In a previous article, I touched on “the usefulness of the Japanese Utility Model System” in Japan. The utility model system is a strong ally when Small and Medium-Sized Enterprises (SMEs) try to protect “technical ideas” in Japan. Thus the usefulness of the utility model system will be more fully described below.
The essential characteristic of Japan’s utility model system is its “non-examination system”. In order to protect applicants with the utility model system, it is necessary to become familiar with the meaning, advantages and disadvantages of this non-examination system.
In 1993 in Japan, the utility model “examination system” changed to become a “non-examination system”. The reason for this amendment was that at that time, the examination of patent applications was often delayed and there was substantial criticism from the industry about the delay in acquiring rights. As a result, a bold amendment was made to switch to a non-examination system for utility models. In my opinion, this amendment to the law was very good and created a very favorable situation for Japanese SMEs.
The utilization rate of the utility model system in Japan is not high for the industry as a whole (approx. 10,000 or less per year), and large companies have little interest in the utility model system. Therefore, Japanese patent attorneys whose clients are large companies often have no experience in using it. I recall being in a meeting where a well-known patent attorney said, “the utility model system has a low utilization rate, so it may eventually disappear.” As a Patent Attorney who uses the utility model system a lot, I also recall being rather surprised at this comment.
I also hear that some patent attorneys who have registered utility models make comments to their applicants to the effect of “Because it is a non-examination system, the value of its rights is not perfect and you should not expect much.” In this way, the utility model system is not very well received by Japanese patent attorneys – but is this perspective justified? Allow me to address it further.
First of all, a perceived drawback can in fact be an advantage. The “non-examination system,” which is the main shortcoming (vs a patent) of the utility model system, can be the biggest advantage as it is. The point I want to make is that there is a knack for how to use the utility model system, and I will share some of my ideas here.
The advantages of the utility model system are the early acquisition of rights (registered in about 3 months from application), low cost of registration (less than about half of patents), and quick and reliable acquisition of simple technical ideas.
The primary and most valuable intellectual property of small and medium-sized enterprises is overwhelmingly an improvement of simple technology. Even if it is a simple technical improvement, it is legally possible to aim for the acquisition of rights in a patent application, but examiners familiar with the very advanced technologies of large companies also examine the simple technical ideas of a SME’s – this is, potentially, a major obstacle facing the SME.
As is the case in all countries, the patent examination philosophy is a “point deduction method”: inventions are patented in cases for which reasons for refusal cannot be found. Therefore, the psychology of the examiner who examines a simple technical idea has a rather troublesome problem of whether or not it is okay to patent such a simple technology.
In the case of large company inventions, an idea whose technical structure is overwhelmingly complicated and which has been sufficiently established, an examination target can easily be examined for novelty and inventive step.
However, in the case of utility models, there is the possibility that the subject of examination may be vulnerable as a new creative idea. Examiners may be very skeptical about the subject of the examination. Therefore, in particular, stricter attention is paid to the judgment of inventive step, which may result in an overwhelmingly disadvantageous result for the applicant. The tragedy will be that even if an SME with poor financial resources invests money and fights through to the trial stage, it may not be patented in the end. This is all too common.
In order to avoid such situations, we strongly recommend the registration of utility models for “simple ideas that are novel but have questionable inventive step” in the patent search before filing.
In Japan, the conditions for SMEs to take advantage of the utility model system are as follows.
i: Be sure to conduct a patent search before filing an application to confirm the level of novelty and inventive step.
ii: Aim for taking “Evaluation 2” (novelty exists but inventive step is questionable) in the technical evaluation system.
iii: Use the “utility model registered” mark in advertising.
The above conditions allow SMEs to effectively protect their market position and business value. The usefulness of the Japanese Utility Model System cannot be overstated.