Utility Model Overview

 

Restriction of Multi-Multi Claims

[1] What is a Multi-Multi Claim?
　The term “Multi-Multi claim” means “a claim that selectively recites two or more other claims which selectively recite two or more other claims (multi-claims)”.
　We will use the following examples of claims to illustrate the term “Multi-Multi claim” in detail.

Claims:
[Claim 1] A composition containing A.
[Claim 2] A composition of claim 1, further comprising B.
[Claim 3] A composition of claim 1 or 2, further comprising C.
[Claim 4] A composition of any one of claims 1 to 3, further comprising D.

　Claim 3 is a multi-claim because it selectively recites two or more other claims.
　Claim 4 is a Multi-Multi claim because it recites claim 3, which is a multi-claim, and selectively recites two or more other claims.

[2] Purpose of the Restriction
　Multi-Multi claims were permitted in Japan and Europe, whereas they were not in the U.S., China, and Korea, among the major intellectual property offices (IP5) of Japan, the U.S., Europe, China, and Korea.
　In addition, Multi-Multi claims are a cause of excessive burden in monitoring and examination processes by third parties as it is necessary to combine the description of all claims to which a claim refers in order to understand a single claim.
　Therefore, for the purpose of promoting international harmonization as well as reducing the workload of examination and the burden of monitoring by third parties, it was decided to introduce the restriction on Multi-Multi claims.
　The restriction has been effective since April 1, 2022.

[3] Details of the Multi-Multi Claim Restriction
　(1) Claims that are found to be Multi-Multi claims will fall under a reason for refusal for violation of Article 36, Paragraph 6, Item 4 of the Patent Act. However, they do not fall under the grounds for opposition or grounds for invalidation.
　(2) In case of violation of the Multi-Multi claim restriction, the claims are not subject to examination for other patent requirements, such as novelty and inventive step. This is because the purpose of this restriction is to “reduce the burden of examination” and “maintain fairness among applications.”
　(3) For the same reason, claims citing Multi-Multi claims are not subject to examination for other patent requirements, such as novelty and inventive step.
　(4) With respect to unity of invention, claims that fall under Multi-Multi claims are excluded from the judgment of unity of invention. Therefore, the unity of invention is judged with respect to claims other than those falling under Multi-Multi claims.
　(5) If Multi-Multi claims are amended in proper form, and, as a result of which, it becomes necessary to examine the amended claims and to be notified only of the reasons for refusal as a result of the amendment, this shall be the final notice of reasons for refusal.
　(6) The Multi-Multi claim restriction applied to patents also applies to utility models. In the case of violation thereof, the applicant is subject to an amendment order due to lack of the basic requirement. (Article 6-2 of the Utility Model Act)
　(7) In principle, the application of Multi-Multi claim restriction is judged based on the filing date. Therefore, the Multi-Multi claim restriction does not apply to applications whose filing dates are retroactively set to before the effective date, such as in the case of filing a divisional application after the effective date. However, it does apply to an application with a priority claim whose priority date is before the effective date but whose filing date is on or after the effective date.

[4] International Applications
　(1) The Multi-Multi claim restriction does not apply to PCT applications whose international filing date is before the effective date and which are transferred to Japan after the effective date.
　(2) With respect to the international phase of a PCT application, Multi-Multi claims are still subject to international search and international preliminary examination.

[5] Multi-Multi Claim Checker (Japanese version only)

　The Japan Patent Office (JPO) provides a “Multi-Multi Claim Checker” to check for the existence of Multi-Multi claims before filing an application or amendment.

https://www.jpo.go.jp/e/system/patent/shinsa/multimulticlaims.html

2021 revision overview

This video is for 2021 revision overview for the granting of the relief procedures.
Japan’s intellectual property system has been revised four times so far with regard to relief after the expiration of the term. These amendments have relaxed the time and subjective requirements, increased the number of procedures covered, and ensured sufficiently protection of rights.
However, even with these amendments, there were still two issues: “strict interpretation of “legitimate reasons” and “procedural burden on applicants”.
In order to resolve the above two points, the fifth amendment was made in 2021, which included two amendments: “revise from Due care to unintentional”, and ” submit evidentiary materials from mandatory to voluntary”.

Overview of Utility Model Registration

Utility Model Registration Procedures Route

The Japanese utility model system primarily differs from the patent system in the following respects.

  • – Subject of protection (See (1) below)

  • – Non-substantive examination system (See (4) below)

  • – Term of protection (See (7) below)

Subject of Protection

The subject of utility model protection is limited to technical ideas relating to the shape or structure of an article or combination of articles (Utility Model Act, Article 3, Paragraph 1). It includes immovable properties such as buildings, bridges and manufacturing plants. On the other hand, materials themselves (e.g. medicines, chemical compounds, glasses and alloys), or methods are not subject to utility model protection.

Application

A utility model application is filed with a request, a description, claim(s), drawing(s) and an abstract.
Note that all the utility model applications should be accompanied by drawing(s) (Utility Model Act, Article 5, Paragraph 2), because the subject of protection is limited to the shape of an article etc.
For PCT route application, the time limit for entering the Japanese national phase is 30 months from the priority date. The applicant can choose between patent application and utility model application at entry. For PCT application filed in a foreign language, a Japanese translation of the international application must be submitted (i) within 30 months from the priority date, or (ii) 2 months from the national phase entry, whichever comes later.
The application fee and the annual fees for the first to third years shall be paid in a lump sum, simultaneously with the filing of the utility model application.

Basic requirements and formality

An application is examined for basic requirements and formality. As basic requirements, (i) subject of protection; (ii) violation of public order or morality; (iii) formality of claims; and (iv) unity of claims are examined (Utility Model Act, Article 6-2).

Substantive requirements

A utility model application must fulfill substantive requirements such as novelty and inventive steps.
However, these substantive requirements are not examined.
The substantive requirements for a utility model registration are the same as for a patent application.
Phrases providing the inventive step in the Patent Act and Utility Model Act are slightly different. The former writes an invention which “a person ordinarily skilled in the art of the invention would have been able to easily make” lacks the inventive step (Patent Act, Article 29, Paragraph 2), while the latter writes a device which “a person ordinarily skilled in the art of the device would have been exceedingly easy to create” lacks the inventive step (Utility Model Act, Article 3, Paragraph 2).
Despite these different expressions, it is not apparent whether JPO treats them differently when making a “utility model technical opinion” (See (8) below).
Failure to comply with any of the substantive requirements gives a ground for later invalidation (Utility Model Act, Article 37).

Amendment

Voluntary amendment can be filed only for one month from the filing date (Article 2-2 and Cabinet Order on Utility Model, Article 1).
Moreover, an amendment can be filed in response to an amendment order during a period specified by the Commissioner (Utility Model Act, Article 6-2).

Registration

After basic requirements and formality are examined, without substantive examination, the utility model registration is granted and the official gazette is published. It typically takes about 4 months from a utility model application to the registration.

Term of right

The term of a utility model right is 10 years from the filing date of the application (Utility Model Act, Article 15) compared to 20 years for a patent.

Exercise of right

Since a utility model is registered without substantive examination, there is a provision to avoid abuse of right. The holder of a utility model right should give warning to the infringer, presenting the “utility model technical opinion” issued by JPO (Utility Model Act, Article 29-2). The technical opinion is a report on the registrability of the utility model, which gives the JPO’s opinion about if the utility model fulfills substantive requirements or not (Utility Model Act, Article 12).
Any person may make, to the Commissioner of the JPO, a request for a technical opinion (Utility Model Act, Article 12, Paragraph 1). The request may be made even after the expiration of the utility model right except when the registration has been invalidated in an invalidation trial. It takes about six months from the date of the request to obtain the technical opinion.

Correction*

The owner of a utility model right is entitled to one opportunity to correct the description, claim(s) or drawing(s), at any time except some prescribed cases (Utility Model Act, Article 14-2, Paragraph 1). The purpose of the correction is limited to (i) restriction of the scope of claims; (ii) correction of errors; (iii) clarification of an ambiguous statement; and (iv) conversion of dependent claims to independent claim format (Same Article, Paragraph 2).
Further, the owner of a utility model right may cancel claim(s) as many times as desired, at any time except in case the utility model right is challenged and after the notice of the conclusion of invalidation trial proceedings is issued (Same Article, Paragraph 7).

* Note: JPO uses the word “amendment” for amending description, claim(s), drawing(s) etc. before registration, and the word “correction” after registration.

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