Patent & Utility Model Searches
Patent/utility model searches are conducted for various purposes, such as for grasping preceding researches and developments before initiating your own to avoid duplicate researches, for FTO (freedom to operate) purpose to identify existing patent rights relevant to your products to be marketed in Japan to prevent infringement of such rights, and for seizing on technology trends in Japan.
For attaining such purposes, highly precise searches are required.
At NIPB, our practical and seasoned staffs conduct searches from diversified perspectives, using keywords and International Patent Classification (IPC), as well as Japan’s unique patent classification (FI) and search terms (F term), and thoroughly reviewing the detected publications and studying their contents, to report an exact search result that fulfills the purpose.
We also undertake searches for collecting prior art publications that may serve as exhibits in third party observations, oppositions, or invalidation trials. In the searches of these purposes, selection of prior art publications requires careful consideration of logic for denying the inventive step of the target invention, which requires not only patent search skills, but also sophisticated skills to evaluate patentability. At NIPB, based on our knowledge and expertise acquired from our abundant experience of invalidation trials and the like, we can identify an exact prior art publication needed for construction of logic for denying inventive step of the target invention.
Application Prosecution for Patent/Utility Model Registration
We draft prosecution documents bearing in mind exploitation of ultimate patent/utility model rights. Specifically, we pursue a highly exclusive patent/utility model right through accurate understanding of the invention, pursuit of the essence of the invention, understanding of Examiner’s or Appeal Examiner’s logic read from and between the lines of the Office Actions, construction of legally and technically reasonable arguments, and exact expression of the arguments.
In particular, through feedback of various knowledge and skills acquired through extensive experience in resolving disputes, we draft high-quality prosecution documents.
Please click here for the flow of patent prosecution.
Please click here for the flow of utility model prosecution.
Written Opinion relating to Patent/Utility Model Right
We provide FTO opinion as to whether a product to be manufactured or distributed by the client or a method for manufacturing the same infringes a third party’s patent/utility model right in Japan. Depending on the opinion, it would be necessary for the client to take a measure, such as requesting the third party for assignment or license of the patent/utility model right, or changing the design of their products. In this way, the opinion may make a significant impact on the business activity of the client, and thus the validity of the logic and the conclusion put in writing is of profound importance.
We write high-quality opinions based on our abundant experience in trials and lawsuits, and offer sound advice to the client as to possible measures to take, if any legal problem is anticipated.
Difference between Patent Right and Utility Model Right
Difference between Patents and registered utility models are shown below.
We provide advice on which system could appropriately protect your right.
| Patent | Utility Model | |
|---|---|---|
| Object of Protection | Invention (directed to Product/Method) |
Device/Small Invention (directed to Configuration or Structure of Article, or Combination thereof) |
| First Publication of Application | After the lapse of 18 months from the filing date, or the earliest priority date where priority is claimed | After registration |
| Substantive Examination | YES |
NO (examined only on basic requirements and formality) |
| Request for Examination |
Required (within 3 years from the filing date) |
N/A |
| Time Required from Filing to Registration | Long | Short |
| Term of Right | 20 years from the filing date | 10 years from the filing date |
| Requirements for Exercise of Right | Presentation of Search Report is not required. | Presentation of Utility Model Search Report is required. |
For JP national phase applications of PCT applications, the "filing date" is the international filing date.
Flow
PATENT
1 A Japanese patent application is laid-open to public inspection after the lapse of 18 months from the earliest priority date.
2 A Request for Examination must be filed within 3 years from the filing date in Japan (for a Japanese national phase application of a PCT application, within 3 years from the international filing date).
3 Issue fee must be paid within 30 days from the mailing date of Decision to Grant a Patent.
UTILITY MODEL
Issue fee must be paid upon filing an application.