Episode 19

A request for examination of a patent application can be made within three years from the filing date (Patent Law, Article 48-3, Paragraph 1), and if no request for examination is made within that period, the patent application is deemed to be withdrawn (Patent Law, Article 4, Paragraph 4).
When one year and six months have passed since the filing date, the patent application is published (Patent Law, Article 64, Paragraph 1), so even if an application with the same content as the withdrawn patent application is filed, it will fall under Article 29, Paragraph 1 (novelty) of the same law and will be rejected (Patent Law, Article 49, Paragraph 2).
The examination request rate for patent applications is 74.8% (2020) (https://www.jpo.go.jp/resources/report/nenji/2024/document/index/020202.pdf). In other words, one in four patent applications will not be granted rights, and will only have the effect of excluding later applications (Patent Law, Article 29, Paragraph 1 or Article 29, Paragraph 2) after the application is published.
Even if it is undecided at the time of filing whether or not to request examination, and the need to obtain rights arises three years after filing, the opportunity to obtain rights has already been lost.
In contrast, since utility models are registered without a substantive examination (Utility Model Act, Article 14, Paragraph 2), the right cannot be exercised until a utility model technical evaluation report has been presented and a warning has been issued (Utility Model Act, Article 29-2). A request for a utility model technical evaluation can be made even after the utility model right has expired (Utility Model Act, Article 12, Paragraph 2).
A utility model right holder can file a patent application based on the utility model registration within three years from the date of filing the utility model registration (Patent Act, Article 46-2, Paragraph 1).
In light of the above, if it is undecided at the time of filing whether or not to request examination, if you file a utility model registration application for the time being, and if the need to obtain rights arises within three years from the date of filing, you can file a patent application based on the utility model registration, and if not, maintain the utility model registration, then you can request a utility model technical evaluation and exercise your rights even if the need to obtain rights arises three years after filing.
By utilizing the patent application system based on utility model registration, you can reduce the costs of filing and obtaining rights, while also being able to obtain rights for the contents of your application as necessary.

Episode 18

It is possible to apply for design registration for three-dimensional shapes, and it is also possible to apply for registration as a three-dimensional trademark.
Since design rights are creations resulting from human mental activity, registration requires novelty and creatability, and the term of the right is limited (25 years from the application date).
In contrast, trademark rights protect business reputation, so they require awareness through use, and the term of the right is semi-permanent through renewal registration.
The Intellectual Property High Court has ruled as follows on this matter.
"Given that trademark rights can be held semi-permanently by repeatedly renewing the duration of their validity, granting protection to three-dimensional shapes that were the subject of utility model rights or design rights through trademark rights could result in a specific person being granted exclusive rights semi-permanently beyond the duration of the rights under the Utility Model Law or Design Law, which would unfairly restrict fair competition between businesses. Therefore, unless there are special circumstances in which the three-dimensional shapes that were the subject of utility model rights or design rights have acquired distinctiveness unrelated to the monopoly of the rights, it cannot be deemed that they have acquired distinctiveness through use." (Intellectual Property High Court Case 2017 (Gyo-Ke) No. 10155, Judgment of January 15, 2018)
Recently, special circumstances in which "distinguishing power through use" has been recognized, a three-dimensional trademark for Shin Godzilla was approved.
Based on the "overwhelming recognition of the Godzilla character," the court ruled that "although the trademark in question falls under Article 3, Paragraph 1, Item 3 of the Trademark Act, the trademark in question falls under Article 3, Paragraph 2 of the Trademark Act because it can be recognized that the use of the trademark in question on the designated goods has led to general consumers being able to recognize that the goods are related to the plaintiff's business." (Intellectual Property High Court Case No. 10047 of 2024 (Gyo-Ke) of October 30, 2024)

Episode 17

Intangible property rights (intellectual property rights) include rights to creations that are the result of human mental activity and rights to goodwill (Basic Jurisprudence 3: Property, p. 281, "Intangible Property Rights" by Nakayama Nobuhiro).
 Creations that are the result of human mental activity include patent rights, utility model rights, and design rights. Rights to goodwill include trademark rights.
 Unlike patent rights, etc., infringers can avoid liability for damages by asserting and proving that no damages were caused as a defense against claims for damages from trademark holders based on Article 38, paragraph 2 of the Trademark Act (Supreme Court, 1994 (O) No. 1102, 3rd Petty Bench Judgment, March 11, 1997, Minshu Vol. 51, No. 3, p. 1055).
 In other words, trademark rights do not protect the trademark itself, but the goodwill embodied in the trademark, so even if a trademark is registered, that alone does not allow the rights to be exercised. The Supreme Court has the following commentary on this matter:
 "Rights such as patent rights and utility model rights must be considered differently from trademark rights. In other words, patent rights and utility model rights themselves have creative value, and the infringing goods utilize the patent rights in their performance, utility, etc., so a portion of the sales of the infringing goods necessarily corresponds to the value of the patent rights. Furthermore, the sale of an infringing product means that there is a demand for products that implement the patent rights, and the fact that infringing goods are being sold in the first place can be said to mean that there is a demand for the establishment of licenses to the patent rights.
 In contrast, trademark rights do not have creative value in themselves, and only have a certain value when linked to the business credit of the company or other entity from which the product originates. In other words, the fact that a product bearing a trademark is sold does not immediately mean that the trademark has contributed to sales, nor does the sale of a product mean that there is a demand for a license to use the trademark." (Same judgment, Supreme Court Case Commentary, Civil Cases, 1997 (Part 1) (Page 370)
Trademark rights cannot be exercised unless two requirements are met: the trademark is registered with the Patent Office, and the trademark is actually in use and has established goodwill in the business.