ホーム > English > Patent > IP Q&A > questions > designqa > Q9. If an applicant files a design application and receives an Office Action which says that the design is similar to a design of an application that the applicant filed previously, what should applicant do?

Q9. If an applicant files a design application and receives an Office Action which says that the design is similar to a design of an application that the applicant filed previously, what should applicant do?

Q9. If an applicant files a design application and receives an Office Action which says that the design is similar to a design of an application that the applicant filed previously, what should applicant do?

A9. The applicant may file an argument contending that the designs are not similar. However, since an Examiner’s judgment of similarity is subjective, it is generally difficult to overcome the judgment by the Examiner simply by filing an argument.
Another possible measure is to amend the application into a Related design application (See Q5 & A5).
Also, it may be possible to abandon the application considering that the scope of protection of the rejected design is covered by the design in the earlier filed application. However, if the rejected application is abandoned, the overall scope of protection would be narrowed because the scope of the remaining design right would not cover the range of the scope of similarity of the abandoned design.