For those who apply for utility model applications in Japan from a foreign country
When applying for a utility model registration directly to Japan, if there is no sales office etc. in Japan, procedures by a local representative in Japan are required.
If you make a PCT international application and designate Japan as a designated states, you need to make a national procedure with the Japan Patent Office (JPO) within 30 months from the priority date, and make the international application for utility model registration applied to Japan.
These procedures can be made to the JPO until the “standard time for national processing ” , but procedures after the “standard time for national processing ” require a local representative in Japan.
In order to carry out the patenting process smoothly in Japan later, it is desirable to appoint a local representative in Japan from national phase.
As a local representative in Japan, we will assist in the acquisition of utility model rights in Japan.
Even in the case of utility model registration applications, we think that we can communicate with you without problems by exchanging e-mails, but you can also make video conferences as needed.
Please see here for our video conference.
Although our office is a small office operated by two patent attorneys, we offer smart services at low cost that are not available at major patent offices.
■Cost required for filing a utility model registration from foreign countries to Japan
Convention on Utility Models in which Japan is a Member
Japan is a member of the following international treaties on patent registration, filing procedures, etc.
①Paris Convention on the Protection of Industrial Property Rights
②Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)
③ Patent Cooperation Treaty (PCT)
④ Patent Law Treaty (PLT)
⑤Strasbourg Agreement Concerning the International Patent Classification
Basic concept of Japan’s utility model system
The first-to-file rule
“The first-to-file rule” is a system to prioritize and register those with earlier filing dates.
If two or more applications are filed on the same day, only one of them will be registered.
Non-substantive examination system
For utility model registration applications, “formality examination” and “basic requirements examination” will be conducted, but substantive examinations such as “novelty” and “inventive step” will not be conducted.
The unity of invention
If a group of inventions satisfies the requirements of unity of invention by having a special technical feature between two or more inventions, a patent application can be filed with one application.
Flow after application for utility model registration (direct application)
(1)Utility model registration application
■ The applicant describes the required matters in the “Request”, and submits it to the Commissioner of the Patent Office with “claims”, “description”, “drawings” and “abstracts” attached.
■ It is necessary to pay the registration fee for the 1st to 3rd year simultaneously with the application.
(2) Formality examination and basic requirements examination
■ The application will be reviewed for deficiencies in the description and whether it meets the basic requirements.
(3)Order for amendment
■ If there are deficiencies in the submitted documents and basic requirements, an amendment order will be issued to the applicant.
■If the applicant does not respond, the application will be rejected.
■ Replenish and correct the contents of application documents in response to order for amendment.
(5)Registration of the establishment
■ Applications that meet the formal and basic requirements will be registered for utility model rights without undergoing substantive examination.
(6)Publication of the utility model gazette
The contents of the utility model right will be published in the “Utility Model Gazette” and released to the public.
Flow of processing in Japan by International patent application
PCT national phase to the Japan Patent Office
If the applicant wishes to be granted a right in Japan, the applicant must carry out a national processing to the JPO.
The applicants are required to submit a “national document” to the Commissioner of the Patent Office within 30 months of the priority date (hereinafter referred to as the”time limit for submitting national documents“) and pay the necessary “national fee”.
Submission of national documents
In Japan, an application described as “Utility model registration” in [Category of application] in the national document is regarded as a utility model registration application filed on the international application date, and this is referred to as “International Applications for Utility Model Registration”.
It is necessary to submit to the Commissioner of the Patent Office, stating the following matters in the prescribed format. If you do not submit a national documents to the time limit for submitting national documents, you will be deemed to have withdrawn your application to Japan.
(1) The name, and the domicile or residence of the applicant
(2) The name, and the domicile or residence of the inventor
(3) International Application Number
(4) Classification of application
(5) If there is an agent, the name or address of the agent and the address or residence
(6) Other necessary matters
If the international application does not contain a drawing at the international filing date, the applicant of the international utility model registration application must submit the drawing by the day on which standard time for national processing falls.
■The applicants must pay a national fee of 14,000 yen to the Commissioner of the Patent Office within the time limit for submitting national documents.
■ In addition, it is necessary to pay at the same time from the first year of the registration fee to the third year ((2,100 yen + number of claims × 100 yen) × 3 years).
Japanese translation submission
The applicant of the foreign language patent application must submit a Japanese translation of the description, claims, drawings (limited to the explanation in the drawings) and abstract of the international application on the international filing date to the Commissioner of Patent Office.
In addition, the applicant of a foreign language patent application who has made an amendment under Article 19 (1) of the Convention may submit a translation including the Article 19 amendment.
It must be submitted to the Commissioner of the Patent Office within the standard time for national processing.
However, if you have filed a foreign language patent application that filed a national document between 2 months before the expiration of the time limit for submitting national documents, you can submit the translation within 2 months from the date of filing of the national document.
Submission of a translation of the claims after amendment under Article 19 (1) of the Patent Cooperation Treaty
The applicant of the foreign language patent application who has made an amendment based on Article 19 (1) of the Convention may submit a translation of the scope of the amended claim instead of the translation of the scope of the claim on the international filing date.
In addition, the translation regarding Article 19 amendment can be submitted on or before the day on which the standard domestic processing time falls.
Submission of “Translation” of the Amendment under Article 34 (2) (b) of the Patent Cooperation Treaty
Regarding the amendments attached as annexes to the international preliminary report as the basis of the report, the applicant shall submit a Japanese translation of the amendments by the day on which the standard time for national processing falls.
The standard time for national processing
For foreign language patent applications, one of the following will be the “standard time for national processing “.
(1) When the period of 30 months from the priority date expires
(2) In the case of filing a domestic document from 2 months before the expiration of (1) to the expiration date, when the period of 2 months from the date of filing the national document (translation submission special period) expires.
(3) When a request for application examination is made within the period (1) and (2), the request is made (but the request for examination of the application must be submitted after filing a national document and a translation and paying a national fee).
Request for Registrability Report
As utility model rights are granted without conducting examinations on substantive requirements, exercise of rights requires a higher degree of care. In Japan, the “Request for Registrability Report” is one of the factors to determine the effectiveness of a utility model right.
■ The examiner of the Patent Office evaluates the “novelty”, “inventive step”, etc. of the application submitted to the examiner, and the examiner gives this to the requester (when a request is made from another person, also notify the utility model owner).
■The request can be made by anyone at any time, except after the utility model registration has been revoked, or after a patent application based on the utility model registration has been filed.
Procedure for Request for Registrability Report
Request for Registrability Report can be done by anyone after the standard time for national processing has passed, and submits the “Request for Registrability Report” to the Commissioner of the Patent Office.
Request for Registrability Report fee
|International search report type||Fee|
|where the international search report has been established by the JPO (under the PCT)||8,400 yen + number of claims x 200 yen|
|-where the international search report has been established by an International Searching Authority other than the JPO (under the PCT)||33,600 yen + number of claims × 800 yen|
|No international report was prepared||42,000 yen + number of claims × 1,000 yen|