(Application for patent based on utility model registration)

(Application for patent based on utility model registration)
46bis(46-2). —- (1) The owner of a utility model right may file an application for a patent on the basis on his utility model registration as provided for in the Ordinance of the Ministry of Economy, Trade and Industry, except in the following cases. In such a case, the owner shall abandon his utility model right:

(i) when three years have expired from the filing date of the utility model application under the utility model registration;

(ii) when a request was made for a technical opinion referred to in Section 12 (1) of the Utility Model Law (hereinafter simple referred to as “a technical opinion as to registrability of a utility model” in the following paragraph) by an applicant for an utility model registration or an owner of a utility model right with respect to the utility model application under the utility model registration or the utility model registration;

(iii) thirty days have expired from the date when the first notification was received under Section 13(2) of the Utility Model Law with respect to the request for a technical opinion as to registrability of a utility model made by a person other than an applicant for a utility model registration or an owner of a utility model right with respect to the utility model application under the utility model registration or the utility model registration;

(iv) when the period first designated under Section 39(1) of the Utility Model Law expired for the invalidation trial which was demanded for the utility model registration of the utility model registration under Section 37(1) of the said Law.

(2) An application for a patent under preceding subsection shall be deemed to have been filed at the time when the application for utility model registration was filed, to the extent that the features disclosed in the description, claim(s) or drawing(s) attached to the request of the application for patent remains within the scope of the features disclosed in the description, claim(s) or drawing(s) attached to the request of the application for the utility model registration on which the patent application is based. However, this provision shall not apply where the patent application is either another application for a patent as referred to in Section 29 bis(29-2) of this Law or an application for patent as referred to in Section 3 bis(3-2) of the Utility Model Law for the purposes of those Sections and of Sections 30(4), 36 bis(36-2)(2), 41(4), 43(1)(including its application under Section 43 bis(43-2)(3)) and 48 ter(48-3)(2).

(3) Where, due to reasons outside his control, a person is unable to file an application for a patent under the subsection (1) before the expiration of the time limit prescribed paragraph (iii) of the said subsection, he may, notwithstanding the said paragraph, file the application for a patent within 14 days (where he is a resident abroad, within two months) from the date when the reasons ceased to be applicable but not later than six months, following the expiration of the said time limit.

(4) Where there is an exclusive licensee, a pledgee or non-exclusive licensee under Section 35(1) of this Law as applied under Section 11(3) of the Utility Model Law, Section 77(4) of this Law as applied under Section 18(3) of the Utility Model Law or Section 19(1) of the Utility Model Law, the owner of a utility model right may file an application for a patent only with the consent of such person.

(5) Section 44(3) and (4) shall apply mutatis mutandis to the application for a patent under subsection (1).

(C)Copyright:2006 AIPPI JAPAN

(Employees’ inventions)

35. —- (1) An employer, a legal entity or a state or local public entity (hereinafter referred to as the “employer, etc.”) shall have a non-exclusive license on the patent right concerned, where an employee, an executive officer of a legal entity or a national or local public official (hereinafter referred to as the “employee, etc.”) has obtained a patent for an invention which by reason of its nature falls within the scope of the business of the employer, etc. and an act or acts resulting in the invention were part of the present or past duties of the employee, etc. performed on behalf of the employer, etc. (hereinafter referred to as an “employee’s invention”) or where a successor in title to the right to obtain a patent for an employee’s invention has obtained a patent therefore.

(2) In the case of an employee’s invention made by an employee, etc. which is not an employee’s invention, any contractual provision, service regulation or other stipulation providing in advance that the right to obtain a patent or the patent right shall pass to the employer, etc. or that he shall have an exclusive license on such invention shall be null and void.

(3) The employee, etc. shall have the right to a reasonable remuneration when he has enabled the right to obtain a patent or the patent right with respect to an employee’s invention to pass to the employer, etc. or has given the employer, etc. an exclusive right to such invention in accordance with the contract, service regulation or other stipulation.

(4) The payment of the remuneration in the preceding subsection, as provided for in the contract, service regulation or other stipulation shall not be considered to be unreasonable, in view of the situation under which a negotiation is carried out between employer, etc. and employee, etc. in the course of establishing the criteria for determining the remuneration, the situation under which the criteria established are disclosed, and the situation under which the views of employee, etc. are heard for calculating the amount of the remuneration, etc.

(5) Where there is no stipulation with respect to remuneration referred to in the preceding subsection or where the payment of the remuneration determined thereby shall be considered to be unreasonable, the amount of the remuneration referred to in subsection (3) shall be determined, taking into consideration the amount of profits that the employer, etc. will make from the invention, the burden assumed and contribution made by the employer, etc. in connection with the invention, and the treatment upon the employee, etc. and other circumstances.

(C)Copyright:2006 AIPPI JAPAN