Both the patent system and the utility model system are intellectual property rights that protect inventions. However, there are several important differences between the two. This column explains the characteristics of utility model registration in Japan and highlights the differences between utility models and patents.
1. What is a Utility Model?
A utility model, like a patent, protects new ideas. However, the “invention” in a utility model differs from that in the patent system, as it can involve smaller technological improvements or ideas. Utility models often relate to the shape, structure, or combination of products, aiming to protect these technical ideas.
2. Differences Between Utility Models and Patents
The key differences between utility models and patents are as follows:
2-1. Scope of Protection
The subject of a patent is an “invention,” which is defined as the creation of a technical idea using natural laws, and it must be of a high level of innovation (Patent Act, Article 2). On the other hand, the subject of a utility model is an “idea” related to the shape, structure, or combination of a product (Utility Model Act, Article 1). Unlike patents, utility models cannot protect methods, only physical items.
In patent law, inventions must meet the requirement of “inventive step” (i.e., they must be non-obvious). Utility models, however, do not require a high level of innovation. While both systems require novelty, the patent system involves stricter standards for what qualifies as an invention, requiring more significant technological advancement.
2-2. Duration of Protection
Patents last for 20 years from the filing date (Patent Act, Article 67), whereas utility models are protected for 10 years from the filing date (Utility Model Act, Article 15).
2-3. Registration Procedures
Under the Patent Act, after a request for examination (Patent Act, Article 48-2), the invention must undergo an examination to confirm whether it meets the substantive requirements, such as novelty and inventive step. In contrast, under the Utility Model Act, no request for examination is required, and the utility model undergoes only a formal examination and a basic requirements check (Utility Model Act, Articles 2-2, 6-2). This means utility models are granted without substantive examination, which makes the registration process much faster than for patents.
2-4. Issues of Non-Examination System and Measures to Prevent Abuse
Since utility models are granted without examination, their validity is largely left to the discretion of the parties involved. To address this, the Utility Model Technical Evaluation System was established (Utility Model Act, Article 12), where the Japan Patent Office (JPO) evaluates the novelty and inventive step of a registered utility model. Anyone can request a technical evaluation.
Moreover, utility model holders cannot file an infringement lawsuit without first obtaining a technical evaluation report (Utility Model Act, Article 29-2). This rule prevents the abuse of rights by the holder and protects third parties from unnecessary legal burdens.
Additionally, utility models can only be corrected once after registration (Utility Model Act, Article 14-2). This is to prevent the utility model holder from making frequent corrections that could unfairly expand the scope of the rights after prior art is introduced.
2-5. Conversion Applications
It is possible to change an application from a patent application to a utility model application (Utility Model Act, Article 10), or vice versa (Patent Act, Article 46). A conversion application can also be made from a utility model to a patent application based on the utility model registration (Patent Act, Article 46-2). However, it is not possible to file a utility model application based on a registered patent.
3. Reasons for Choosing a Utility Model
The utility model system offers several advantages compared to patents:
3.1 Rapid Registration
Utility models are registered much faster than patents, making them ideal for companies that need to bring their products to market quickly.
3.2 Lower Cost
Utility model applications are generally less expensive than patent applications. This makes the utility model system a more affordable option for companies that may not be able to invest heavily in a patent.
3.3 Simpler Examination Process
Since utility models do not undergo the same rigorous examination as patents, the registration process is much simpler and quicker.
4. When to Use a Utility Model vs. a Patent
Companies and inventors need to carefully consider which system to choose. Patents are suited for more advanced technical innovations, whereas utility models are ideal for protecting relatively simpler technical improvements or modifications to the shape or structure of products. If an inventor wishes to secure protection before significant technological developments, a utility model may be the right option.
A utility model can help companies maintain a competitive edge while bringing technology to market quickly, before moving on to a more substantial patent registration later.
By understanding the differences between utility models and patents in Japan, businesses can better tailor their intellectual property strategy to suit their needs.
If you have any questions, please feel free to contact us through the following page:
https://www.oshpat.jp/en/en-contact/
OSHIMA & PARTNERS
Patent Firm
Japanese Patent Attorney
Yosuke Katsumi
