① The PCT application filed in its original language is the basis of the examination. Mistranslations may be corrected after the grant of a utility model under the conditions that no new matter isintroduced by the correction in view of the initial Japanese translationand thatthe scope of the utility model rightisnotbroadened or shifted by the correction.
①' Paris route applications must be filed in Japanese. There is no option to file in English and submit a Japanese translation, unlike a Paris route patent application. A drawing is necessary for a Utility Model application. If a Utility Model application has no drawing, a request to submita drawing is issued by the JPO and if no drawing is submittedin response, the application is dismissed. Registration feesfor the first three years must be paid at the time of filingin addition to the filing fee.
② The time limit for filing voluntary amendmentscan beas short as 1 month from the filing date in Japan.
③ The deadline for entry into the national phase in Japan is 30 months from the priority date. Missing the deadline results in a legal fiction of abandonment of the application as far as the national phase in Japan is concerned and the application cannot be reinstated even if the abandonment is against the intention of the applicant.Conversion from a Utility Model application to a patent application and viceversa is possible while anapplication is pending examination.In addition to the filing fee, registration feesfor the first three years must be paid at the time of filing.
④A Japanese translation must be filed within 2 months from the entry into Japanof the application or 30 months from the priority date whichever date comes later.
⑤Formality examination checks whether the claimed subject matter is a configuration, a structure or a combination of an article, whether the subject matter conforms to thepublic order and morality, and whether the application meets the formality requirements.
⑥Providedthe formalities forapplications have been fulfilled, the utility modelis registered without a substantive examination.However,after registration, or a successful request of invalidation, the utility model can be corrected only forthe deletion of claims, the narrowing of the scope of the claims,orthe correction or clarification of errors.
⑦After registration, the Utility Model is published in the official Gazette as a first publicationA Utility Model.
⑧Technology Assessment can be requested by any person at any time after the filing of the application.The examiner, on the basis of the prior art search, will prepare a registrability report about the validity of the utility model.Since utility modelrights are registered withouta substantive examination, it is essential for applicantsto make a decision of whether or not to file an application on the basis of a thorough prior art search.
The Utility Model right holder must show a Technology Assessment report to the alleged infringer before staring an infringement lawsuit.