JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
1.4 Term of Each Intellectual Property Right Patents The term of a patent right is 20 years from the date of filing the patent application. There are, however, some exceptions: • if the establishment of a patent right is regis- tered on or after the date on which five years have passed since the date of filing of the patent application or the date on which three years have passed since the date of filing of a request for examination of the application, whichever is later (the “base date”), the term may be extended by the period calculated by deducting a certain period from a period equivalent to the base date until the date of registration of establishment of the patent right; and • the term may be extended by up to five years on request if the invention cannot be used due to the time spent obtaining approval or any other dispositions under a law intended to ensure safety, as prescribed by a Cabinet Ordinance. Utility Models The term of a utility model right is ten years from the date of filing the utility model application. A utility model application or right may be convert- ed to a patent application within three years from the date of filing the utility model application. 1.5 Rights and Obligations of Owners of Intellectual Property Rights Both patent and utility model owners have the right to an injunction, claim damages, and claim for unjust enrichment. Also, patent owners and utility model owners are under an obligation to pay annual renewal fees in order to maintain their rights.
Notably, a substantive examination is not required for utility model registration applica- tions. As a result, a utility model owner can only enforce their rights against an infringer after issuing a warning and providing a Utility Mod- el Technical Opinion Report for the registered utility model. This report assesses the novelty and inventive step of the registered utility mod- el, conducted by a JPO examiner based on a search of prior art documents. A request for a Utility Model Technical Opinion Report can be made at any time after the application for a utility model has been submitted. In Japan, there is no public information listing applicable patents regarding certain products or processes. Although there is a public database of patent information in Japan called J-PlatPat, J-PlatPat does not have any functions to search applicable patents in relation to certain products or processes. 1.6 Further Protection After Lapse of the Maximum Term There is no further protection for technical intel- lectual property rights after their maximum term has lapsed. 1.7 Third-Party Rights to Participate in Grant Proceedings Anyone may file a third-party observation at any time after filing a patent application or an appli- cation for utility model registration, even after a patent or utility model right has been granted. Third-party observations may include prior art information or a submitter’s comments regard- ing the novelty or inventive step of the claimed inventions, as well as other information or com- ments regarding other requirements, such as the addition of new matter, the support requirement, or the enablement requirement. Third-party observations may be filed anonymously.
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