mutandis to the amendment of an international application for utility model registration based on the main clause of Article 2-2, paragraph (1) or by virtue of Article 28 (1) or Article 41 (1) of the Treaty.In this case, the term "Article 195, paragraph (2)" in Article 184-12, paragraph (1) of the Patent Act is deemed to be replaced with "registration fees that must be paid pursuant to the provisions of Article 32, paragraph (1) of the Utility Model Act and Article 54, paragraph (2) of the relevant Act," and the phrase "has been paid, and the standard time for national processing has passed" is deemed to be replaced with "has been paid."
(Special Provisions Concerning Requirements for Utility Model Registration)
Article 48-9In applying the provisions of Article 3-2, to a case in which another application for utility model registration as provided in Article 3-2 or a patent application as provided in that Article is an international application for utility model registration or an international patent application as referred to in Article 184-3, paragraph (2) of the Patent Act, the phrase " in another application for utility model registration or for patent" in Article 3-2 is deemed to be replaced with "in another application for utility model registration or in a patent application (other than one that is a foreign language application for utility model registration as referred to in Article 48-4, paragraph (1) of the Utility Model Act or a foreign language patent application as referred to in Article 184-4, paragraph (1) of the Patent Act, and which is deemed to have been withdrawn pursuant to Article 48-4, paragraph (3) of the Utility Model Act or Article 184-4, paragraph (3) of the Patent Act"; the phrase "the issuance or" is deemed to be replaced with "the issuance," the term "or the publication of the patent application" is deemed to be replaced with "or the publication of the patent application, or the international publication provided in Article 21 of the Patent Cooperation Treaty signed in Washington on June 19, 1970," and the term "the description, claims for a utility model registration or drawings originally accompanying the written application" is deemed to be replaced with "the description, claims,, or drawings in an international application, as of the international filing date referred to in Article 48-4, paragraph (1) of this Act or Article 184-4, paragraph (1) of the Patent Act."
(Special Provisions on Priority Claims Based on Applications for Utility Model Registration)
Article 48-10(1)The provisions of the proviso to Article 8, paragraph (1), Article 8, paragraph (4) and Article 9, paragraph (2) do not apply to an international application for utility model registration.
(2)In applying the provisions of Article 8, paragraph (3) to a Japanese language application for utility model registration, the phrase "at the time that the application for utility model registration is published in the gazette in which the utility model appears " in Article 8, paragraph (3) is deemed to be replaced with " at time that the application for the utility model registration is published in the gazette in which the utility model appears or at the time that the international publication prescribed in Article 21 of the Patent Cooperation Treaty done at Washington on June 19, 1970 is effected".
(3)In applying the provisions of Article 8, paragraph (3) to foreign language application for utility model registration, the phrase "in the description, utility model registration claims, or drawings originally accompanying the request in an application for utility model registration claiming priority as under Article 8, paragraph (3) is deemed to be replaced with "in the description, claims or drawings in an international application claiming priority as of the international filing date referred to in Article 48-4, paragraph (1)," and the phrase "at the time that the application for the utility model registration is published in the utility model gazette in which the utility model appears" is deemed to be replaced with "at the time that the application for the utility model registration is published in the utility model gazette or at the time that the international publication prescribed in Article 21 of the Patent Cooperation Treaty done at Washington on June 19, 1970 is effected".
(4)In applying the provisions of Articles 8, paragraphs (1) through (3) and Article 9, paragraph (1), if an earlier application referred to in Article 8, paragraph (1) of this Act is an international application for a utility model registration or an international patent application as referred to in Article 184-3, paragraph (2) of the Patent Act, the phrase "the description, utility model registration claims, patent claims, or drawings originally accompanying the request" in Articles 8, paragraphs (1) and (2) is deemed to be replaced with "the description, claims, or drawings in an international application, as of the international filing date referred to in Article 48-4, paragraph (1) of the Utility Model Act or Article 184-4, paragraph (1) of the Patent Act," the phrase "the description, utility model registration claims, patent claims, or drawings originally accompanying the request in the earlier application" in Article 8, paragraph (3) is deemed to be replaced with "the description, claims, or drawings in an international application, as of the international filing date referred to in Article 48-4, paragraph (1) of this Act or Article 184-4, paragraph (1) of the Patent Act," the phrase "publication of unexamined application" in Article 8, paragraph (3) is deemed to be replaced with "the international publication provided in Article 21 of the Patent Cooperation Treaty done at Washington on June 19, 1970," and the phrase "when a period specified by Order of the Ministry of Economy, Trade and Industry has lapsed from the application date" in Article 9, paragraph (1) is deemed to be replaced with "at the standard time for national processing standard time referred to in Article 48-4, paragraph (6) of this Act or Article 184-4, paragraph (6) of the Patent Act or at the time when a period specified by Order of the Ministry of Economy, Trade and Industry has passed from the international filing date referred to in Article 48-4, paragraph (1) of this Act or Article 184-4, paragraph (1) of the Patent Act, whichever is later."
(Special Provisions on the Conversion of Applications)
Article 48-11If an international application that is deemed to be a patent application pursuant to Article 184-3, paragraph (1) or Article 184-20, paragraph (4) of the Patent Act is a Japanese language patent application for utility model registration until after the procedure under Article 184-5, paragraph (1) of that Act has been undertaken; if such an international application is a foreign language application as referred to in Article 184-4, paragraph (1), it may not be converted until the procedures that paragraph, paragraph (4) of that Article, or Article 184-5, paragraph (1) of that Act has been undertaken; and in any case, it may not be converted into an application for utility model registration until after the fees that must be paid pursuant to Article 195,, paragraph (2) of that Act have been paid (or, if the international application is deemed to be a patent application pursuant to Article 184-20, paragraph (4) of that Act, until after the ruling provided for in Articles 184-20, paragraph (4) of that Act, until after the ruling provided for in Article 184-20, paragraph (4)).
(Special Provisions on the Due Date for Payment of Registration Fees)
Article 48-12With respect to the payment of registration fees in connection with an international application for utility model registration for all years from the first to the third year, the phrase "at the same time of the filing of the application for the utility model registration" in Article 32, paragraph (1) is deemed to be replaced with "within the time limit for the submitting national documents provided as provided in Article 48-4, paragraph (1) (if a request for national processing as prescribed in Article 48-4, paragraph (6) is filed, this means by the time of the request for national processing)."
(Restriction on the Timing of Filing a Request for a Technical Opinion About a Utility Model)
Article 48-13In respect of a request for a technical opinion about a utility model in connection with an international application for utility model registration, the term "Any person" in Article 12, paragraph (1) is deemed to be replaced with "after the standard time for national processing as prescribed in Article 48-4, paragraph (6) has passed, any person."
(Special Provisions Concerning Correction)
Article 48-13-2With respect to a correction under the provisions of Article 14-2, paragraph (1) to a foreign language application for utility model registration, the phrase "the description, utility model registration or drawings accompanying the request" in Article 14-2, paragraph (3) is deemed to be replaced with "the description, claims or drawings in the international application, as of the international filing date referred to in Article 48-4, paragraph (1)."
(Special Provisions Concerning Grounds for Invalidation)
Article 48-14In respect of a trial for invalidation of the registration of a utility model in connection with a foreign language application for utility model registration, the phrase "the utility model registration has been granted on an application for utility model registration with an amendment that does not comply with the requirements as stipulated in Article 2-2, paragraph (2)" in Article 37, paragraph (1), item (i) is deemed to be replaced with "the matter indicated in the description, utility model registration claims or drawings accompanying the request for a utility model registration in a foreign model registration as referred to in Article 48-4, paragraph (1), is not within the scope of the matter indicated in the description, claims, or drawings in the international application, as of the international filing date referred to in Article 48-4, paragraph (1)".
(Mutatis Mutandis Application of the Patent Act)
Article 48-15(1)Provisions of Articles 184-7 (Amendments based on Article 19 of the Treaty Japanese Language Patent Application) and Article 184-8, paragraphs (1) through (3) (Amendment under Article 34 of the Treaty) of the Patent Act apply mutatis mutandis to the amendment of an international application for utility model registration based on the Treaty.In this case, the term "Article 17-2, paragraph (1)" in Articles 184-7, paragraph (2) and 184-8, paragraph (2) is deemed to be replaced with "Article 2-2. paragraph (1) of the Utility Model Act."
(2)The provisions of Article 184-11 (Special Provisions on Patent Administrators for Overseas Residents) of the Patent Act apply mutatis mutandis to procedures connected with international applications for utility model registration.
(3)The provisions of Articles 184-9, paragraph (6) and 184-14 of the Patent Act apply mutatis mutandis to international applications for utility model registration.
(International Application Deemed to be an Application for Utility Model Registration by Decision)
Article 48-16(1)If a refusal as provided in Article 25 (1)(a) of the Treaty or a declaration as provided in Article 25 (1) (a) or (b) of the Treaty has been issued by a receiving Office referred to in Article 2 (xv) of the Treaty, or if a finding as provided in Article 25 (1) (a) of the Treaty has been made by the International Bureau referred to in Article 2 (xix) of the Treaty in relation to an international application referred to in Article 2 (vii) of the Treaty (meaning an application for utility model registration only) that lists Japan as a designated State as referred to in Article 4 (1)(ii) of the Treaty, an applicant filing an international application as referred to in Article 2 (vii) of the Treaty may petition the Commissioner of the Patent Office, pursuant to Order of the Ministry of Economy, Trade and Industry, to make the decision provided for in Article 25 (2)(a) of the Treaty within the time frame specified by Order of the Ministry of Economy, Trade and Industry.
(2)A person filing a petition as referred to in the preceding paragraph in connection with an international application that has been filed in a foreign language must submit Japanese translations of the description, claims, drawings (but only the descriptive text in the drawings), and abstract and of other documents linked with the international application that are specified by Order of the Ministry of Economy, Trade and Industry to the Commissioner of the Patent Office at the time of the petition.
(3)Upon the filing of a petition as referred to in paragraph (1), the Commissioner of the Patent Office must decide whether the refusal, declaration or finding to which the petition pertains is justified in the light of the provisions of the Treaty and based on the Regulations on the Patent Cooperation Treaty.
(4)If the Commissioner of the Patent Office, pursuant to the preceding paragraph, decides that the refusal, declaration or finding, referred to in that paragraph was not justified in the light of the provisions of the Treaty and Regulations based on the Patent Cooperation Treaty, the international application subject to that decision is deemed to be an application for a utility model registration filed on the day that it is found would have been the international filing date if no such refusal, declaration, or finding had been made with respect to the international application.
(5)The provisions of Article 48-6, paragraphs (1) and (2), Article 48-7, Article 48-8, paragraph (3), Article 48-9, Article 48-10, paragraphs (1), (3) and (4), and Articles 48-12 through 48-14 of the Utility Model Act and Article 184-3, paragraph (2), Article 184-9, paragraph (6), Article 184-12, paragraph (1) and Article 184-14 of the Patent Act apply mutatis mutandis to international applications that are deemed to be an application for utility model registration under the provisions of the preceding paragraph.In this case, the technical replacement of the necessary terms for the mutatis mutandis application of the relevant provisions is specified by Cabinet Order.
Chapter VIII Miscellaneous Provisions
(Registration in the Utility Model Register)
Article 49(1)The following particulars are registered in the utility model register maintained at the Japan Patent Office:
(i)the establishment of a utility model, its transfer, modification under a trust, expiration, restoration, and restrictions on its disposal;
(ii)the establishment of an exclusive licence, its preservation, transfer, modification under a trust, expiration, restriction, and its disposal;
(iii)the establishment of a pledge on a utility model or exclusive license, the transfer of such a pledge, its modification, extinguishment, and restrictions on its disposal.
(2)The utility model register may be prepared, in whole or in part, on magnetic tape. (this includes any other medium onto which a fixed set of information can be securely recorded using a means equivalent to that used for recording onto magnetic tape; the same applies hereinafter).
(3)The particulars of registration that need to be stipulated beyond what is prescribed in this Act are provided for by Cabinet Order.
(Issuance of a Certificate of Utility Model Registration)
Article 50(1)The Commissioner of the Patent Office issues a certificate of utility model registration to the holder of the utility model when the registration is establishing the utility model and if a correction as referred to in Article 14-2, paragraph (1) is made, or if the transfer of the utility model right has been registered based on a request made under the provisions of Article 17-2, paragraph (1).
(2)The re-issuance of a certificate of utility model registration is provided by Order of the Ministry of Economy, Trade and Industry.
(Special Provisions on Utility Model Registration or Utility Model Covering Two or more Claims)
Article 50-2In applying the provisions of Article 12, paragraph (2), Article 14-2, paragraph (8) of the Utility Model Act, Article 97, paragraph (1) or Article 98, paragraph (1), item (i) of the Patent Act as applied mutatis mutandis pursuant to Article 26 of this Act, Article 34, paragraph (1), item (iii), Article 37, paragraph (3), Article 125 of the Patent Act as applied mutatis mutandis pursuant to Article 41 of this Act, Article 132, paragraph (1) of the Patent Act as applied mutatis mutandis in Article 174, paragraph (3) of the Patent Act as applied mutatis mutandis pursuant to Article 41 or Article 45, paragraph (1) of this Act, Article 44 of this Act, Article 176 of the Patent Act as applied mutatis mutandis pursuant to Article 45, paragraph (1) of this Act, Article 49, paragraph (1), item (i) of this Act, or Article 193, paragraph (2), item (v) of the Patent Act as applied mutatis mutandis pursuant to Article 53, paragraph (2) of this Act to a utility model registration or a utility model with tow ore more claims, the utility model registration is deemed to have been granted, or the utility model is deemed to exist, on a claim-by-claim basis.
(Utility Model Registration Mark)
Article 51The utility model holder, exclusive licensee or non-exclusive licensee must endeavor to mark, pursuant to Order of the Ministry of Economy, Trade and Industry, products covered by the registered utility model or the packaging of the same with a mark (hereinafter referred to as an "utility model registration mark") indicating the product to be covered by a registered utility model.
(Prohibition of a False Marking)
Article 52It is prohibited for any person to take the following actions.
(i)placing a utility model registration mark or a mark that is liable to cause confusion with the same on a product other than one that is covered by a registered utility model or on the packaging of such a product;
(ii)transferring ownership of, renting out, or displaying for the purpose of transferring ownership of or renting out an article other than a product covered by a registered utility model,, or the packaging of such an article, which bears a utility model registration mark or a mark that could be confused with the same; or
(iii)representing an article other than a product covered by a registered utility model to be covered by a registered utility model in an advertisement, or making a representation in an advertisement that could be confused with meaning this, in order to cause that article to be manufactured or used, or for the purpose of transferring ownership of or renting out that article.
(Utility Model Gazette)
Article 53(1)The Japan Patent Office publishes the utility model gazette.
(2)The provisions of Article 193, paragraph (2) (limited to the parts to which items (iv) through (vi), (viii) and (ix) pertain) apply mutatis mutandis to the utility model gazette.
(Fees)
Article 54(1)The following persons must pay the amount of fees that Cabinet Order specifies in view of the actual costs:
(i)a person filing a request for the extension of a time limit under the provisions of Article 5, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 2-5, paragraph (1) of this Act, Article 32, paragraph (3) of this Act, or Article 4 of the Patent Act as applied mutatis mutandis pursuant to Article 14-2, paragraph (5), Article 39-2, paragraph (4), Article 45, paragraph (2) or Article 54-2, paragraph (5) of this Act, or for a change of the date under the provisions of Article 5, paragraph (2) of the Patent Act as applied mutatis mutandis pursuant to Article 2-5, paragraph (1) of this Act;
(ii)a person filing notification of succession pursuant to the provisions of Article 34, paragraph (4) of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (2) of this Act;
(iii)a person filing a request to be reissued a certificate of utility model registration;
(iv)a person filing a request to be reissued a certificate pursuant to Article 186, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 55, paragraph (1) of this Act;
(v)a person filing a request to be issued a certified copy of a document or an extract of a document pursuant to Article 186, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 55, paragraph (1) of this Act;
(vi)a person filing a request to inspection or copy a document pursuant to Article 186, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 55, paragraph (1);
(vii)a person filing a request pursuant to Article 186, paragraph (1) of the Patent Act as applied mutatis mutandis pursuant to Article 55, paragraph (1) of this Act, to be issued a document showing the information stored in a part of the utility model register that has been created on magnetic tape.
(2)A person set forth in the center column of the appended table must pay the amount of fees that Cabinet Order specifies within the scope of the amount of money set forth in the lower column of the table.
(3)The two preceding paragraphs do not apply if the person that would be required to pay the fee pursuant to those paragraphs is the national government.
(4)Notwithstanding the provisions of paragraph (1) or (2), if a utility model or a right to obtain a utility model registration is held under the joint ownership of the national government and a person or persons other than the national government and their shares have been agreed upon, the fee that is payable by the national government pursuant to paragraph (1) or (2) in respect of their own utility model or right to obtain a utility model registration (but only a fee specified by Cabinet Order; excluding the fee for filing for a technical opinion about a utility model) is the amount arrived at by multiplying the fee provided for in those provisions by the percentage that represents the share of each person other than the national government, and, this is the amount that the person or persons other than the national government must pay.
(5)Notwithstanding the provisions of paragraph (2), if a utility model or a right to obtain a utility model registration is held under joint ownership with the national government or a person or persons receiving a reduction or exemption under paragraph (8) or the provisions of any other laws and regulations from the fee for filing for a technical opinion about a utility model (hereinafter referred to in this paragraph as a "reduction or exemption") and their shares have been agreed upon, the amount of the fee for filing for the technical opinion about the utility model which is payable by such persons pursuant to paragraph (2) in respect of their utility model or right to obtain a utility model registration is the sum total arrived at by first multiplying, for each joint owner other than the national government, the applicable fee for filing for the technical opinion about a utility model provided for in paragraph (2) (for a person receiving a reduction or exemption, this means the fee provided for in that paragraph less that reduction or exemption) by the percentage that represents that person's share, and then adding together the amounts so arrived at, and this sum total is the amount that the person or persons other than the national government must pay.
(6)If the amount of a fee calculated pursuant to one of the two preceding paragraphs is not a multiple of ten yen, that fee is rounded down to the nearest multiple of ten yen..
(7)Payment of a fee referred to in paragraph (1) or (2) must be made with patent revenue stamps, pursuant to Order of the Ministry of Economy, Trade and Industry; provided, however, that if so stipulated by an Order of the Ministry of Economy, Trade and Industry, a cash payment may be made.
(8)If the person requesting a technical opinion about a utility model in connection with an device claimed in the application for utility model registration or in connection with a registered utility model is the creator of that device claimed in that application for a utility model registration, the creator of that registered utility model, or the heir of the same, and the Commissioner of the Patent Office finds that, due to financial hardship, it would be difficult for the person to pay the fee that pursuant to paragraph (2), must be paid for filing the request for the technical opinion about a utility model the commissioner pursuant to the provisions specified by Cabinet Order, may reduce that fee or exempt the person from paying it.
(Return of Fees)
Article 54-2(1)If after a request for a technical opinion about a utility model is filed, it is deemed pursuant to Article 12, paragraph (7), not to have been filed, the fee the requester has paid pursuant to Article 54, paragraph (2) for filing that request is refunded to that person.
(2)If a demand for a trial for invalidation of the registration of a utility model is withdrawn within the time frame provided in Article 39-2, paragraph (3) or (5) (or, if the time frame period provided in Article 39-2, paragraph (3) has been extended under the provisions of Article 4 of the Patent Act as applied mutatis mutandis pursuant to Article 39-2, paragraph (4), within the extended time frame), the fee for filing the demand for trial or appeal which the person demanding the trial or appeal has paid pursuant to Article 54, paragraph (2) is refunded to that person upon request.
(3)A request for a refund of the fees under the provisions of the preceding paragraph may be filed once six months have passed since the date on which the demand for the trial for invalidation of the registration of a utility model is withdrawn.
(4)If the intervenor in a trial for invalidation of the registration of a utility model withdraws the application for intervention within 30 days from the receipt of notice under Article 39, paragraph (5), the fee that the intervenor has paid pursuant to Article 54, paragraph (2) for applying to intervene is refunded to the intervenor upon request.
(5)The provisions of Article 4 of the Patent Act apply mutatis mutandis to the time frame provided in the preceding paragraph (4).In this case, the phrase "The Commissioner of the Patent Office" in that Article is deemed to be replaced with "The chief administrative judge."
(6)Notwithstanding the provisions of paragraph (4), if the intervenor in a trial for invalidation of the registration of a utility model is unable to withdraw the application for invention with the period provided for in that paragraph due to reasons beyond the intervenor's control, but withdraws the application within 14 days (or within two months, if the intervenor is an overseas resident) after the date on which those reasons cease to exist and no later than six months after the end of the aforementioned period, the fees that the intervenor has paid pursuant to Article 54, paragraph (2) for applying to intervene are refunded to the intervenor upon request.
(7)A request for refund of the fees under the provisions of paragraphs (4) and (6) may not be filed once six months have passed since the date on which the application for intervention was withdrawn.
(8)If the intervenor in a trial for invalidation of the registration of a utility model does not withdraw the application for intervention, but the demand for the trial is withdrawn within the time frame provided in paragraph (4) or (6) (or, if the frame provided in paragraph (4) has been extended pursuant to Article 4 of the Patent Act as applied mutatis mutandis pursuant to paragraph (5), within the extended time frame), the fees that the intervenor has paid pursuant to Article 54, paragraph (2) for filing the application to intervene are refunded to the intervenor upon request; provided, however, that this does not apply if the trial procedure have been continued pursuant to Article 148, paragraph (2) of the Patent Act as applied mutatis mutandis pursuant to Article 41.
(9)A request for refund of the fees under the preceding paragraph may not be filed once one year has passed since the date on which the demand for the trial for invalidation of the registration of a utility model was withdrawn.
(10)Fees paid in excess or in error are refunded at the request of the person that paid them.
(11)A request for a refund of fees under paragraph (11) may not be filed once one year has passed since the date on which they were paid.
(12)If the person making a request for the refund of a fee prescribed in paragraph (2), (4), (6), (8) or (10), is unable to make the request prescribed in within the period provided in paragraphs (3), (7), (9), (11) or prescribed in the previous paragraph, due to reasons beyond their control, the person may make the request within 14 days (or within two months, if the demandant is an overseas resident) from the date on which those reasons cease to exist, but not later than six months after the aforementioned period..
(Mutatis Mutandis Application of the Patent Act)
Article 55(1)The provisions of Article 186 (Request for a Certificate) of the Patent Act apply mutatis mutandis to a utility model registration.
(2)The provisions of Articles 189 through 192 (Service) of the Patent Act apply mutatis mutandis to services under the provisions of this Act.
(3)The provisions of Article 194 of the Patent Act apply mutatis mutandis to procedures.In this case, the term "the examination" in paragraph (2) of the relevant Article is deemed to be replaced with "the preparation of a technical opinion about a utility model provided for Article 12, paragraph (1) of the Utility Model Act."
(4)The provisions of Article 195-3 of the Patent Act apply mutatis mutandis to a disposition under the provisions of this Act or under an order issued based on this Act.
(5)The provisions of Article 195-4 (Restriction on Appeals under the Provisions of the Administrative Appeals Act) of the Patent Act apply mutatis mutandis to a trial decision, a ruling dismissing a written request for a trial or appeal, or retrial, and to a disposition with regard to which it is decided that an appeal may not be filed pursuant to this Act.
Chapter IX Penal Provisions
(The Crime of Infringement)
Article 56A person who infringes a utility model right or exclusive license is subject to imprisonment with required labor for a term not exceeding five years, a fine not exceeding 5,000,000 yen, or both.
(The Crime of Fraud)
Article 57A person who has obtained a utility model registration or a trial decision by means of a fraudulent act is punished by imprisonment with work for a term not exceeding one year or a fine not exceeding 1,000,000 yen.
(The Crime of False Marking)
Article 58A person that fails to comply with Article 52 is subject to imprisonment with required labor for a term not exceeding one year or a fine not exceeding 1,000,000 yen.
(The Crime of Perjury)
Article 59(1)A witness, expert or interpreter who has sworn under oath pursuant to this Act and then offered a false statement, false expert opinion, or false interpretation to the Japan Patent Office or the court commissioned thereby is subject to imprisonment with required labor for a term of between three months and ten years.
(2)If a person who has committed the crime referred to in the preceding paragraph makes a voluntary confession before the certified copy of the judgment in the case is served or before the trial decision becomes final and binding, the sentence may be reduced or remitted.
(The Crime of Disclosing Confidential Information)
Article 60Any present or former official of the Japan Patent Office who discloses or misappropriates confidential information about an Device claimed in a pending application for utility model registration that the official has learned in connection with official duties is subject to imprisonment with required labor for a term not exceeding one year or a fine not exceeding 500,000 yen.
(The Crime of Violating a Protective Order)
Article 60-2(1)A person that violates an protective order under the provisions of Article 105-4, paragraph 1 of the Patent Act as applied mutatis mutandis pursuant to Article 30 of this Act is subject to imprisonment with required labor for a term not exceeding five years, a fine not exceeding 5,000,000 yen, or both.
(2)The crime referred to in the preceding paragraph may not be prosecuted unless a complaint is filed.
(3)The crime referred to in paragraph (1) also applies to a person who commits that crime outside Japan.
(Dual Liability)
Article 61(1)If the representative of a corporation, or the agent, employee or other worker of a corporation or individual commits a, violation of the provisions set forth in one of the following items in connection with the business of that corporation or individual, beyond the offender being subject to punishment, the corporation is subject to the fine prescribed in the relevant item and the individual is subject to the fine prescribed in the Article referred to in that item:
(i)Article 56 or 60-2, paragraph (1), a fine not exceeding 300 million yen; and
(ii)Article 57 or 58, a fine not exceeding 30 million yen.
(2)In a case referred to in the preceding paragraph, a complaint as referred to in Article 60-2, paragraph (2) which is filed against the offender also has effect against the corporation or individual, and a complaint that is filed against the corporation or individual also has effect against the offender.
(3)If a fine is imposed on a corporation or individual pursuant to paragraph (1) in connection with a violation referred to in Article 56 or 60-2, paragraph (1), the period of prescription is governed by the same rules as for the crimes referred to in those provisions.
(Non-Criminal Fines)
Article 62If a person who has sworn under oath pursuant to the provisions of Article 207, paragraph (1) of the Code of Civil Procedure, as applied mutatis mutandis pursuant to Article 151 of the Patent Act which is respectively applied upon mutatis mutandis application pursuant to Articles 71, paragraph (3) of the Patent Act as applied mutatis mutandis pursuant to Article 26 of the Patent Act, or pursuant to Article 41 of the Patent Act, or upon mutatis mutandis application pursuant to Article 174, paragraph (3) of the Patent Act as it applies mutatis mutandis pursuant to Article 45 of this Act, , offers a false statement to the Japan Patent Office or the court commissioned thereby, the relevant person is subject to a non-criminal fine not exceeding 100,000 yen.
Article 63A person that, pursuant to this Act, has been summoned by the Japan Patent Office or the court commissioned thereby but that, without a legitimate reason for doing so, fails to appear or refuses to swear, under oath, offer a statement, testify, give an expert opinion, or provide interpretation is subject to a non-criminal fine not exceeding 100,000 yen.
Article 64A person that, pursuant to this Act is, ordered by the Japan Patent Office or the court commissioned thereby to submit or present documents or other materials for examination or for the preservation of evidence, but that, without a legitimate reason for doing so, fails to comply with that order, is subject to a non-criminal fine not exceeding 100,000 yen.
Supplementary Provisions
The effective date of this Act is prescribed separately by an Act.
Supplementary Provisions[Act No. 140 of May 16, 1962 Extract][Extract]
(1)This Act comes into effect as of October 1, 1962.
(2)Unless otherwise provided for in the Supplementary Provisions, the provisions revised by this Act also apply to any matters that have arisen prior to the enforcement of this Act; provided, however, that this does not preclude the effect that has arisen under the provisions prior to revision by this Act.
(3)Prior laws continue to govern a lawsuit which is pending when this Act comes into effect, notwithstanding the provisions as amended by this Act to the effect that the lawsuit may not be filed.
(4)Prior laws continue to govern the jurisdiction over a lawsuit which is pending when this Act comes into effect, notwithstanding the provisions as amended by this Act to the effect that the jurisdiction is the exclusive jurisdiction.
(5)Prior laws continue to govern the statute of limitations for filing a lawsuit concerning a disposition or determinations, of which the statute of limitations for filing a lawsuit pursuant to the provisions before the revision of this Act was actually in progress at the time of the enforcement of this Act, provided, however, that this is limited to cases where the statute of limitations for filing a lawsuit pursuant to the provisions revised by this Act is shorter than that pursuant to the provisions prior to the revision by this Act.
(6)The statute of limitations for filing a party suit concerning a disposition imposed or a determination made prior to the enforcement of this Act, for which the statute of limitations has come to be set due to the revision by this Act, is counted from the date of enforcement by this Act.
(7)Prior laws continue to govern an action for rescission of a disposition or determination which is actually pending at the time of enforcement of this Act, notwithstanding the provisions amended by this Act stipulating that either of the parties in the relevant legal relationship is to be the defendant; provided, however, that the court may, by its decision, permit to change the action to the party suit based on a motion by the plaintiff.
(8)The provisions of the second sentence of Article 18, and Article 21, paragraphs (2) through (5) inclusive of the Administrative Case Litigation Act apply mutatis mutandis to the case referred to in the proviso to the preceding paragraph.
Supplementary Provisions[Act No. 161 of September 15, 1962 Extract][Extract]
(1)This Act comes into effect as of October 1, 1962.
(2)The provisions revised by this Act also apply to the dispositions by an administrative agency taken prior to the enforcement of this Act, the inaction by an administrative agency pertaining to an application filed prior to the enforcement of this Act or any other matters that have occurred prior to the enforcement of this Act, except as otherwise provided for in these Supplementary Provisions; provided, however, that those provisions are not to preclude the effect that has arisen pursuant to the provisions prior to their revision by this Act.
(3)Even after this Act comes into effect, the provisions previously in force continue to govern with respect to petition, request for review, objection, or other appeals (hereinafter referred to as "petitions, etc.") filed before this Act comes into effect. The same applies to a petition, etc. that is filed if a party remains dissatisfied with a determination, ruling or other disposition (hereinafter referred to as "determinations, etc.") that is reached before this Act comes into effect with respect to a petition, etc., or with a determination, etc. reached after this Act comes into effect.
(4)The Petitions, etc. prescribed in the preceding paragraph which pertains to a disposition on which an appeal under the Administrative Appeal Act may be filed after the enforcement of this Act is deemed to be an appeal under the Administrative Appeal Act with regard to the application of the Acts other than the relevant Act.
(5)Appeals under the Administrative Appeal Act may not be filed against Determinations, etc. applications for examination, the filing of objection or any other appeals filed after the enforcement of this Act pursuant to the provision of paragraph (3).
(6)With regard to a disposition imposed by an administrative agency prior to the enforcement of this Act, for which the Petitions, etc. may be filed pursuant to the provisions prior to revision by this Act and for which the statute of limitations has not been set, the statute of limitations for filing an appeal pursuant to the Administrative Appeal Act is counted from the date of enforcement of this Act.
(8)Prior laws continue to govern the applicability of penal provisions to acts committed prior to the enforcement of this Act.
(9)Beyond what is provided for in the preceding eight paragraphs, the necessary transitional measures for the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 148 of July 4, 1964]
This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding nine months from the date of promulgation.
Supplementary Provisions[Act No. 81 of May 24, 1965 Extract][Extract]
This Act comes into effect as of the date on which the Accession to the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967.
Supplementary Provisions[Act No. 91 of May 22, 1970 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of January 1, 1971.
(Application to the Patent Act Prior to Revision)
Article 2Prior laws continue to govern patent applications actually pending before the Japan Patent Office at the time of the enforcement of this Act, until the examiner's decision or a trial decision for the patent applications becomes final and binding, except where it has otherwise been provided for.
(Patent Fees)
Article 3Prior laws continue to govern patent fees that have been paid or should have been paid for, prior to the enforcement of this Act, notwithstanding Article 107, paragraph (1) of the revised Patent Act (hereinafter, referred to as the "New Patent Act").
(The Reason for an Invalidation of a Patent)
Article 4Prior laws continue to govern the reason for an invalidation of a patent application that have been filed prior to the enforcement of this Act, notwithstanding Article 29-2 and Article 123, paragraph (1), item (i) of the new Patent Act.
(Fees for Filing a Patent Application)
Article 5Provisions of Article 195, paragraph (1) of the new Patent Act applies to fees to be paid after the enforcement of this Act; provided, however, that, with respect to fees of item (iv) of the appended table of the new Patent Act, those do not apply to the patent applications filed prior to the enforcement of this Act.
(Transitional Measures Upon Revision of the Utility Model Act)
Article 6Provisions of Article 2 through the preceding Article of the Supplementary Provisions applies mutatis mutandis with respect to transitional measures upon revision of the Utility Model Act pursuant to the provisions of Article 2.
(Delegation to Cabinet Order)
Article 9Beyond what is provided by the preceding Articles, transitional measures necessary for the enforcement of this Act is specified by Cabinet Order.
Supplementary Provisions[Act No. 96: June 1, 1971 Extract][Extract]
(Effective Date)
(1)This Act comes into effect as of the date of promulgation.
Supplementary Provisions[Act No. 46: June 1, 1975 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of January 1, 1976; provided, however, that the revising provisions listed as follows, come into effect as of the date listed in the relevant item:
(i)the date of promulgation of :the revised provisions of the table of Article 107, paragraph (1) of the Patent Act and of the appended table of the Patent Act, among provisions of Article 1; the revised provisions of Article 31, paragraph (1) of the Utility Model Act and of the appended table of the Utility Model Act, among provisions of Article 2; the revised provisions of Articles 42, paragraphs (1) and (2) of the Utility Model Act and of the appended table of the Utility Model Act, among provisions of Article 3; the revised provisions of Articles 40, paragraphs (1) and (2) of the Trademark Act and of the appended table of the Trademark Act, among provisions of Article 4; and the provisions of paragraph (2) of the following Article and of Articles 3, paragraph (1),and 4 of the Supplementary Provisions.
(ii)the effective date of the revised provisions of the proviso to Article 17, paragraph (1) (excluding the part revising "and Article 64" to "Articles 17-3 and 64"), among provisions of Article 1; the revised provisions Article 13-2, paragraph (1) of the Utility Model Act among provisions of Article 2; the revised provisions of Article 4, paragraph (1) item (ii), Article 9, paragraph (1) among provisions of Article 4 and the provisions of Article 5; and the provisions of Articles 1 through 12 of the Paris Convention pursuant to the provisions of Article 20 (2) (C) of the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967.
(Transitional Measures Upon Revision of the Patent Act)
Article 2(1)Prior laws continue to govern patent applications actually pending before the Japan Patent Office at the time of the enforcement of this Act, until the examiner's decision or trial decision for the patent applications has become final and binding, except for fees that should be paid pursuant to the provision of Article 195, paragraph (1) of the revised Patent Act.
(2)Prior laws continue to govern patent fees that have been paid or should have been paid prior to the date prescribed by item (i) of the proviso through the preceding Article, notwithstanding the provision of Article 107, paragraph (1) of the revised Patent Act.
(3)Prior laws continue to govern grounds for invalidation of patent applications that have been filed prior to the enforcement of this Act.
(Transitional Measures Upon Revision of the Utility Model Act)
Article 3(1)The provisions of paragraph (1) of the preceding Article apply mutatis mutandis to utility model applications actually pending before the Japan Patent Office at the time of the enforcement of this Act, and the provision of paragraph (3) of the preceding Article apply mutatis mutandis to grounds for invalidation of utility model registrations pertaining to utility models that have been filed prior to the enforcement of this Act.
(2)The provisions of the paragraph (2) of the preceding Article apply mutatis mutandis to registration fees that have been paid or should have been paid prior to the date prescribed by item (i) of the proviso to Article 1 of Supplementary Provisions.
Supplementary Provisions[Act No. 27 of April 24, 1978 Extract][Extract]
(Effective Date)
(1)This Act comes into effect as of the date of promulgation; provided, however, that the revised provisions of paragraph (1) of Article 11 of the Act on Real Estate Appraising and Valuation in Article 1 of this Act, the provisions of Articles 2, 3, 5 and 6, the revised provisions of paragraph (1) of Article 107 of the Patent Act in Article 19 of this Act, the revised provisions of paragraph (1) of Article 31 of the Utility Model Act in Article 20 of this Act, the revised provisions of paragraphs (1) and (2) of Article 42 of the Design Act in Article 21 of this Act, the revised provisions of paragraphs (1) and (2) of Article 40 of the Trademark Act in Article 22 of this Act, the revised provisions of paragraph (2) of Article 5 of the Guide Interpreter Act in Article 28 of this Act, and the provisions of Articles 29 and 30 come into effect as of May 1, 1978.
(Transitional Measures)
(2)Prior laws continue to govern the following examination fees, etc.;
(i) through (iii)omitted
(iv)the registration fees that have been paid or should have been paid prior to the enforcement of the revised provisions of Article 31, paragraph (1) of the Utility Model Act.
Supplementary Provisions[Act No. 30 of April 26, 1978 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as from the day when the Convention becomes effective in Japan; provided however, that the provisions of Chapter III come into effect as from the day when the agreement prescribed by Article 16 (3)(b) of the Convention comes into effect in the Japan Patent Office, and the provisions of Chapter IV and the following Article come into effect as from the day when the agreement prescribed by Article 16 (3)(b) of the Convention as applied mutatis mutandis pursuant to Article 32 (3) of the Convention comes into effect in the Japan Patent Office.
Supplementary Provisions[Act No. 30 of May 19, 1981 Extract][Extract]
(Effective Date)
(1)This Act comes into effect as of the date of promulgation; provided however, that the revised provisions of Article 11, paragraph (1) of the Act on Real Estate Appraising and Valuation in Article 1 of this Act, the provisions of Articles 2, 3, 5 and 6, the revised provisions of Article 107, paragraph (1) of the Patent Act in Article 19 of this Act, the revised provisions of Article 31, paragraph (1) of the Utility Model Act in Article 20 of this Act, the revised provisions of Article 42, paragraphs (1) and (2) of the Design Act in Article 21 of this Act, the revised provisions of Article 40, paragraphs (1) and (2) of the Trademark Act in Article 22 of this Act, the revised provisions of paragraph (2) of Article 5, paragraph (2) of the Guide Interpreter Act in Article 29 of this Act, and the provisions of Articles 30 comes into effect as from June 1, 1981.
(Transitional Measures)
(2)Prior laws continue to govern the following examination fees, etc.;
(i) through (iii)omitted
(iv)the registration fees that have been paid or should have been paid prior to the enforcement of the revised provisions of Article 31, paragraph (1) of the Utility Model Act.
Supplementary Provisions[Act No. 23 of May 1, 1984 Extract][Extract]
(Effective Date)
(1)This Act comes into effect as from the date on which twenty days have lapsed from the date of promulgation; provided however, that the provisions of Articles 24 through 27 and paragraphs (3) and (4) of Supplementary Provisions come into effect as from August 1, 1984.
(Transitional Measures)
(2)Prior laws continue to govern the following examination fees, etc.;
(i) and (ii)omitted
(iii)the registration fees that have been paid or should have been paid prior to the enforcement of the revised provisions of Article 31, paragraph (1) of the Utility Model Act.
Supplementary Provisions[Act No. 24 of May 1, 1984 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of July 1, 1984.
(Transitional Measures Upon the Start of Payment by Patent Revenue Stamps)
Article 8Notwithstanding the provisions of the Patent Act, the revised Utility Model Act, the revised Design Act, the revised Trademark Act or the revised Act on the International Applications under the Patent Cooperation Treaty that are revised pursuant to Article 3 through the preceding Article of Supplementary Provisions, when patent fees, patent surcharges, fees, registration fees, or registration surcharges are paid within two weeks as from the date of enforcement of this Act, revenue stamps or patent stamps may be used.
Supplementary Provisions[Act No. 41 of May 28, 1985 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date to be specified by Cabinet Order within a period not exceeding six months from the date of promulgation.
(Transitional Measures)
Article 3With respect to amendments on the description or the drawings accompanying an application for patent or utility model registration (limited to those filed prior to the transcript of a ruling of a publication of an unexamined application), which have been filed prior to the enforcement of this Act and have been dismissed by a ruling that they change the outline of the description or drawings accompanying the relevant application, the provisions of the Patent Act and the Utility Model Act prior to revision by this Act remains applicable even after the enforcement of this Act.
Article 4Prior laws continue to govern the application of penal provisions to acts committed prior to the enforcement of this Act.
(Delegation to Cabinet Order)
Article 5Beyond what is prescribed by the preceding Articles, transitional measures necessary for the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 27 of May 25, 1987 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of January 1, 1988; provided, however, that the provisions listed as follows comes into effect as from the date listed in the relevant item:
(i)the revised provisions adding a second sentence to Article 15, paragraph (1) of the Design Act, the revised provisions of Article 42, paragraphs (1) and (2) of the relevant Act, the revised provisions of Article 49 of the relevant Act and the revised provisions of the appended table of the relevant Act, in the provisions of Articles 1, 3 and 5 of this Act; the revised provisions adding a second sentence to Article 13, paragraph (1) of the Trademark Act, the revised provisions of Article 40, paragraphs (1) and (2) of the relevant Act, and the revised provisions of the appended table of the relevant Act, in the provisions of Article 6 of this Act; and the revisions of the next Article, Articles 4, 6, 7, 8 and 11 of Supplementary Provisions:June 1, 1987
(ii)the provisions for revising Article 184-4, paragraphs (1) through (4) of the Patent Act, the provisions for revising Article 184-5, paragraphs (1) and (2), items (i) and (iv) of the relevant Act, the provisions for revising Article 184-6, paragraph (2) of the relevant Act, the provisions for revising Article 184-7, paragraph (1) of the relevant Act, the provisions for revising Article 184-8 of the relevant Act, the provisions for revising Article 184-9, paragraph (1) of the relevant Act, the provisions for revising Article 184-10-2, paragraphs (1) and (2) of the relevant Act, the provisions for revising Article 184-11, paragraph (1) of the relevant Act, the provisions for revising Article 184-11-2 of the relevant Act, the provisions for revising Article 184-11-3, paragraph (4) of the relevant Act, the provisions for revising Article 184-12 of the relevant Act, the provisions for revising Article 184-13 of the relevant Act and the provisions for revising Article 184-16, paragraph (5) of the relevant Act, in the provisions of Article 2 of this Act; the provisions for revising Articles 48-4, paragraphs (1) through (4) of the Utility Model Act, the provisions for revising Article 48-5, paragraphs (1) and (2), items (i) and (iv) of the relevant Act, the provisions for revising Article 48-6, paragraph (2) of the relevant Act, the provisions for revising Article 48-7, paragraphs (1) and (2), the provisions for revising Article 48-8, paragraph (1) of the relevant Act, the provisions for revising Article 48-8-2, paragraph (4) of the relevant Act, the provisions for revising Article 48-9 of the relevant Act, the revisions for revising 48-10 of the relevant Act, and the provisions for revising Article 48-14, paragraphs (5) of the relevant Act in the provisions of Article 4 of this Act; and provisions for revising Article 13-2, paragraphs (1) and (2) of the Design Act, in the provisions of Article 5 of this Act:the day when the revocation of the declaration under the Article 64 (2) (a) of the Patent Cooperation Treaty provided for in the Article 64 (6) (b) of the Treaty signed in Washington on June 19, 1970 pursuant to the provisions of Article 64 (6) (b) of the relevant Act becomes effective
(Transitional Measures Upon Revision of the Utility Model Act Pursuant to the Provisions of Article 3)
Article 4(1)Prior laws continue to govern registration fees that have already been paid prior to the date prescribed by item (i) in the proviso of Article 1 of the Supplementary Provisions or those that should have been paid prior to the same date, of which payment is deferred pursuant to the provisions of Article 109 of the Patent Act applied mutatis mutandis in Article 34 of the Utility Model Act (limited to those paid within the grace period), notwithstanding the provisions of Article 31, paragraph (1) of the Utility Model Act revised by the provisions of Article 3.
(2)With regard to the trial of Article 37, paragraph (1) pertaining to the establishment of the utility model right which been registered prior to the date prescribed by item (i) in the proviso of Article 1 of Supplementary Provisions, the provisions of Article 38 of the Utility Model Act prior to revision pursuant to the provisions of Article 3 remain applicable even after the relevant date
(Transitional Measures Upon Revision of the Utility Model Act Pursuant to the Provisions of Article 4)
Article 5(1)Prior laws continue to govern provisions of Article 5, paragraph (4), Article 6, Article 11, item (iii), Article 37, paragraph (1) the non-itemized part thereof, item (iii), Article 41, Article 50-2 and Article 54, paragraph (3) of the revised Utility Model Act pursuant to the provisions of Article 4 (hereinafter referred to as the "new Utility Model Act") applies to applications of utility model registration filed after the enforcement of this Act, and with regard to applications of utility model registration filed prior to the enforcement of this Act.
(2)With regard to the application of the provisions of Article 31, paragraph (1) of the new Utility Model Act regarding the payment of registration fees pertaining to applications of utility model registration filed prior to the enforcement of this Act, the amount of registration fees listed in the table of the relevant paragraph are the amounts listed in the following table.
Period within term
|
Amount
|
First to third year
|
Annually 2,100 yen plus 100 yen per claim
|
Fourth to sixth year
|
Annually 6,100 yen plus 300 yen per claim
|
Seventh to tenth year
|
Annually 18,100 yen plus 900 yen per claim
|
(3)With regard to the application of the provisions of paragraph (2) of Article 54 of the new Utility Model Act regarding the payment of fees pertaining to applications of utility model registration filed prior to the enforcement of this Act, in item (iv) of the appended table "31,000 yen plus 1,000 yen per claim" is "32,000 yen", and in item (ix) of the same table "39,600 yen plus 4,400 yen per claim" is "44,000 yen".
(Delegation to Cabinet Order)
Article 11Beyond what is prescribed by Articles 2 through 6 and 8 of Supplementary Provisions, transitional measures necessary for the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 30 of June 13, 1990 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of a date specified by Cabinet Order within a period not exceeding one year from the date of promulgation; provided however, that the provisions of Articles 9 and 14, Article 15, paragraph (2), Article 16 (excluding the parts pertaining to application mutatis mutandis of Articles 15, paragraphs (1) and (3)), Articles 17 through19, 21, 22, 24 through 29, and 30 (excluding item (iii)), Articles 32, 34, 36, 37, and 39 (excluding the parts pertaining to application mutatis mutandis of Articles 23, 30, 31 and 35), Articles 41 and 42, Article 44, item (ii) and Article 9 of the Supplementary Provisions, and the provisions for revising Article 2, paragraph (2) of the Act on Payment of money for national revenue by revenue stamps (Act No. 142 of 1948) in Article 2, paragraph (2) of the Supplementary Provisions come into effect as of the date to be specified by Cabinet Order within a period not exceeding six months from the date of promulgation.
(Delegation to Cabinet Order)
Article 9Prior to the date of enforcement of this Act, procedures for maintaining an Electronic Data Processing System and other transitional measures necessary for the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 26 of April 23, 1993 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding one year from the date of promulgation; provided however, that the provisions for revising the table of Article 107, paragraph (1), the provisions for revising the appended table of the relevant Act (excluding the part deleting "(including opposition pertaining to publication of request" in item (vi) of the same table), and changing item (xii) of the same table to item (xiii) of the same table and adding item (i) next to (xi) of the same table); the provisions of Article 2 in the provisions of Article 1 of this Act; the revised provisions in Article 42, paragraphs (1) and (2) of the Design Act, and the provisions for revising the appended table of the relevant Act in the provisions of Article 4 of this Act; in the provisions of Article 5, the provisions for revising Article 40, paragraphs (1) and (2) of the Trademark Act and the provisions for revising the appended table of the relevant Act; and the provisions of paragraph (3) of the following Article and Articles 3, 6 through 10 and 17 of Supplementary Provisions are to come into effect as of July 1, 1993.
(Transitional Measures Upon Revision of the Utility Model Act Pursuant to the Provisions of Article 2)
Article 3Prior laws continue to govern registration fees that have already been paid prior to the date prescribed by the proviso to Article 1 of the Supplementary Provisions under the provisions of Article 31, paragraph (1) of the Utility Model Act prior to revision pursuant to Article 2 or those that should have been paid prior to the same date under the relevant paragraph, of which payment is deferred pursuant to the provisions of Article 109 of the former Patent Act applied mutatis mutandis in Article 34 of the Utility Model (limited to those paid within the grace period), notwithstanding the provisions of Article 31, paragraph (1), of the Utility Model Act revised by the provisions of Article 2.
(Transitional Measures Upon Revision of the Utility Model Act Pursuant to the Provisions of Article 3)
Article 4(1)With regard to utility model applications (excluding those filed under the former Utility Model Act prescribed in paragraph (1) of the following Article) actually pending before the Japan Patent Office at the time of the enforcement of this Act or the utility model registration, the utility model right, the examiner's decision or the trial decision pertaining to a utility model application filed prior to the enforcement of this Act, the provisions of the Utility Model Act prior to revision (hereinafter referred to as "the former Utility Model Act") pursuant to the provisions of Article 3, the Patent Attorneys Act prior to revision (Act No. 100 of 1921) pursuant to the provisions of Article 11 of Supplementary Provisions, the Export Commodities Design Act prior to the revision pursuant to the provisions of Article 12 of the Supplementary Provisions (Act No. 106 of 1959), the former Patent Act, the Design Act prior to revision pursuant to the provisions of Article 4 and the Act on Special Provisions of Procedures concerning Industrial Property Rights prior to revision pursuant to Article 15 of the Supplementary Provisions (Act No. 30 of 1990, hereinafter referred to as "the former Special Act" in this paragraph) remains applicable.In this case, the term "Order of Ministry of International Trade and Industry" in Article 54, paragraph (5) of the former Utility Model Act and in Articles 6, paragraph (3), Article 7, paragraph (1), and Article 8, paragraph (1) of the former Patent Act, is replaced with "Order of the Ministry of Economy, Trade and Industry."
(2)In a case of the preceding paragraph, with regard to a trial or appeal under Article 37, paragraph (1), Article 39, paragraph (1) or, Article 48-12, paragraph (1) of the former Utility Model Act appealed after the enforcement of the Partial Amendment of the Patent Act (Act No. 63 of 2011, hereinafter referred to as "2011 Amendment Act"), in the provisions listed in the left-hand column of the following table of the former Utility Model Act, which remains in force pursuant to the provisions of the preceding paragraph, the terms and phrases listed in the middle column are deemed to be replaced with the terms and phrases listed in the right-hand column of the same table, and any other technical replacement of terms necessary for application of the provisions of the relevant paragraph are specified by Cabinet Order.
Article 7-2, paragraph (2)
|
and Article 39, paragraph (3)
|
and Article 39, paragraph (7) (including cases where applied mutatis mutandis pursuant to paragraph (9) of Article 40-2)
|
Article 37
|
Article 37 (1) If a utility model registration falls under any of the following items, a request for atrial for invalidation of the registration of a utility model may be filed. In the event of two or more claims, a request for trial for invalidation of the registration of a utility model may be filed for each claim.
|
Article 37 (1) If a utility model registration falls under any of the following items, a request for trial for invalidation of the registration of a utility model may be filed. In the event of two or more claims, a request for trial for invalidation of the registration of a utility model may be filed for each claim.
|
(i) if the utility model registration has been granted in violation of Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 2-5 (3) of this Act, Article 3, Article 3-2, Article 4, paragraphs (1)through (3) of Article 7 or Article 7, paragraph (7) of this Act, or Article 38 of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1) of this Act;
|
(i) if the utility model registration has been granted in violation of Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 2-5, paragraph (3) of this Act, Article 3, Article 3-2, Article 4, paragraphs (1) through (3) of Article 7 or Article 7, paragraph (7) of this Act, or Article 38 of the Patent Act as applied mutatis mutandis pursuant to Article 11, paragraph (1) of this Act;
|
|
(ii) if the utility model registration has been granted in violation of a treaty;
|
(ii) if the utility model registration has been granted in violation of a treaty;
|
|
(ii)-2 if the correction of the description or the drawings attached to the application of the utility model registration has been made in violation of the provisions of Article 39, paragraph (1), the proviso or paragraphs (5) through (7) (including cases where applied mutatis mutandis pursuant to Article 40-2, paragraph (9)), or Article 40-2, paragraph (1), the proviso;
|
||
(iii) if the utility model registration has been granted with respect to an application for utility model registration that does not comply with the requirements provided in Article 5, paragraph (4) or (5) (excluding item (iii)) and paragraph (6);
|
(iii) if the utility model registration has been granted with respect to an application for utility model registration that does not comply with the requirements provided in Article 5, paragraph (4) or (5) (excluding item (iii)) and paragraph (6);
|
|
(iv) if the utility model registration has been granted on an application for a utility model registration filed by a person who is not the creator of the device and has not succeeded the right to obtain a utility model registration for the relevant device; and
|
(iv) if the utility model registration has been granted on an application for a utility model registration filed by a person who is not the creator of the device and has not succeeded the right to obtain a utility model registration for the relevant device; and
|
|
(v) if, after the grant of a utility model registration, the holder of utility model right has become unable to hold a utility model right under Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 55, paragraph (3), or the utility model registration has come to be in violation of a treaty.
|
(v) if, after the grant of a utility model registration, the holder of a utility model right has become unable to hold a utility model right under Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 55, paragraph (3), or the utility model registration has come to be in violation of a treaty.
|
|
(2) A request for the trial of the preceding paragraph may be filed even after the utility model right has lapsed.
|
(2) Any person may file a request for the trial of the preceding paragraph; provided, however, that if a request for invalidation trial of utility model registration is filed on the ground that the utility model registration falls under item (i) of the relevant paragraph (limited to the case where the utility model registration is obtained in violation of Article 38 of the Patent Act as applied mutatis mutandis pursuant to Article 9, paragraph (1)) or item (iv) of the preceding paragraph), only an interested person may file a request for the trial or appeal.
|
|
(3) If a request for the trial in paragraph (1) has been filed, the chief administrative judge is to notify the exclusive licensee of the utility model right and other persons who have any registered rights relating to the utility model.
|
(3) A request for the trial mentioned in paragraph (1) may be filed even after the utility model right has lapsed.
|
|
(4) If a request for the trial mentioned in paragraph (1) has been filed, the chief administrative judge is to notify the exclusive licensee of the utility model right and other persons who have any registered rights relating to the utility model.
|
||
Articles 39 through 41
|
Articles 39 The holder of a utility model right may file a request an appeal regarding a correction of the description or drawings attached to the application, only for the following purposes.
|
Articles 39 The holder of a utility model right may file a request for an appeal regarding a correction of the description or drawings attached to the application; provided however, that the correction is limited to those for the following purposes:
|
(i) restriction of the scope of claims;
|
(i) restriction of the scope of claims;
|
|
(ii) correction of errors; and
|
(ii) correction of errors;
|
|
(iii) clarification of an ambiguous statement.
|
(iii) clarification of an ambiguous statement; and
|
|
(iv) correction of a statement of claims which cites the statement of another claim in a way it does not provide description of the relevant citation of another claim.
|
||
(2) Any correction of the description or drawings referred to in the preceding paragraph must not substantially enlarge or alter the scope of claims for a utility model registration.
|
(2) The request for an appeal of the preceding paragraph may not be filed from the time the trial under Article 37, paragraph (1) has become pending before the Japan Patent Office to the time the trial decision (if the request is filed for each of the claims, for all of the trial decisions) has become final and binding.
|
|
(3) In the case of paragraph (1), item (i), a device constituted by the matters described in the corrected scope of claims must be one which could have been entitled to obtain a utility model registration for the device independently at the time of filing of the utility model application.
|
(3) If correction of particulars listed in Article 5, paragraph (3), item (iv) in description attached to the application pertaining to two or more claims are made, the request under the provisions of paragraph (1) may be filed for each claim. In this case, if a group of claims having any relation cited by another claim and other relations prescribed by Order of the Ministry of Economy, Trade and Industry (hereinafter referred to as "the group of claims") is present, the relevant request is filed for each of the group of claims.
|
|
(4) The request for the trial of paragraph (1) may be filed even after the utility model right has lapsed; provided however, that this does not apply after the utility model right has been invalidated in the trial of Article 37, paragraph (1).
|
(4) In a case when the correction of particulars listed in Article 5, paragraph (3), items (i) through (iii) in the description is accompanying the application or the drawings, and if each request under the provisions of paragraph (1) is intended to be made, the relevant request must be filed for all claims pertaining to the relevant correction of the description or the drawings (for all of the group of claims including claims pertaining to the relevant correction of the description or the drawings, if the request under paragraph (1) is filed for each of the group of claims pursuant to the provisions in the second sentence of the preceding paragraph).
|
|
(5) The correction of the description or the drawings under paragraph (1) is made within the scope of matters described in the description or the drawings attached to the application.
|
||
(6) Any correction of the description or drawings referred to in paragraph (1) does not substantially enlarge or alter the scope of claims for a utility model registration.
|
||
(7) In the case of a correction for any of the purposes as provided in item (i) of the proviso to paragraph (1), the device constituted by the matters stated in the corrected scope of claims is entitled to independently obtain a utility model registration for relevant device.
|
||
(8) A request for the appeal in paragraph (1) may be filed even after the utility model right has lapsed; provided however, that this does not apply after the utility model right has been invalidated in the trial of Article 37, paragraph (1).
|
||
(Trial for invalidation of correction)
|
(Submission of a Written Reply)
|
|
Article 40 (1) In a case where the correction of the description or drawings attached to the application violates the provisions of the preceding Article, paragraphs (1) through (3), a request for a trial for invalidating the correction may be filed.
|
Article 40 (1) If a request for trial has been filed, the chief administrative judge serves a copy of the written request to the demandee and gives the demandee an opportunity to submit a written reply, designating an adequate period.
|
|
(2) The provisions of Article 37, paragraphs (2) and (3) are applied mutatis mutandis to the request for trial under the preceding paragraph.
|
(2) If the chief administrative judge approves an amendment of the written request under the provisions of Article 38-2, paragraph (2), the examiner serves a copy of the written amendment with respect to the relevant amendment to the demandee, and gives the demandee an opportunity to submit a written reply, designating an adequate period; provided, however, that this does not apply when special circumstances exist under which it is recognized that giving an opportunity to the demandee to submit a written reply is not required.
|
|
(3) Upon receipt of a written reply as provided in paragraph (1) or the main clause of the preceding paragraph, the chief administrative judge serves the demandant a copy thereof.
|
||
(4) The chief administrative judge may question the parties and the intervenors relating to the trial.
|
||
(Request for Correction)
|
||
Article 40-2 (1) The demandee in a trial under Article 37, paragraph (1), or Article 48-12, paragraph (1) may file a request for a correction of the description, scope of claims or drawings attached to the application only within the time limit designated in accordance with Article 153, paragraph (2) or Article 164-2, paragraph (2) of the revised Patent Act of 2011 applied mutatis mutandis in the preceding Article paragraph (1) or (2), or the following Article or Article 41, respectively; provided, however, that the correction is limited to the following purposes:
|
||
(i) restriction of the scope of claims;
|
||
(ii) correction of errors in the description;
|
||
(iii) clarification of an ambiguous description; and
|
||
(iv) making the description of a claim citing and using the description of other claims, without citing the relevant description of the other claims.
|
||
(2) When correction of the particulars listed in Article 5, paragraph (3), item (iv) in the description attached to the application pertaining to two or more claims, the request for correction under the preceding paragraph may be filed for each claim; provided however, that where the request for trial under Article, paragraph (1) or Article 48-12, paragraph (1) has been filed for each claim, the request for correction under the preceding paragraph is filed for each claim.
|
||
In the case prescribed in the preceding paragraph, when there is a group of claims in the claims concerned, the petition is filed for each claim in the group of claims.
|
||
(4) Upon receipt of a written request for correction as provided in paragraph (1) and a corrected description and drawings attached thereto, the chief administrative judge serves the demandant copies thereof.
|
||
(5) The administrative judge may examine the grounds that have not been pleaded by a party in the case or an intervenor in determining whether the request for correction under paragraph (1) is not for any of the purposes provided in the items of the proviso to the relevant paragraph, or does not conform to the provisions of Article 39, paragraphs (5) through (7) that must be applied mutatis mutandis by replacing the terms under paragraph (9). In this case, when the request for correction on the grounds mentioned are not approved of, the chief administrative judge notifies the parties in the case and the intervenors of the result of the proceedings and gives them an opportunity to state their opinions, designating an adequate time limit.
|
||
(6) When a request for correction under paragraph (1) is made, if another request for correction has been previously made in the relevant trial, the previous request is deemed to have been withdrawn.
|
||
(7) The request for correction under paragraph (1) may only be withdrawn within an allowable period for amendments under Article 17, paragraph (1) of the Patent Act applied mutatis mutandis by replacing the terms under Article 55, paragraph (2) regarding the corrected description or drawings appended to the written request for correction under the relevant paragraph. In this case, if the request for correction under paragraph (1) have been filed for each claim or for each group of claims pursuant to the provisions of paragraph (2) or (3), all of these requests is withdrawn.
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(8) If the request for the trial under Article 37, paragraph (1), or Article 48-12, paragraph (1) has been withdrawn for each claim pursuant to the provisions of Article 155, paragraph (3) of the revised Patent Act of 2011 applied mutatis mutandis in Article 41, the request for correction under paragraph (1) is deemed to have been withdrawn for each of the relevant claims, and if all of the requests pertaining to a trial case of the trial under Article 37, paragraph (1), or Article 48-12, paragraph (1) have been withdrawn, all of the requests for correction under paragraph (1) pertaining to the relevant trial case is deemed to have been withdrawn.
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(9) The provisions of Article 39, paragraphs (4) through (8), Articles 127, 128 and 132, paragraphs (3) and (4) of the Patent Act, and Article 131, paragraphs (1), (3) and (4), Article 131-2, paragraph (1), and Article 133, paragraphs (1), (3) and (4) apply mutatis mutandis to the case of paragraph (1). In this case, "paragraph (1), proviso, item (i)" in Article 39, paragraph (7) replaced with "paragraph (1), proviso, item (i) pertaining to a claim for which a request for the trial under Article 37, paragraph (1), or Article 48-12, paragraph (1) has not been filed".
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(Request for Correction in the Case of Rescission Judgment)
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Article 40-3 If a judgment rescinding a trial decision in a trial under Article 37, paragraph (1), or Article 48-12, paragraph (1) (limited to a trial decision concluding that the request for a trial or appealis groundless) under Article 181, paragraph (1) of revised Patent Act of 2011 applied mutatis mutandis in article 47, paragraph (2) has become final and binding, and following which proceedings are initiated under paragraph (2) of the Article, the chief administrative judge may designate to the demandee an adequate period for filing a request for the correction of the description, scope of the claims or the drawings attached to the application, only if the motion is made by the demandee within one week from the date when the judgment became final and binding.
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(Mutatis mutandis application of the Patent Act)
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(Mutatis Mutandis Application of the Patent Act)
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Article 41 The provisions of Articles 125, 127, 128, and 130 through 170 of the Patent Act (effect of trial decision, request for trial or appeal, administrative judge, trial procedures, relation to litigation, and costs of trial) apply mutatis mutandis to a trial or appeal.
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Article 45
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, Article 174 (Application mutatis mutandis of provisions regarding trial) and Article 176 (Non-exclusive license due to the working of the invention prior to the registration of the request for a retrial)
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and Article 176 (non-exclusive license due to the working of the invention prior to the registration of the request for a retrial), and Article 174 of the revised Patent Act of 2011 (application mutatis mutandis of provisions regarding trial)
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Article 47, paragraph (1)
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a written request for a trial or appeal, or a retrial
|
a written request for a trial or appeal, or a retrial or a written request for correction under Article 40-2, paragraph (1)
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Article 47, paragraph (2)
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Article 178, paragraphs (2) through (6) (Period of institution of action), and Articles 179 through 182 (Appropriate party as defendant, notice of institution of action, rescission of the trial decision or ruling, and delivery of original copy of judgment)
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Article 179 of the Patent Act (Appropriate party as defendant) and Article 178, paragraphs (2) through (6) (Period of institution of action), and Articles 180, 181 and 182 (notice of institution of action, etc., rescission of the trial decision or ruling, and delivery of the original copy of judgment) of the revised Patent Act of 2011
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Article 48-12, paragraph (2)
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"Article 37, paragraph (1)" in Article 39, paragraph (4) is replaced with "Article 37, paragraph (1) or Article 48-12, paragraph (1)"
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"Article 37, paragraph (1)" in Article 39, paragraphs (2) and (8) is replaced with "Article 37, paragraph (1) or Article 48-12, paragraph (1)"
|
Article 48-12, paragraph (3)
|
the provisions of Article 37, paragraphs (2) and (3) and Article 184-15, paragraphs (2) and (4) (a trial for invalidation of a patent based on grounds inherent in an international patent application)
|
the provisions of Article 37, paragraphs (1), second sentence, (3) and (4), and Article 184-15, paragraph (4)
|
Article 50-2
|
Article 125 of the Patent Act applied mutatis mutandis in Article 37, paragraph (2) (including cases applied mutatis mutandis in Article 40, paragraph (2), and Article 48-12, paragraph (3))
|
Article 128 of the Patent Act applied mutatis mutandis in Article 37, paragraph (3) (including cases applied mutatis mutandis in Article 48-12, paragraph (3)), Article 39, paragraph (8) (including a case applied mutatis mutandis in Articles 40-2, paragraph (9)), Article 40-2, paragraph (9) and Article 41, Article 125 of the Patent Act applied mutatis mutandis in Article 41
|
Article 55, paragraph (2)
|
apply mutatis mutandis.
|
apply mutatis mutandis. In this case, "and after a certified copy of a ruling that publication of request done have been served" replaced with, "after a period designated by the provisions of Article 40, paragraph (1) of the Utility Model Act in a trial under Article 37, paragraph (1), or Article 48-12, paragraph (1) of the relevant Act has lapsed (in a case when a period is designated under the provisions of Article 153, paragraph (2) of the Patent Act or Article 164-2, paragraph (2) of the revised Patent Act of 2011 applied mutatis mutandis in Article 40, paragraph (1), Article 40-2 paragraph (5), Article 40-3, or Article 41 of the Utility Model Act, after the relevant period lapsed) and after a notice under the provisions of Article 156, paragraph (1) of the revised Patent Act of 2011 applied mutatis mutandis in Article 41 of the Utility Model Act in a trial under Article 39, paragraph (1) of the relevant Act (in the case where the proceedings have been resumed under the provisions of Article 156, paragraph (3) of the Patent Act, after further notice is given under the provisions of Article 156, paragraph (1) of the Patent Act, after ) is given", and "a trial or appeal" is replaced with "a trial or correction under Article 40-2, paragraph (1) of the Utility Model Act."
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Article 55, paragraph (6)
|
the provisions of Article 195-3 (restriction on appeals under Administrative Appeal Act) of the patent Act are a decision of dismissal of amendment, a decision of dismissal of written requests of an examiner's decision, a trial decision and a trial or appeal, or a retrial pursuant to the provisions of this Act
|
the provisions of Article 195-4 (restriction on appeals under Administrative Appeal Act) of the revised Patent Act of 2011 are a decision of dismissal of amendment, a decision of dismissal of written requests of an examiner's decision, a trial decision and a trial or appeal, or a retrial, or a written request for correction under Article40-2, paragraph (1) pursuant to the provisions of this Act
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Appended table, item (v)
|
A person filing an opposition to registration (including an opposition pertaining to publication of request)
|
A person filing an objection to registration
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Appended table, item (ix)
|
A person filing a request for a trial or appeal, or a retrial
|
A person filing a request for a trial or appeal, or a retrial; or for the correction of a description or drawings
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(3)If the decision on an objection to registration under Article 113 (hereinafter, simply, referred to as "objection to registration") of the revised Patent Act under the provisions of Article 2 of 1994 Amending Act applied mutatis mutandis in Article 9, paragraph (2) of the Supplementary Provisions of the Partial Amendment of the Patent Act (Act No. 116 of 1994, hereinafter referred to as "1994 Amendment Act") before revision under the provisions of Article 14 of the Supplementary Provisions of 2003 Amendment Act issued prior to the enforcement of 2003 Amendment Act, does not become final, with regard to application of the provisions of Article 39, paragraph (2) of the former Utility Model Act pertaining to a utility model registration, which is to be corrected after the enforcement of 2003 Amendment Act, and which has been replaced in the preceding paragraph, "the trial under Article 37, paragraph (1)" is replaced with "the trial on the objection to registration under Article 113 of the revised Patent Act under the provisions of Article 2 of the 1994 Amending Act (hereinafter referred to as "the revised Patent Act of 1994") applied mutatis mutandis in Article 9, paragraph (2) of Supplementary Provisions of the Partial Amendment of the Patent Act, etc. (Act No. 116 of 1994, hereinafter referred to as "1994 Amendment Act") prior to revision under the provisions of Article 14 of Supplementary Provisions of the Partial Amendment of the Patent Act, etc. (Act No. 47 of 2003), (hereinafter, simply, referred to as "the objection to registration"), or the trial under Article 37, paragraph (1)"; "the trial decision" is replaced with "the decision or trial decision"; "against the decision of the trial of the relevant paragraph" is replaced with "against the revocation decision under Article 114, paragraph (2) hereinafter, simply, referred to as "revocation decision") of the Patent Act revised in 1994 applied mutatis mutandis in Article 9, paragraph (2) of the Supplementary Provisions of 1994 Amending Act regarding the objection to registration or the trial decision under Article 37, paragraph (1)"; and "the judicial decision of revocation of a trial decision" is replaced with "the revocation decision or the judicial decision of revocation of a trial decision", in the relevant paragraph.
(4)If an appeal against the objection to registration requested prior to the enforcement of 2003 Amendment Act, or the revocation decision or the trial decision under Article 114, paragraph (2) of the revised Patent Act of 1994 applied mutatis mutandis in Article 9, paragraph (2) of the Supplementary Provisions of 1994 Amendment Act pertaining to the trial under Article 37, paragraph (1), or Article 48-12, paragraph (1) of the former Utility Model Act, is pending before any court at the time of enforcement of 2003 Amendment Act, with regard to the application of the provisions of Article 39, paragraph (2) of the former Utility Model Act pertaining to a utility model registration, which is to be corrected after the enforcement of 2003 Amendment Act to the time the judicial decision to the relevant appeal has become final and binding, and which has been replaced in paragraph (2), notwithstanding the provisions of the preceding paragraph, in Article 39, paragraph (2) of the former Utility Model Act which has been replaced in paragraph (2), "after the trial under Article 37, paragraph (1) has been pending before the Japan Patent Office to the time the trial decision has been final and binding" is replaced with "in a case where the trial on the objection to registration under Article 113 of the revised Patent Act under the provisions of Article 2 of 1994 Amending Act applied mutatis mutandis in Article 9, paragraph (2) of the Supplementary Provisions of the Partial Amendment of the Patent Act ,etc. (Act No. 116 of 1994) prior to the revision under the provisions of Article 14 of Supplementary Provisions of the Partial Amendment of the Patent Act ,etc. (Act No. 47 of 2003), or the trial under Article 37, paragraph (1) or under Article 48-12, paragraph (1) is pending before the Japan Patent Office", and the provisions of the proviso of the relevant paragraph does not apply.
Article 5(1)An applicant for a utility model registration may let an application for a utility model registration (excluding an application for a utility model registration where five and a half years have been lapsed from the date of filing the application for a utility model registration) which has been pending before the Japan Patent Office at the time of enforcement of this Act and notified to the Commissioner of the Patent Office has come under the provisions of the revised Utility Model Act (hereinafter, referred to as "the New Utility Model Act") pursuant to Article 3, pursuant to the provisions of an Order of the Ministry of International Trade and Industry (hereinafter, referred to as "the former application for a utility model registration") as an application for a utility model registration that has come under the provisions of the New Utility Model Act (hereinafter, referred to as "the new application for a utility model registration").
(2)In the case of the preceding paragraph, the new application for a utility model registration is deemed to have been filed at the time of filing the former application for a utility model registration.In this case, "filing date of a utility model registration application" in the proviso to Article 2-2, paragraph (1) of the New Utility Model Act, is replaced with "the date of notification pursuant to the provisions of Article 5, paragraph (1) of Supplementary Provisions of the Partial Amendment of the Patent Act (Act No. 26 of 1993) (hereinafter referred to as "notification of change")," and "at the time of filing of the application for a utility model registration" is replaced with "along with the notification of change."
(3)If there is a notification under paragraph (1), the former application for design registration is deemed to have been withdrawn.
(4)With regard to a notification under paragraph (1) pertaining to an international application which has been deemed to be an application for a utility model registration under the registration of Article 48-3, paragraph (1) or Article 48-14, paragraph (4) of the Former Utility Model Act, it may only be received after the registration fees payable under the provisions of Article 54, paragraph (2) have been paid (with regard to an international application which is deemed to be an application for a utility model registration under the provisions of Article 48-14, paragraph (4), after the decision under the relevant paragraph), and, in the case of a Utility Model Registration Application in the Japanese Language under Article 48-6, paragraph (2) of the Former Utility Model Act, after the procedures under the provisions of Article 48-5, paragraph (1) of the former Utility Model Act have been completed, or in the case of a Utility Model Registration Application in a Foreign Language under Article 48-14, paragraph (4) of the former Utility Model Act, after the procedures under the provisions of the relevant paragraph and Article 48-5, paragraph (1) of the former Utility Model Act have been completed.
(5)An applicant for a patent or an applicant for a design registration may convert their application (excluding patent applications or design registrations where five and a half years have been lapsed from the date of filing of the patent applications or design registrations) which has been pending before the Japan Patent Office at the time of enforcement of this Act and notified to the Commissioner of the Patent Office as having come under the provisions of the New Utility Model Act, into a new application for a utility model registration having come under the provisions of the new Utility Model Act.
(6)The provisions of paragraphs (2) and (3) apply mutatis mutandis to the case of the preceding paragraph.
(Transitional Measures Concerning the Application of Penal Provisions)
Article 16Prior laws continue to govern the applicability of penal provisions to acts committed before the enforcement of this Act.
(Delegation to Cabinet Order)
Article 17Beyond what is prescribed by Articles 2 through 6, 8 and 10 and the preceding Article of Supplementary Provisions, transitional measures necessary for the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 89 of November 12, 1993 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect from the date of enforcement of the Administrative Procedure Act (Act No. 88 of 1993).
(Transitional Measures Concerning Adverse Dispositions Following Consultation)
Article 2Prior laws continue to govern a request for consultation or any other requests made based on laws and regulations prior to the enforcement of this Act to a council or any other consultative organ to carry out a procedure equivalent to the procedure for the hearing or the grant of an opportunity for an explanation or any other procedure for hearing statements of an opinion prescribed in Article 13 of the Administrative Procedure Act, with regard to the procedure of an adverse disposition to which the relevant request for consultation or any other respect pertains, notwithstanding the provisions of the relevant Act after the revision by this Act.
(Transitional Measures Concerning Penal Provisions)
Article 13Prior laws continue to govern the applicability of penal provisions to acts committed before the enforcement of this Act.
(Transitional Measures Upon Arrangement of Provisions on Hearings)
Article 14Proceedings for a hearing (excluding those pertaining to adverse dispositions) implemented pursuant to the provisions of Acts prior to the enforcement of this Act or procedures for these hearings are deemed to have been implemented pursuant to the equivalent provisions of the related Acts revised by this Act.
(Delegation to Cabinet Order)
Article 15Beyond what is prescribed for in Articles 2 through to the preceding Article of the Supplementary Provisions, transitional measures necessary for the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 116 of December 14, 1994 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of June 1, 1995; provided, however, that the provisions listed in the following items come into effect from the date listed in the relevant item:
(ii)the provisions of Article 2; in Article 3, the provisions for revising Article 3-2, paragraph (1) of the Utility Model Act (limited to the portion changing "publication of an unexamined application" to "issuance of the patent gazette containing matters listed in each of the items of Article 66, paragraph (3) of the Patent Act under the provisions of the relevant paragraph"), the provisions of Article 10, paragraphs (5) and (6), Article 14, paragraph (4), and Article 39, paragraph (3) of the relevant Act, the revised provisions of Article 45 of the relevant Act (excluding the portion adding paragraph (1) to the same Article), the revised provisions of Article 50-2 of the relevant Act (limited to the portions changing "Article 174, paragraph (2)" to " Article 174, paragraph (3)", and "Article 193, paragraph (2), (v)" to "Article 193, paragraph (2), (iv)"),the revised provisions of Article 53, paragraph (2) of the relevant Act, and the revised provisions of Article 62 of the relevant Act (limited to the portion changing "Article 174, paragraph (2)" to "Article 174, paragraph (3)"); in Article 4, the revised provisions of Article 13, paragraph (3), Article 19, Article 58, Article 68, paragraph (1), Article 75 of the Design Act; the provisions of Article 6; in Article 7, the revised provisions of Article 5 of the Patent Attorneys Act; and the provisions of Article 8, Article 9, Article 10, paragraph (2), Article 17, and Article 19 of the Supplementary Provisions:January 1, 1996
(Transitional Measures Upon Revision of the Utility Model Act)
Article 10(1)Prior laws continue to govern utility model applications actually pending before the Japan Patent Office at the time of the enforcement of this Act or the trial decision or the retrial pertaining to a utility model application filed prior to the enforcement of this Act, excluding the provisions of Article 173, paragraph (2) of the new Patent Act applied mutatis mutandis in Article 45, paragraph (2) and Article 54, paragraph (1) of the new Utility Model.
(2)With regard to an application of the provisions of Article 3-2 of a new Utility Model Act application for utility model registration filed prior to the date on which all publications of an examined application of which a certified copy of the ruling has been served and prior to the completion of the enforcement of the provisions of Article 2 and the preceding Article, paragraph (1), in the same Article, "issuance or" is replaced with "issuance", and "publication of an examined application" is replaced with "publication of an examined application or publication of an unexamined application."
(3)The provisions of Article 33-2 of the new Utility Model Act applies to the utility model right that have been deemed to be lapsed or non-existent from the beginning pursuant to Article 33, paragraph (4) or (5) of the former Utility Model Act.
(Transitional Measures Concerning the Application of Penal Provisions)
Article 13Prior laws continue to govern the applicability of penal provisions to acts committed prior to the enforcement of the revised provisions of this Act and acts committed after the enforcement of the revised provisions of this Act.
(Delegation to Cabinet Order)
Article 14Beyond what is prescribed by Article 2 through to the preceding Article of Supplementary Provisions, transitional measures necessary for the enforcement of this Act is specified by Cabinet Order.
Supplementary Provisions[Act No. 91 of May 12, 1995 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the day on which twenty days have passed from the date of promulgation.
Supplementary Provisions[Act No. 68 of June 12, 1996 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of April 1, 1997; provided, however, that the revising provisions listed as follows, comes into effect as of the date listed in the relevant item.
(ii)the revised provisions adding the proviso to Article 40, paragraph (4) and Article 76, paragraph (4) of the Trademark Act, in Article 1 of this Act; the revised provisions adding the proviso to Article 107, paragraph (3), Article 112, paragraph (3) and Article 195, paragraph (5) of the Patent Act, in Article 2 of this Act; the revised provisions adding the proviso to Article 31, paragraph (3), Article 33, paragraph (3) and Article 54, paragraph (4) of the Utility Model Act, in Article 3 of this Act; in Article 4, the revised provisions adding the proviso to Article 42, paragraph (4), Article 44, paragraph (3) and Article 67, paragraph (4) of the Design Act, in Article 4 of this Act; the revised provisions adding the proviso to Article 40, paragraph (4) of the Act on Special Provisions of Procedures, etc. concerning Industrial Property Rights in Article 5 of this Act; and the provisions of Article 27 ofthe Supplementary Provisions:October 1, 1996
(Transitional Measures Concerning the Application of Penal Provisions)
Article 20Prior laws continue to govern the applicability of penal provisions to acts committed prior to the enforcement of provisions of this Act and acts committed after the enforcement of provisions of this Act pertaining to the matters to which the provisions then in force remain in effect.
(Delegation to Cabinet Order)
Article 21Beyond what is prescribed by Articles 2 through the preceding Article of Supplementary Provisions, transitional measures necessary for the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 110 of June 26, 1996 Extract][Extract]
This Act comes into effect as of the date of enforcement of the new Code of Civil Procedure; provided, however, that the revising provisions listed as follows come into effect as of the date listed in the relevant item:
(ii)in Article 30, the provisions for revising Article 10; in Article 32, the provisions for revising Article 2-5, paragraph (2) of the Utility Model Act; in Article 33, the provisions for revising Article 68, paragraph (2) of the Design Act; in Article 34, the provisions for revising Article 77, paragraph (2) of the Trademark Act, Articles 27, paragraph (2) and 30 of the Supplementary Provisions; and the provisions for revising Article 41, paragraph (2) of the Act on Special Provisions of Procedures concerning Industrial Property Rights:the latter of the dates of April 1, 1998 and the date of the enforcement of the new Code of Civil Procedure.
Supplementary Provisions[Act No. 51: May 6, 1998 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of January 1, 1999; provided, however, that the revising provisions listed as follows come into effect from the date listed in the relevant item.
(ii)the provisions for revising Article 107 of the Patent Act (excluding the provisions for revising the table of paragraph (1) of the relevant Article), and the provisions for revising Article 195 of the relevant Act (excluding the provisions for revising paragraph (1), items (iv) through (vii)), in Article 1 of this Act; the provisions for revising Article 31 of the Utility Model Act and the provisions for revising Article 54 of the relevant Act (excluding the provisions for revising paragraph (1), items (iv) through (vii));the provisions of Article 4, in Article 2 of this Act; the provisions for revising Article 40, Article 41-2, paragraph (5) and Article 65-7, paragraph (3), and the provisions for revising Article 76 of the relevant Act (excluding the provisions for revising the paragraph (1) of the relevant Article), in Article 5 of this Act; the provisions for revising Article 40 of the Act on Special Provisions of Procedures concerning Industrial Property Rights, and provisions of paragraph (2) of the following Article, Article 3, paragraph (2), Article 5 and Article 6, paragraph (2) of Supplementary Provisions, in Article 6 of this Act,; the provisions for revising Article 15, paragraph (2), of Supplementary Provisions of the Act for Partial Revision of the Trademark Act (Act No. 68 of 1996), in Article 14 of the Supplementary Provisions; and the provisions of Article 18 of the Supplementary Provisions:April 1, in 1999.
(Transitional Measures Upon Revision of the Utility Model Act)
Article 3(1)Prior laws continue to govern a utility model application actually pending before the Japan Patent Office at the time of the enforcement of this Act, until the examiner's decision or a trial decision for the utility model application becomes final and binding, except where it has otherwise been provided for.
(2)Prior laws continue to govern registration fees that have already been paid for prior to the date prescribed by Article 1, item (ii) of the Supplementary Provisions or should have been paid for prior to that date, notwithstanding the provisions of Article 31, paragraphs (3) and (4) of the revised Utility Model pursuant to the provisions of Article 2 (hereinafter, referred to as "the new Utility Model Act").
(3)Prior laws continue to govern the grounds for opposition or invalidity to a utility model registration pertaining to applications for utility model registration filed prior to the enforcement of this Act.
(Transitional Measures Concerning Application of Penal Provisions)
Article 7Prior laws continue to govern the applicability of penal provisions to acts committed prior to the enforcement of this Act and acts committed after the enforcement of this Act pertaining to the matters to which the provisions then in force remain in effect.
(Delegation to Cabinet Order)
Article 8Beyond what is prescribed by Articles 2 through the preceding Article of the Supplementary Provisions, transitional measures necessary for the enforcement of this Act is specified by Cabinet Order.
Supplementary Provisions[Act No. 41 of May 14, 1999 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of January 1, 2000; provided, however, that the provisions listed in the following items come into effect as of the date prescribed respectively in those items.
(i)the provisions revising the table of Article 107, paragraph (1) of the Patent Act and the provisions adding two paragraphs in Article 168 of the relevant Act in Article 1; the provisions revising the table of Article 31, paragraph (1) of the Utility Model Act and the provisions adding two paragraphs in Article 40 of the relevant Act in Article 2; and the provisions of the following Article, paragraph (10), Article 3, paragraph (6) of these Supplementary Provisions and Articles 7 through 12 of these Supplementary Provisions:the date specified by Cabinet Order within a period not exceeding one month from the date of promulgation
(Transitional Measures Upon Partial Revision of the Utility Model Act)
Article 3(1)Prior laws continue to govern novelty requirements for a device pertaining to an application for utility model registration actually pending before the Japan Patent Office at the time of the enforcement of this Act, until the establishment concerning the application for utility model registration is registered.
(2)The provisions of Article 10, paragraphs (8) and (9) of the Utility Model Act revised by the provisions of Article 2 (hereinafter referred to as the "new Utility Model Act") is applied to an application for utility model registration which has been filed after the enforcement of this Act, and is deemed to have been filed pursuant to the provisions of Article 10, paragraph (3) of the Utility Model Act, prior to the enforcement.
(3)Prior laws continue to govern a judgment concerning a technical scope of a registered utility model required prior to the enforcement of this Act.
(4)The provisions of Chapter 4, Section 2 of the new Utility Model Act, except as otherwise provided, are also applied to the matters which occurred prior to the enforcement of this Act; provided, however, that this does not preclude an effect raised by the provisions of Chapter 4, Section 2 of the Utility Model Act prior to the revision by the provisions of Article 2 (hereinafter referred to as the "former Utility Model Act").
(5)The provisions of Article 105-3 of the new Patent Act applied mutatis mutandis in Article 30 of the New Utility Model Act does not apply to a case for which oral arguments before a high court or a district court that constitutes a court of a second instance has finished prior to the enforcement of this Act, and a case for which, before this Act comes into effect, parties reserve the right to a final appeal against a judgment made by a summary court or a judgment made by a district court as a court of first instance, and have agreed not to appeal to the court of a second instance.
(6)Prior laws continue to govern registration fees which have been already paid prior to the date prescribed in Article 1, item (i) of the Supplementary Provisions or should have been paid prior to the same date (including registration fees the payment of which was deferred pursuant to the provisions of Article 109 of the former Patent Act applied mutatis mutandis in Article 36 of the former Utility Model Act); notwithstanding the provisions of Article 31, paragraph (1) of the new Utility Model Act.
(7)Prior laws continue to govern grounds for invalidation concerning utility model registration pertaining to applications for utility model registration filed prior to the enforcement of this Act.
(Partial Revision of the Former Utility Model Act of 1993)
Article 11A part of the Utility Model Act prior to revision (hereinafter referred to as the "former Utility Model Act of 1993") by the provisions of Article 3 of the Act for Partial Revision of the Patent Act (Act No. 26 of 1993; hereinafter referred to as the "Amendment Act of 1993") then in force, remain applicable pursuant to the provisions of Article 4, paragraph (1) of the Supplementary Provisions of the Act for Partial Revision of the Patent Act is revised as follows:
The terms "one thousand yen", "two thousand yen" and "four thousand yen" in the table of Article 31, paragraph (1) are changed to "eight hundred yen", "one thousand six hundred yen" and "three thousand two hundred yen", respectively.
(Transitional Measures Upon Partial Revision of the former Utility Model Act of 1993)
Article 12Prior laws continue to govern registration fees which have been already paid prior to the date prescribed in Article 1, item (i) of the Supplementary Provisions, pursuant to the provisions of Article 31, paragraph (1) of the former Utility Model Act of 1993 prior to revision by the provisions of the preceding Article, or with regard to registration fees which should have been paid prior to the same date, pursuant to the provisions of the relevant paragraph (including registration fees the payment of which were deferred pursuant to the provisions of Article 109 of the Patent Act prior to revision by the provisions of Article 1 of the Amendment Act of 1993 then in force remain applicable pursuant to the provisions of Article 4, paragraph (1) of the Supplementary Provisions of the Amendment Act of 1993 applied mutatis mutandis in Article 34 of the former Utility Model Act of 1993); notwithstanding the provisions of Article 31, paragraph (1) of the former Utility Model Act of 1993 revised by the provisions of the preceding Article.
(Transitional Measures Relating to Application of Penal Provisions)
Article 18Prior laws continue to govern the applicability of penal provisions to conduct engaged in before this Act comes into effect and to conduct engaged after this Act comes into effect in respect of things that, pursuant to these Supplementary Provisions, are to continue to be governed by the respective provisions then in force.
(Delegation to Cabinet Order)
Article 19Beyond what is prescribed in Articles 2 through 6, 8, 10, 12 and the preceding Article of these Supplementary Provisions, necessary transitional measures relating to the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 160 of December 22, 1999 Extract][Extract]
(Effective Date)
Article 1This Act (excluding Articles 2 and 3) comes into effect as of January 6, 2001.
Supplementary Provisions[Act No. 220 of December 22, 1999 Extract][Extract]
(Effective Date)
Article 1This Act (excluding Article 1) comes into force as of January 6, 2001.
(Delegation to Cabinet Order)
Article 4Beyond what is prescribed in the preceding 2 Articles, necessary matters relating to the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 24 of April 17, 2002 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding six months from the date of promulgation; provided, however, that the provisions listed in the following items come into effect as of the date prescribed respectively in those items.
(i)the provisions revising Article 101, Article 112-3, paragraph (2) and Article 175, paragraph (2) of the Patent Act in Article 2; the provisions revising Article 28 and Article 33-3, paragraph (2), item (ii) and Article 44, paragraph (2), item (ii) of the Utility Model Act in Article 4; and the provisions revising Article 68-19, paragraph (1), Articles 68-30 and 68-35 of the Trademark Act in Article 6; and the provisions revising Article 6 of these Supplementary Provisions:the date specified by Cabinet Order within a period not exceeding one year from the date of promulgation
(ii)the provisions of Article 2 (excluding the provisions revising Article 101, Article 112-3, paragraph (2) and Article 175, paragraph (2) of the Patent Act) and the provisions of Article 4 (excluding the provisions revising Article 28 and Article 33-3, paragraph (2), item (ii) and Article 44, paragraph (2), item (ii) of the Utility Model Act) and the provisions of Articles 3 and 5 of these Supplementary Provisions:the date specified by Cabinet Order within a period not exceeding one year and six months from the date of promulgation
(Transitional Measures Upon Partial Revision of the Utility Model Act by Provisions of Article 3)
Article 4Prior laws continue to govern the period for the submission of national documents and the national processing standard time pertaining to a Japanese language application for a utility model registration for which the procedure is performed prior to the enforcement of this Act, pursuant to the provisions of Article 48-5, paragraph (1) of the Utility Model Act prior to revision by the provisions of Article 3, and application for utility model registration in a foreign language for which the procedure is performed prior to the enforcement of this Act, pursuant to the provisions of Article 48-4, paragraph (1) and Article 48-5, paragraph (1) of the relevant Act.
(Transitional Measures Upon Partial Revision of the Utility Model Act by Provisions of Article 4)
Article 5(1)Prior laws continue to govern the provisions of the Utility Model Act (hereinafter referred to as the "new Utility Model Act" in this Article) revised by the provisions of Article 4 (excluding the provisions revising Article 28 and Article 33-3, paragraph (2), item (ii) and Article 44, paragraph (2), item (ii) of the Utility Model Act) applies to applications for utility model registration being filed on or after the effective date (including applications for utility model registration being filed on or after the effective date, which are deemed to have been filed prior to the effective date pursuant to the provisions of Article 10, paragraph (3) of the Utility Model Act or the provisions of Article 44, paragraph (2) of the Patent Act applied mutatis mutandis in Article 11 paragraph (1) of the Utility Model Act (hereinafter referred to as an "application for utility model registration pertaining to division, etc. of an application for utility model registration prior to the effective date" in this paragraph)); and with regard to applications for utility model registration filed prior to the effective date (excluding applications for utility model registration pertaining to division, etc. of an application for utility model registration prior to the effective date).
(2)With regard to the application of Article 3-2 of the new Utility Model Act, if an application for utility model registration or for patent filed prior to the effective date is another application for utility model registration, or for a patent prescribed in the relevant Article, the term "the description, scope of claims for a utility model registration or scope of claims for a patent" in the relevant Article is deemed to be replaced with "the description".
(3)With regard to the application of Article 8, paragraphs (1) through (3) of the new Utility Model Act, if an application for utility model registration or an application for a patent filed prior to the effective date is an earlier application prescribed in Article 8, paragraph (1) of the relevant Act, the terms "the description, scope of claims for a utility model registration or patent" in these provisions are deemed to be replaced with "the description".
(Transitional Measures Relating to an Application of Penal Provisions)
Article 7Prior laws continue to govern the applicability of penal provisions to acts committed before to the enforcement of this Act.
(Delegation Cabinet Order)
Article 8Beyond what is prescribed in Articles 2 through the preceding Article of these Supplementary Provisions, necessary transitional measures relating to the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 47 of May 23, 2003 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of January 1, 2004; provided, however, that the provisions listed in the following items come into effect as of the date prescribed respectively in those items.
(i)the provisions of Article 18 of these Supplementary Provisions:the date of promulgation
(ii)the provisions revising Articles 107 and 195 and Appended Table items (i) through (iv) and (vi) of the Patent Act in Article 1; the provisions revising Articles 31 and 54 of the Utility Model Act in Article 2; the provisions revising Articles 42 and 67 of the Design Act in Article 3; the provisions revising Articles 40, 41-2, 65-7 and 76 of the Trademark Act in Article 4; the provisions revising Article 18 of the Act on International Applications under the Patent Cooperation Treaty in Article 5; the provisions revising Article 40 of the Act on Special Provisions for Procedures related to Industrial Property Rights in Article 6 (excluding the part pertaining to paragraph (1) of the relevant Article); and the provisions of Articles 7 and 8; and the provisions of Article 2, paragraphs (2) through (6), Article 3, paragraphs (2) and (3), Article 4, paragraph (1), Article 5, paragraph (1), Articles 7 through 11, Articles 16 and 19 of these Supplementary Provisions:April 1, 2004
(Transitional Measures Accompanying Revision of the Utility Model Act)
Article 3(1)Prior laws continue to govern the provisions of Article 6 of the Utility Model Act revised by the provisions of Article 2 (hereinafter referred to as the "new Utility Model Act" in this Article) is applied to applications for utility model registration being filed after the enforcement of this Act; and with regard to applications for utility model registration filed prior to the enforcement of this Act.
(2)With regard to the application of the provisions of Article 31, paragraphs (2) and (3) of the new Utility Model Act concerning the payment of registration fees pertaining to an application for utility model registration partially filed prior to the enforcement date (excluding applications for utility model registration being partially filed on or after the enforcement date, which are deemed to have been partially filed prior to the enforcement date pursuant to the provisions of Article 10, paragraph (3) of the Utility Model Act, or the provisions of Article 44, paragraph (2) of the Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the Utility Model Act (hereinafter referred to as "applications for utility model registration pertaining to the division, etc. of an application for utility model registration prior to the partial enforcement date ")); and with regard to the application of the provisions of Article 54, paragraphs (3) through (5) of the new Utility Model Act concerning the payment of fees pertaining to the same application; the term "the national government " in these provisions is deemed to be replaced with "the national government, etc. (meaning the national government, etc. prescribed in Article 31, paragraph (4) of the Utility Model Act prior to revision by the provisions of Article 2 of the Act for Partial Revision of the Patent Act (Act No. 47 of 2003))."
(3)Prior laws continue to govern registration fees concerning a jointly owned utility model right, which has already been partially paid or is required to be partially paid prior to the enforcement date (including registration fees the payment of which was deferred pursuant to the provisions of Article 32-2 of the Utility Model Act prior to revision by the provisions of Article 2); notwithstanding the provisions of Article 31, paragraph (3) of the new Utility Model Act.
(4)Prior laws continue to govern a trial or appeal, or a retrial requested prior to the enforcement of this Act, until the decision becomes final and binding.
(5)Prior laws continue to govern a retrial against a final and binding decision on a trial or appeal requested prior to the enforcement of this Act.
(Transitional Measures Upon Partial Revision of the Amendment Act of 1993)
Article 13(1)Prior laws continue to govern a trial or appeal which was requested prior to the enforcement of this Act, and is under Article 37, paragraph (1), Article 39, paragraph (1) or Article 48-12, paragraph (1) of the Utility Model Act prior to revision by the provisions of the Amendment Act of 1993 (hereinafter referred to as the "former Utility Model Act"); until the decision becomes final and binding.
(2)Prior laws continue to govern provisions of Article 181 of the new Patent Act applied mutatis mutandis in Article 47, paragraph (2) of the former Utility Model Act replaced in Article 4 paragraph (2) of the Supplementary Provisions of the Amendment Act of 1993 revised by the provisions of the preceding Article apply to an action against a decision on a trial which is requested after the enforcement of this Act and is under Article 37, paragraph (1) or Article 48-12, paragraph (1) of the former Utility Model Act; and with regard to an action against a decision on a trial which has been requested prior to the enforcement of this Act and is under Article 37, paragraph (1) or Article 48-12, paragraph (1) of the former Utility Model Act.
(Transitional Measures Concerning an Application of Penal Provisions)
Article 17Prior laws continue to govern the applicability of penal provisions to conduct engaged in before this Act comes into effect and to conduct engaged after this Act comes into effect in respect of things that, pursuant to these Supplementary Provisions, are to continue to be governed by the respective provisions then in force.
(Delegation to Cabinet Order)
Article 18Beyond what is prescribed in Articles 2 through the preceding Article of these Supplementary Provisions, necessary transitional measures relating to the enforcement of this Act are specified by Cabinet Order.
(Review)
Article 19When five years have passed since the enforcement of the provisions listed in Article 1, item (ii) of these Supplementary Provisions, the government is to review the status of enforcement of the provisions of Article 107, paragraph (1) as well as item (i) through item (iv) and item (vi) of the Appended Table of the new Patent Act and take measures necessary based on the results.
Supplementary Provisions[Act No. 108 of July 16, 2003 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding one year from the date of promulgation; provided, however, that the provisions of Article 3 comes into effect as of the date of the enforcement of the Act for Partial Revision of the Patent Act (Act No. 47 of 2003) or the date of the enforcement of this Act, whichever comes later.
(Transitional Measures Relating to Jurisdiction, etc. over Litigation Pertaining to Actions Relating to Patent Right and Design Right)
Article 3(1)Prior laws continue to govern a jurisdiction and transfer of litigations pertaining to actions actually pending at the time of the enforcement of this Act: actions relating to patent rights, utility model rights, layout-design exploitation rights or author's rights over computer programs (referred to as "actions relating to patent rights, etc." in paragraph (4)), and actions relating to design rights, trademark rights, author's rights (excluding author's rights over computer programs), publication rights, neighboring rights or breeder's rights, or actions pertaining to the infringement of business interests due to unfair competition (meaning unfair competition prescribed in Article 2, paragraph (1) of the Unfair Competition Prevention Act (Act No. 47 of 1993)).
(2)The provisions of Articles 269-2 and 310-2 of the Code of Civil Procedure revised by the provisions of Article 1, and the provisions of Article 182-2 of the Patent Act revised by the provisions of Article 2 (including cases where Article 182-2 of the Patent Act are applied mutatis mutandis in Article 47, paragraph (2) of the Utility Model Act revised by the provisions of Article 3) do not apply to cases actually pending at the time of the enforcement of this Act.
(3)The provisions of Article 182-2 of the Patent Act revised by the provisions of Article 2, except in the case prescribed in the preceding paragraph, applies to cases pertaining to actions with regard to which the provisions then in force remain applicable pursuant to the provisions of Article 2, paragraph (9) of the supplementary provisions of the Act for Partial Revision of the Patent Act, and which are under Article 178, paragraph (1) of the Patent Act prior to revision by the provisions of Article 1 of the Act for Partial Revision of the Patent Act and are against rescission decisions concerning patent oppositions or decisions of dismissal of written patent oppositions.
(4)Prior laws continue to govern a jurisdiction over a case if a temporary restraining order pertains to a petition submitted prior to the enforcement of this Act and an action on the merits is an action relating to a patent right, etc.
(Transitional Measures Relating to the Utility Model Act)
Article 5(1)If the date of the enforcement of this Act is before the date of the enforcement of the Act for Partial Revision of the Patent Act, with regard to the application of the provisions of Article 47, paragraph (2) of the Utility Model Act until the date preceding the date of the enforcement of the Act for Partial Revision of the Patent Act, the terms "Article 182" and "and delivery of original copy of judgment" are deemed to be replaced with "Article 182-2", and "and, delivery of the original copy of the judgment and a collegiate panel", respectively.
(2)In the case referred to in the preceding paragraph, the provisions of Article 182-2 of the Patent Act revised by the provisions of Article 2 and applied mutatis mutandis in Article 47, paragraph (2) of the Utility Model Act which is deemed to be replaced in the preceding paragraph and applied do not apply to a case actually pending at the time of the enforcement of this Act.
Supplementary Provisions[Act No. 79 of June 4, 2004 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of April 1, 2005; provided, however, that the provisions listed in the following items come into effect as of the date prescribed respectively in those items.
(i)the provisions of Article 6 of these Supplementary Provisions:the date of promulgation
(ii)the provisions revising Article 195, paragraph (7) of the Patent Act in Article 1; the provisions revising Article 54, paragraph (6) of the Utility Model Act in Article 2; and the provisions revising Articles 14 through 16 of the Act on Special Provisions for Procedures related to Industrial Property Rights in Article 3; and the provisions of Article 4, paragraph (1) of these Supplementary Provisions:the date of promulgation or April 1, 2004, whichever comes later
(Transitional Measures Upon Revision of the Utility Model Act)
Article 3Prior laws continue to govern the provisions of the Utility Model Act revised by the provisions of Article 2 (excluding the provisions revising Article 54, paragraph (6) of the Utility Model Act) apply to applications for utility model registration being filed after the enforcement of this Act; and with regard to applications for utility model registration filed prior to the enforcement of this Act.
(Delegation to Cabinet Order)
Article 6Beyond what is provided for in Article 2 to the preceding Article of the Supplementary Provisions, the necessary transitional measures pertaining to the enforcement of this Act are specified by Cabinet Order.
(Review)
Article 7When five years have passed since this Act comes into effect, the government is to review the status of enforcement of the provisions of Chapter 4, Section 3 of the Newly Revised Act on Special Provisions, review the provisions of the same section, and take necessary measures based on the findings of the review.
Supplementary Provisions[Act No. 102 of June 18, 2004 Extract]
(Effective Date)
Article 1This Act comes into effect as of April 1, 2005.
(Principles of Transitional Measures)
Article 2The provisions (excluding the penal provisions) of the Court Act, the Code of Civil Procedure, the Act on Costs of Civil Procedure, the Patent Act, the Utility Model Act, the Design Act, the Trademark Act, the Unfair Competition Prevention Act and the Copyright Act revised by this Act, except as otherwise provided in these Supplementary Provisions, are also applied to the matters which occurred prior to the enforcement of this Act; provided, however, that this does not preclude an effect raised prior to this Act and the revision by the provisions of these Acts.
(Transitional Measures Upon Partial Revision of the Former Utility Model Act of 1993)
Article 5(1)The provisions (excluding the penal provisions) of the former Utility Model Act of 1993 revised by this Act, except in the case prescribed in the following paragraph, is also to be applied to matters which occurred prior to the enforcement of this Act; provided, however, that this does not preclude an effect raised by the provisions of the former Utility Model Act of 1993 prior to revision by this Act.
(2)The following provisions do not apply to a case for which a litigation is completed before this Act comes into effect; nor to a case for which oral arguments before the high court or a district court that constitutes the court of second instance is finished before this Act comes into effect; nor to a case for which a party, before this Act comes into effect, reserves the right to a final appeal but agrees not to appeal to court of second instance against a summary court decision or the decision that the district court has reached as the court of first instance:
(i)the provisions of Articles 104-3, 105-4 through 105-6 and Article 168, paragraphs (5) and (6) of the new Patent Act apply mutatis mutandis in Article 13-3, paragraph (4) of the former Utility Model Act of 1993 revised by this Act (including cases when they are applied mutatis mutandis in Article 48-13, paragraph (2) of the former Utility Model Act of 1993 revised by this Act); and
(ii)the provisions of Articles 105-4, through 105-6 of the new Patent Act applied mutatis mutandis in Article 30 of the former Utility Model Act of 1993 revised by this Act.
Supplementary Provisions[Act No. 75 of June 29, 2005 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding one year from the date of promulgation.
(Transitional Measures)
Article 2Prior laws continue to govern the provisions of Article 2, paragraph (1), item (iii) of the Unfair Competition Prevention Act revised by the provisions of Article 1 applies to the acts listed in the relevant item, which were conducted after the enforcement of this Act; and with regard to the acts which have been conducted prior to the enforcement of this Act, listed in Article 2, paragraph (1), item (iii) of the Unfair Competition Prevention Act prior to the revision by the provisions of Article 1.
Article 3Deleted
Article 4Deleted
(Delegation to Cabinet Order)
Article 5Beyond what is prescribed in Article 2 of these Supplementary Provisions, necessary transitional measures relating to the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 55 of June 7, 2006 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding one year from the date of promulgation; provided, however, that the provisions listed in the following items come into effect as of the date prescribed respectively in those items.
(ii)the provisions revising Article 2, paragraph (3), Articles 38, 44-3 and 55, the provisions deleting the heading of Article 69, the provisions adding the heading prior to the relevant Article, the provisions revising the relevant Article, the provisions adding one Article next to the relevant Article and the provisions revising Article 74 of the Design Act in Article 1; the provisions revising Articles 2, 101, 102-3 and 175, the provisions deleting the heading of Article 196, the provisions adding the heading prior to the relevant Article, the provisions revising the relevant Article, the provisions adding one Article next to the relevant Article and the provisions revising Article 201 of the Patent Act in Article 2; the provisions of Article 3; the provisions revising Article 2, paragraph (3), Articles 37 and 67, the provisions deleting the heading of Article 78, the provisions adding the heading prior to the relevant Article, the provisions revising the relevant Article, the provisions adding one Article next to the relevant Article and the provisions revising Article 82 of the Trademark Act in Article 4; and the provisions of Article 5; and the provisions of the following Article, paragraph (3) and Article 3, paragraph (2), Article 4, Article 5, paragraph (2), Articles 9, 12, 13 and 16 of these Supplementary Provisions:January 1, 2007
(Transitional Measures Upon Revision of the Utility Model Act)
Article 4Prior laws continue to govern the provisions of Articles 2, 28, 33-3 and 44 of the Utility Model Act revised by the provisions of Article 3 apply to acts partially conducted on or after the enforcement date; and with regard to acts partially conducted prior to the enforcement date.
Article 9Deleted
Article 10Deleted
(Transitional Measures Upon Partial Revision of the Former Utility Model Act of 1993)
Article 13Prior laws continue to govern provisions of Articles 2 and 28 of the former Utility Model Act of 1993 revised by the provisions of the preceding Article apply to acts partially conducted on, or after the enforcement date; and with regard to acts partially conducted prior to the enforcement date.
(Delegation to Cabinet Order)
Article 14Beyond what is prescribed in Articles 2 through 11 and the preceding Article of these Supplementary Provisions, necessary transitional measures relating to the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 16 of April 18, 2008 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding one year from the date of promulgation; provided, however, that the provisions listed in the following items come into effect as of the date prescribed respectively in those items.
(i)the provisions of Article 6 of these Supplementary Provisions:the date of promulgation
(iii)the provisions revising Article 27, paragraph (1), item (i) and Article 98, paragraph (1), item (i) of the Patent Act in Article 1; the provisions revising Article 49, paragraph (1), item (i) of the Utility Model Act in Article 2; the provisions revising Article 61, paragraph (1), item (i) of the Design Act in Article 3; and the provisions revising Article 68-27, paragraphs (1) and (2) of the Trademark Act in Article 4:September 30, 2008
(Transitional Measures Upon Revision of the Utility Model Act)
Article 3(1)Prior laws continue to govern the provisions of Article 10, paragraph (1), proviso and paragraph (6) of the new Utility Model Act apply to an application for patent concerning which a certified copy of the examiner's initial decision is to be served on or after the date of the enforcement of this Act to the effect that the application for patent should be refused; and with regard to an application for patent concerning which a certified copy of the examiner's initial decision has been served prior to the date of the enforcement of this Act to the effect that the application for patent should have been refused.
(2)Prior laws continue to govern provisions of Article 10, paragraph (2), proviso and paragraph (7) of the new Utility Model Act apply to an application for design registration concerning which a certified copy of the examiner's initial decision is to be served on or after the date of the enforcement of this Act to the effect that the application for design registration should be refused; and with regard to an application for design registration concerning which a certified copy of the examiner's initial decision has been served prior to the date of the enforcement of this Act to the effect that the application for design registration should have been refused.
(Delegation to Cabinet Order)
Article 6Beyond what is prescribed in Article 2 through the preceding Article of these Supplementary Provisions, necessary transitional measures relating to the enforcement of this Act are specified by Cabinet Order.
Supplementary Provisions[Act No. 63 of June 8, 2011 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding one year from the date of promulgation.
(Transitional Measures Upon Partial Revision of the Utility Model Act)
Article 3(1)The provisions of Article 34-3, paragraph (5) of the new Patent Act applied mutatis mutandis in Article 4-2, paragraph (3) of the Utility Model Act revised by the provisions of Article 2 (hereinafter referred to as the "new Utility Model Act") does not apply in a case when a priority claim has been made pursuant to the provisions of Article 8, paragraph (1) of the new Utility Model Act prior to the date of the enforcement of this Act.
(2)Prior laws continue to govern the provisions of Article 7 of the new Utility Model Act applied to applications for utility model registration or applications for patent filed on or after the date of the enforcement of this Act, and with regard to applications for utility model registration or applications for patent filed prior to the date of the enforcement of this Act.
(3)Prior laws continue to govern a person that has a provisional non-exclusive license registered concerning an application for patent actually pending before the Japan Patent Office at the time of the enforcement of this Act, with regard to consent pertaining to a priority claim which is based on the application for a patent and is pursuant to the provisions of Article 8, paragraph (1) of the new Utility Model Act, or a conversion of an application which is based on the application for a patent and is pursuant to the provisions of Article 10, paragraph (1) of the new Utility Model Act, notwithstanding the provisions of Article 8, paragraph (1), proviso or Article 10, paragraph (9) of the new Utility Model Act.
(4)Prior laws continue to govern the provisions of Article 30 of the new Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the new Utility Model Act, except in the case prescribed in the following paragraph, the provisions apply to devices pertaining to applications for utility model registration filed on or after the date of the enforcement of this Act, and with regard to devices pertaining to applications for utility model registration filed prior to the date of the enforcement of this Act.
(5)Prior laws continue to govern an application for utility model registration filed on or after the date of the enforcement of this Act, if it is accompanied with a priority claim pursuant to the provisions of Article 8, paragraph (1) of the new Utility Model Act, and the earlier application prescribed in the relevant paragraph, deemed to be the basis for the priority claim, has been filed prior to the date of the enforcement of this Act; with regard to a device pertaining to the earlier application among devices pertaining to the application for utility model registration, notwithstanding the provisions of Article 30 of the new Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the new Utility Model Act.
(6)Prior laws continue to govern the provisions of Article 17-2 of the new Utility Model Act, Article 104-3, paragraph (3) of the new Patent Act applied mutatis mutandis in Article 30 of the new Utility Model Act and Article 37, paragraph (1), item (v) and paragraph (2) of the new Utility Model Act apply to applications for utility model registration filed on or after the date of the enforcement of this Act, and with regard to applications for utility model registration filed prior to the date of the enforcement of this Act.
(7)The provisions of Article 99 of the new Patent Act and Article 20, paragraph (1) of the new Utility Model Act which are applied mutatis mutandis in Article 19, paragraph (3) of the new Utility Model Act also apply to the non-exclusive licenses actually existing at the time of the enforcement of this Act.
(8)Prior laws continue to govern a case where a registration has been carried out prior to the date of the enforcement of this Act, under Article 99, paragraph (3) of the former Patent Act (including the registration in a case where a registration has been deemed to be carried out under Article 99, paragraph (3) of the former Patent Act applied mutatis mutandis in Article 19, paragraph (3) of the former Utility Model Act, pursuant to the provisions of Article 58, paragraph (2) of the former Industrial Revitalization Act) applied mutatis mutandis in Article 19, paragraph (3) or Article 25, paragraph (4) of the Utility Model Act prior to the revision by the provisions of Article 2 (hereinafter referred to as the "former Utility Model Act") pertaining to the transfer, modification under a trust, expiration or restriction on disposition of a non-exclusive license, or the establishment, transfer, modification under a trust, expiration or restriction on the disposition of a right of pledge on a non-exclusive license; with regard to the effect of the registration to third parties.
(9)The provisions of Article 82, paragraph (1) of the new Patent Act applied mutatis mutandis in Article 26 of the new Utility Model Act also apply to non-exclusive licenses concerning design rights or exclusive licenses thereof which actually exist at the time of the enforcement of this Act.
(10)The provisions of Article 104-4 of the new Patent Act applied mutatis mutandis in Article 30 of the new Utility Model Act apply to claims in actions for retrial filed on or after the date of the enforcement of this Act (limited to actions for retrial pertaining to lawsuits to which apply to the provisions of Article 104-3, paragraph (1) of the Revised Patent Act of 2004 applied mutatis mutandis in Article 30 of the Utility Model Act revised by the provisions of the Article 5 of the Act for Partial Revision of the Court Act, etc. (Act No. 120 of 2004)).
(11)Prior laws continue to govern the provisions of Article 33-2, paragraph (1) of the new Utility Model Act applicable to utility model rights deemed to have expired or have been non-existent from the beginning, pursuant to the provisions of Article 33, paragraph (4) or (5) of the new Utility Model Act on or after the date of the enforcement of this Act, and with regard to utility model rights deemed to have expired or have been non-existent from the beginning pursuant to the provisions of Article 33, paragraph (4) or (5) of the former Utility Model Act prior to the date of the enforcement of this Act.
(12)Prior laws continue to govern a trial or appeal, or a retrial requested prior to the date of the enforcement of this Act, until the decision becomes final and binding.
(13)Prior laws continue to govern a retrial against a final and binding decision on a trial or appeal requested prior to the date of the enforcement of this Act.
(14)Prior laws continue to govern an invalidation of a utility model registration (limited to invalidation pertaining to Article 37, paragraph (1), item (vii) of the former Utility Model Act) pertaining to correction which has been made under Article 14-2, paragraph (1) of the former Utility Model Act, prior to the date of the enforcement of this Act (including corrections which is made on or after the date of the enforcement of this Act, and with regard to which the provisions then in force remain applicable pursuant to the provisions of paragraph (12)).
(15)Prior laws continue to govern the provisions of Article 167 of the new Utility Model Act applied mutatis mutandis in Article 41 of the new Utility Model Act apply to a trial or appeal, based on the same facts and same evidence as a trial or appeal for which a final and binding decision has been made after the date of enforcement of this Act, and with regard to a trial based on the same facts and evidence as a trial or appeal for which a final and binding decision has been made prior to the date of enforcement of this Act.
(16)Prior laws continue to govern the provisions of Article 181 of the new Patent Act applied mutatis mutandis in of Article 47, paragraph (2) of the new Utility Model Act applicable to actions against decisions on trials or appeals requested on or after the date of the enforcement of this Act, and with regard to actions against decisions on trials or appeals requested prior to the date of the enforcement of this Act.
(17)The provisions of Article 48-4, paragraphs (4) and (5) of the new Utility Model Act do not apply to International Applications for Utility Model Registration deemed to have been withdrawn pursuant to the provisions of Article 48-4, paragraph (3) of the former Utility Model Act prior to the date of the enforcement of this Act.
(18)Prior laws continue to govern a certification, etc. for information which is pertaining to non-exclusive licenses registered prior to the date of the enforcement of this Act, and for which certification, etc. has not been made pursuant to the provisions of Article 186, paragraph (3) of the former Patent Act applied mutatis mutandis in Article 55, paragraph (1) of the former Utility Model Act, notwithstanding the provisions of the main clause of Article 186, paragraph (1) of the new Patent Act applied mutatis mutandis in Article 55, paragraph (1) of the new Utility Model Act.
(Delegation to Cabinet Order)
Article 11Beyond what is prescribed in Articles 2 through the preceding Article of these Supplementary Provisions, necessary transitional measures relating to the enforcement of this Act is specified by Cabinet Order.
(Transitional Measures Upon Partial Revision of the former Utility Model Act of 1993)
Article 18The provisions of Article 104-4 of the new Patent Act applied mutatis mutandis in Article 13-3, paragraph (4) of the former Utility Model Act of 1993 revised by the provisions of the preceding Article (hereinafter referred to as the "the Revised former Utility Model Act of 1993") apply to claims in actions for retrial filed on or after the date of the enforcement of this Act (limited to actions for retrial pertaining to lawsuits to which the provisions of Article 104-3, paragraph (1) of the Revised Patent Act of 2004 applied mutatis mutandis in Article 13-3, paragraph (4) of the former Utility Model Act of 1993 revised by the provisions of Article 4 of the Supplementary Provisions of the Act for Partial Revision of the Court Act, etc. (Act No. 120 of 2004) apply).
(Transitional Measures Upon Partial Revision of the Amendment Act of 1993)
Article 20(1)Prior laws continue to govern a trial or appeal, or a retrial which has been requested prior to the date of the enforcement of this Act, and is under Article 37, paragraph (1), Article 39, paragraph (1) or Article 48-12, paragraph (1) of the former Utility Model Act of 1993 prior to revision by the provisions of Article 17 of the Supplementary Provisions (hereinafter referred to as the "former Utility Model Act of 1993 prior to Revision"); until the decision becomes final and binding.
(2)Prior laws continue to govern trials concerning the correction of a description or drawings accompanying an application for utility model registration pertaining to a trial which has been requested prior to the date of the enforcement of this Act, and is under Article 37, paragraph (1) or Article 48-12, paragraph (1) of the former Utility Model Act of 1993 prior to Revision, and the decision of which is not final and binding (referred to as a "appeal for correction " in the following paragraph); until the decision becomes final and binding.
(3)Prior laws continue to govern retrials against final and binding decisions on trials which have been requested prior to the date of the enforcement of this Act and are under Article 37, paragraph (1), Article 39, paragraph (1) or Article 48-12, paragraph (1) of the former Utility Model Act of 1993 prior to Revision, and with regard to retrials against final and binding decisions on appeals for correction being requested under the provisions then in force pursuant to the provisions of the preceding paragraph on or after the date of the enforcement of this Act.
(4)Prior laws continue to govern an invalidation of a utility model registration (limited to invalidation pertaining to Article 37, paragraph (1), item (ii)-2 of the former Utility Model Act of 1993 prior to Revision) pertaining to a correction which has been made prior to the date of the enforcement of this Act and is pursuant to the provisions of Article 39, paragraph (1) or Article 40-2, paragraph (1) of the former Utility Model Act of 1993 prior to Revision (including correction which is made on or after the date of the enforcement of this Act, pursuant to the provisions of paragraph (1) or (2));.
(5)Prior laws continue to govern the provisions of Article 167 applied mutatis mutandis in Article 41 of the revised former Utility Model Act of 1993 replaced in Article 4, paragraph (2) of the Supplementary Provisions of the Amendment Act of 1993 revised by the provisions of the preceding Article (hereinafter referred to as the "replaced revised former Utility Model Act of 1993") applies to a trial or appeal based on the same facts and same evidence as a trial or appeal with the final and binding decision which has been made on or after the date of the enforcement of this Act; and with regard to a trial or appeal based on the same facts and same evidence as a trial or appeal, the final and binding decision of which has been registered prior to the date of the enforcement of this Act.
(6)Prior laws continue to govern the provisions of Article 195-4 of the new Patent Act applied mutatis mutandis in Article 47, paragraph (1) of the revised former Utility Model Act of 1993 and Article 55, paragraph (6) of replaced revised former Utility Model Act of 1993 apply to a decision of dismissal of a written request for correction which has been requested on or after the date the enforcement of this Act, and which is made pursuant to the provisions of Article 133, paragraph (3) of the new Patent Act applied mutatis mutandis in Article 41 of the replaced revised former Utility Model Act of 1993 pertaining to a trial under Article 37, paragraph (1) or Article 48-12, paragraph (1) of the revised former Utility Model Act of 1993, and is under Article 40-2, paragraph (1) of the revised former Utility Model Act of 1993; and with regard to a decision of dismissal of a written request for correction which has been requested prior to the date of the enforcement of this Act, and which is made pursuant to the provisions of Article 133, paragraph (3) of the former Patent Act applied mutatis mutandis in Article 41 of the former Utility Model Act of 1993 prior to a revision pertaining to a trial under Article 37, paragraph (1) or Article 48-12, paragraph (1) of the former Utility Model Act of 1993 prior to Revision, and is under Article 40-2, paragraph (1) of the former Utility Model Act of 1993 prior to a revision.
(7)Prior laws continue to govern the provisions of Article 181 of the new Patent Act applied mutatis mutandis in Article 47, paragraph (2) of a replaced revised former Utility Model Act of 1993 apply to an action against a decision concerning a trial or appeal which is requested on or after the date of the enforcement of this Act, and is under Article 37, paragraph (1), Article 39, paragraph (1) or Article 48-12, paragraph (1) of the Revised former Utility Model Act of 1993; and with regard to an action against a decision on a trial or appeal which has been requested prior to the date of the enforcement of this Act, and is under Article 37, paragraph (1), Article 39, paragraph (1) or Article 48-12, paragraph (1) of the former Utility Model Act of 1993 prior to a revision.
(8)The provisions of the Appended Tables 9 of the revised former Utility Model Act of 1993 apply to fees pertaining to a trial which is requested on or after the date of the enforcement of this Act, and is under Article 37, paragraph (1) or Article 48-12, paragraph (1) of the revised former Utility Model Act of 1993; and with regard to fees pertaining to a trial which is requested prior to the date of the enforcement of this Act and is under Article 37, paragraph (1) or Article 48-12, paragraph (1) of the former Utility Model Act of 1993 prior to revision, the provisions of Appended Tables 9 of the former Utility Model Act of 1993 prior to a revision remain applicable.
Supplementary Provisions[Act No. 74 of June 24, 2011 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date to which 20 days have elapsed from the date of promulgation.
Supplementary Provisions[Act No. 36 of May 14, 2014 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding one year from the date of promulgation; provided, however, that the provisions listed in the following items come into effect as of the date prescribed respectively in those items.
(i)the provisions of Article 9 of these Supplementary Provisions:the date of promulgation
(Transitional Measures Upon Partial Revision of the Utility Model Act)
Article 3(1)Prior laws continue to govern the provisions of Article 2-2, paragraph (1), proviso of the Utility Model Act revised by the provisions of Article 2 (hereinafter referred to as the "new Utility Model Act") apply to applications for utility model registration filed after the enforcement of this Act, and with regard to applications for utility model registration filed prior to the enforcement of this Act.
(2)Prior laws continue to govern the provisions of Article 8, paragraphs (1) and (4) of the new Utility Model Act apply to priority claims accompanying applications for utility model registration filed after the enforcement of this Act, and with regard to priority claims accompanying applications for utility model registration filed prior to the enforcement of this Act.
(3)Prior laws continue to govern the provisions of Article 9, paragraph (1) of the new Utility Model Act that applies to an early application which has been made to be the basis of a priority claim which accompanies an application for utility model registration filed after the enforcement of this Act, prescribed in Article 8, paragraph (1) of the new Utility Model Act; and with regard to an early application which has been made to be the basis of a priority claim which accompanies an application for utility model registration filed prior to the enforcement of this Act, and which is prescribed in Article 8, paragraph (1) of the Utility Model Act prior to revision by the provisions of Article 2 (hereinafter referred to as the "former Utility Model Act").
(4)Prior laws continue to govern the provisions of Article 9, paragraphs (2) and (3) of the new Utility Model Act applies to a priority claim accompanying an application for utility model registration being filed after the enforcement of this Act; and with regard to a priority claim accompanying an application for utility model registration filed prior to the enforcement of this Act.
(5)The provisions of Article 30, paragraph (4) of the new Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the new Utility Model Act do not apply in a case where no certificate prescribed in Article 30, paragraph (3) of the former Patent Act has been submitted within the period prescribed in the relevant paragraph applied mutatis mutandis in Article 11, paragraph (1) of the former Utility Model Act prior to the enforcement of this Act.
(6)Prior laws continue to govern the provisions of Article 43, paragraph (1) of the new Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the new Utility Model Act (including cases where Article 43, paragraph (1) of the new Patent Act is applied mutatis mutandis in Article 43-4, paragraph (3) of the New Patent applied mutatis mutandis in Article 11, paragraph (1) of the new Utility Model Act) that apply to a priority claim accompanying an application for utility model registration being filed after the enforcement of this Act; and with regard to a priority claim accompanying an application for utility model registration filed prior to the enforcement of this Act.
(7)The provisions of Article 43, paragraph (6) of the new Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the new Utility Model Act (including cases where Article 43, paragraph (6) of the new Patent Act is applied mutatis mutandis in Article 43-3, paragraph (3) of the new Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the new Utility Model Act) does not apply in a case where, prior to the enforcement of this Act, no documents prescribed in Article 43, paragraph (2) of the former Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the former Utility Model Act (including cases where Article 43, paragraph (2) of the former Patent Act is applied mutatis mutandis in Article 43-2, paragraph (3) of the former Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the former Utility Model Act; hereinafter the same apply in this paragraph), within the period prescribed in Article 43, paragraph (2) of the former Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the former Utility Model Act, nor letters prescribed in Article 43, paragraph (5) of the former Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the former Utility Model Act (including cases where Article 43, paragraph (5) of the former Patent Act is applied mutatis mutandis in Article 43-2, paragraph (3) of the former Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the former Utility Model Act) have been submitted.
(8)The provisions of Article 43-2 of the new Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the new Utility Model Act (including cases where Article 43-2 of the new Patent Act which is applied mutatis mutandis in Article 43-3, paragraph (3) of the new Patent Act applied mutatis mutandis in Article 11, paragraph (1) of the new Utility Model Act) does not apply to a priority claim accompanying an application for utility model registration filed prior to the enforcement of this Act.
(9)The provisions of Article 32, paragraph (4) of the new Utility Model Act does not apply in cases when registration fees have not been paid within the period extended pursuant to the provisions of Article 32, paragraph (3) of the former Utility Model Act, prior to the enforcement of this Act.
(10)The provisions of Article 34, paragraph (3) of the new Utility Model Act do not apply in cases where a return of registration fees pursuant to the provisions of Article 34, paragraph (1) of the former Utility Model Act has not been requested within the period prescribed in paragraph (2) of the relevant Article prior to the enforcement of this Act.
(11)Prior laws continue to govern the amendment of procedures concerning an international application deemed to be an application for utility model registration filed pursuant to the provisions of Article 48-16, paragraph (4) of the Utility Model Act, prior to the enforcement of this Act.
(12)The provisions of Article 54-2, paragraph (12) of the new Utility Model Act do not apply in cases when a return of fees pursuant to the provisions of Article 54-2, paragraph (2), (4) or (6), (8) or (10) of the former Utility Model Act has not been requested within the period prescribed in paragraph (3), (7), (9) or (11) of the relevant Article prior to the enforcement of this Act.
(Transitional Measures Relating to Penal Provisions)
Article 8Prior laws continue to govern the applicability of penal provisions to acts conducted prior to the enforcement of this Act.
(Delegation to Cabinet Order)
Article 9Beyond what is prescribed in Articles 2 through the preceding Article and Article 19 of these Supplementary Provisions, necessary transitional measures relating to the enforcement of this Act are specified by Cabinet Order.
(Review)
Article 10When five years have passed from the enforcement of this Act, taking into account the status of enforcement of the Patent Attorney Act revised by the provisions of Article 6 (hereinafter referred to as the "New Patent Attorney Act" in this Article), the government is to review the provisions of the New Patent Attorney Act and take necessary measures based on the results thereof.
Supplementary Provisions[Act No. 69 of June 13, 2014 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date of enforcement of the Administrative Appeal Act (Act No. 68 of 2014).
Supplementary Provisions[Act No. 55 of July 10, 2015 Extract][Extract]
(Effective Date)
Article 1This Act comes into effect as of the date specified by Cabinet Order within a period not exceeding one year from the date of promulgation.
(Delegation to Cabinet Order)
Article 5Beyond what is prescribed in the preceding 3 articles and Article 9 of these Supplementary Provisions, necessary transitional measures relating to the enforcement of this Act are specified by Cabinet Order.
Appended table
Person responsible for payment
|
Amount of Money
|
|
1
|
Person filing application for utility model registration
|
14,000 yen per case
|
2
|
Person responsible for procedures pursuant to provisions of Article 48-5, paragraph (1)
|
14,000 yen per case
|
3
|
Person offering pursuant to provisions of Article 48-16, paragraph (1)
|
14,000 yen per case
|
4
|
Person requesting extension of period pursuant to provisions of Article 5, paragraph (3) of the Patent Act applied mutatis mutandis in Article 2-5, paragraph (1)
|
4,200 yen per case
|
5
|
Person requesting Utility Model Technical Opinion
|
42,000 yen per case, plus 1,300 yen per claim
|
6
|
Person correcting description, scope of claims for a utility model registration, or drawings
|
1,400 yen per case
|
7
|
Person requesting judgment pursuant to provisions of Article 71, paragraph (1) of the Patent Act applied mutatis mutandis in Article 26
|
40,000 yen per case
|
8
|
Person requesting ruling
|
55,000 yen per case
|
9
|
Person requesting rescission of ruling
|
27,500 yen per case
|
10
|
Person requesting trial or retrial
|
49,500 yen per case, plus 5,500 yen per claim
|
11
|
Person applying for intervention in trial or retrial.
|
55,000 yen per case
|