Be Aware of the Utility Model System in Japan

In Japan, there is a Utility Model registration system in addition to the Patent system. The utility model registration system is a system that protects “small inventions.” The countries where the utility model registration system exists are limited, such as Japan, China, South Korea, Germany, Russia, Spain, and Australia. The system utilization rate is not high in Japan and Germany, but it is showing a great increase in China. In Japan, large companies rarely use the Utility Model System, but the utilization rate of small and medium-sized companies is high.

When aiming to acquire the rights on inventions in Japan from overseas, it seems that patents are overwhelmingly used in general: however, please consider the registration of utility models in Japan as an effective “hidden method”. The reason is not such as in the promotional catchphrase of Japanese “Gyudon (BEAF BOWL) chain, “Fast, Cheap, Delicious”. While the cost is less than half that of a patent, the period until acquisition is about 3 months, and the duration of the right is only 10 years (Patents are 20 years), if it has novelty and inventive step, the strength of the Utility Model right is the same as that of a patent. Depending on how it is used, it works as much as patents do in the marketplace. The Utility Model system is clearly on the side of small and medium-sized enterprises and should always be considered.

In Japan’s case, the utility model is an unexamined registration system. That is, only the formality of an examination is performed: a substantive examination regarding novelty and inventive step is not performed before registration. As the result, the value of registration may seem to be ambiguous because it has not been examined in advance. Therefore, after registration, the JPO will issue a Utility Model “report card” for registration upon request under the “Technical Evaluation System”. This Utility Model non-examination registration system started in 1993.

When sending a warning letter based on a Utility Model registration, it is necessary to attach the Technical Evaluation Report to the warning letter. This will reveal the objective value of the utility model registration. The warned person will then review the materials, and file an invalidation appeal when there is no novelty or inventive step identified in the report. Alternatively, should the registration demonstrate novelty and inventive step, they should seek an amicable solution with the Utility Model holder. 

In this light, the Utility Model may make a weaker impression from the viewpoint of stability of rights than patents – in terms of its non-examination. However with the highest evaluation in the technical evaluation (a point system with a maximum score of 6 points), if obtained it can withstand an infringement lawsuit. In fact, an infringement lawsuit that Kimura & Partners is currently involved in on the plaintiff’s side is based on utility model rights, and it is proceeding in the plaintiff’s favor. However, it should be noted that inventions of methods, and inventions that cannot be portrayed as shapes or structures are not protected by Utility Models and should be protected by patent. 

The Utility Model system, depending on how it is used, can be very effective, keep costs down and protect especially small businesses. Therefore, if non-Japanese companies wish to obtain IP protective rights as soon as possible in Japan, the Utility Model system should be taken into serious consideration.



By Takaaki Kimura

Managing Partner and Patent Attorney with over thirty-five years of IP law experience.