Overview
You can change your application from a patent application to a utility model registration application (Article 10 of the Utility Model Law).
As an example of changing the application from a patent application to a utility model registration application, when the final reason for refusal is notified to the patent application and it is difficult to obtain the patent right even by amendment or written opinion, the utility model You can obtain a utility model right by changing the application to the registration application.
A utility model registration application examines only basic requirements and does not examine substantive requirements such as novelty and inventive step, so if the basic requirements are met, 100% will be registered.
Even if you cannot obtain a patent right, you can still obtain a utility model right.
Utility model rights can only be exercised after presenting a positive utility model technical evaluation report, such as injunctions and damage doublings, but "utility model right registration" on products and product packages, etc. It can be described as "finished", and I think that it has an advertising effect and a restraining effect on third parties.
Independent requirements
The applicant for the modified application must be the same as the applicant for the original application (Article 10, Paragraph 1 of the Utility Model Law).
If the original application is a joint application, all joint applicants must change the application (Patent Law Article 14).
Objective requirements
You can create the scope of claims for utility model registration from the claims, specifications, and drawings of the original patent application.
Since the scope of protection of the utility model right is the shape, structure or combination of the article (Article 6-2, Item 1 of the Utility Model Law), the method, chemical substance, and computer program should be stated in the scope of the utility model registration claim. you can not. These are not the scope of protection of the utility model right, and if stated, they violate the basic requirements.
Timing requirements
At the time of application change, the patent application must be pending at the Patent Office.
Therefore, at the time of application change, if the patent application has already been withdrawn, abandoned, rejected, a decision of refusal or a trial decision has been finalized and registered, the application cannot be changed.
In addition, the application cannot be changed (1) after three months have passed from the date of service of the first copy of the decision of refusal, and (2) after six months have passed from the date of filing the original patent application (Article 10 of the Utility Model Law). Paragraph 1 proviso).
effect
In the case of a legal application change, the filing date of the utility model registration application goes back to the filing date of the original patent application (Article 10, Paragraph 3 of the Utility Model Law).
The novelty / inventive step of the utility model technical evaluation report and the trial for invalidation is judged by the filing date of the original patent application.
Changing an application from a practical patent application to a utility model registration application
In order to change an application from a patent application to a utility model registration application, we believe that you should create new claims as much as possible from the contents of the patent application.
The reason is explained below.
① To obtain a check effect on third parties
Utility model rights are registered without examining substantive requirements such as novelty and inventive step.
Furthermore, with regard to utility model rights, it is not possible to request an injunction or claim compensation for damages unless a positive utility model technical evaluation report is presented.
Because of this, some people say that utility model rights are meaningless.
If you are asked whether it is okay to enforce a third party's utility model right, it is not possible to immediately answer that it is okay.
If a third party is working on a device that has a utility model right, and a utility model technology evaluation report that is positive about the third party's utility model right is obtained, a claim for an injunction or compensation for damages may be filed. I'll put it away.
In order to ensure that a third party's invention can be implemented, it is necessary to request an invalidation trial and invalidate the utility model right.
Alternatively, you can request a utility model technical evaluation report and receive a negative result.
Since both a request for an invalidation trial and a request for a utility model technical evaluation report are costly, you may give up on requesting an invalidation trial and request for a utility model technical evaluation report.
In that case, if the number of claims is small, you may be able to easily find reasons for invalidation by conducting a prior art search.
If a reason for invalidation is found, the person who wants to implement the invention eligible for the utility model may ask for a free license, or the person who wants to implement the invention for which the utility model is entitled may try to implement the invention due to the reason for invalidation. yeah.
We believe that the greater the number of claims, the greater the deterrent effect on others.
② Corrections to utility model rights are limited.
With utility model rights, claims can be deleted as many times as desired, but the scope of claims can only be restricted once.
In addition, procedures for reduction of the scope of claims cannot be carried out after either period ① or ② below has elapsed.
① Two months after the date on which a certified copy of the first utility model technical evaluation report is delivered
②After the period for filing a reply initially designated by the service of a duplicate copy of the request for invalidation trial has elapsed.
For this reason, if the number of claims is small, the scope that can be corrected will be narrower, or corrections will not be possible at all.
On the other hand, if there are a large number of claims, you can make corrections by deleting claims little by little.
For reasons ① and ② above, when changing an application from a patent application to a utility model registration application, we believe that new claims should be created as much as possible from the contents of the patent application.
