A registerable design is one of the following which creates an aesthetic impression through the eye (Art. 2(1) of the Design Act), i.e., a visual aesthetic impression:
While a Power of Attorney (POA) or an Assignment is not required to file design applications with the JPO, the following information is necessary:
Please be aware that Japan follows the one-design-one-application rule. This means that each application can only include one design (embodiment), and in principle, separate applications are necessary for each design. However, since the revision of the act in 2020, it is now possible to file a single application for multiple designs. In such cases, each design within the application will be assigned an individual application number, and the JPO will conduct separate examinations for each design. Subsequently, a design registration will be issued for each design that meets the registration requirements.
The Design Act employs the Related design system (Art.10), which allows the applicant to obtain a series of design rights on similar designs, where if filed separately, later applications are rejected on the basis of similarity. In case of applications filed under the Related design system, the applications are not cited against one another. The applicant can file one or more applications for the Related designs within 10 years from the application date of the principal design*5 (Act.10(1)) and the expiration date of the design rights for the related designs will be within 25 years from the application date of the principal design (Act. 21(2)). As such, the related designs for multiple products which are designed based on a consistent concept, a “group design,” can be protected in accordance with the long-tern market trend. In addition, registration for designs similar only to the related design is allowable. Therefore, evolving designs over the years can be protected.
It should be noted that the related designs cannot be separated after registration, and therefore, they must be transferred together if they are transferred from one owner to another (Art. 22). It should also be noted that if the Examiner finds that the applications filed as related designs are not similar to one another, he/she will issue office actions. In this case, the applicant is entitled to amend the related design applications to independent applications. Further, if one of the independent applications is objected over another application on the basis of similarity, the rejection can be overcome by amending the independent applications into related design applications.
Yes, we must submit the priority document to the JPO within 3 months from the filing date. The JPO now accepts the DAS code issued by WIPO. Therefore, if you inform the JPO of the DAS code of the priority application, there is no need to submit a certified copy of the priority document.
An ornament pattern in Locarno class 32-00 that does not constitute an article is not registrable subject matter under the Japanese Design Act.
If you wish to protect an ornament design as a design registration in Japan, we must file the design by designating an article such as fabric, paper, leather, or textile, etc.
When an application is filed, it is subjected to a formality examination and then substantive examination. A request for examination is not necessary.
The average pendency before a first Office Action in 2018 was 6.2 months from the filing date. An accelerated examination is available if the application meets specified requirements e.g., the application has a counterpart foreign application. If the accelerated examination is approved, the applicant may expect the first Office Action to be issued within about 2 months from the request. The time period for obtaining a design right from the filing of the application depends on whether the first Office Action is a decision of registration or a notice of reasons for rejection. The average period from the filing date to the registration of a design right was 7.0 months in 2018.
If an Examiner issues a Decision of Rejection, the applicant is entitled to file an appeal to the Appeal Board.
The flow chart below shows the procedures from the filing to registration of a design application.
Yes, they are judged in accordance with the first-to-file rule.
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).
We can file a divisional application only when responding to an Office Action requesting the selection of one embodiment from multiple embodiments filed in the initial application. If we selected a specific embodiment and deleted the rest of the embodiments, we would not be able to file any divisional applications for the deleted embodiments.
A design right lasts 25*6 years from the application date of the design, subject to the payment of annuities. A Related design right will lapse 25 years from the application date of the principal design.
No legal protection is available until the design is registered. The Design Law has no provision for intermediate publication or provisional protection.
Yes, the applicant can use the secret design system. After paying the registration fee, the applicant can make a request to the JPO by specifying a period of deferment not exceeding 3 years from the date of registration. The period of secrecy can be shortened or extended. If there is a need for deferment of publication at the time of filing, a request for deferment must be attached to the application with a prescribed fee.
Art. 26 of the Design Law prohibits a design proprietor from commercially manufacturing or selling another’s copyrighted work if the copyright is senior. If the design proprietor wishes to work it, he or she must obtain permission from the copyright owner.
Three alternative options:
The modified design can be registered only when it is filed as a Related design within 10 years from the application date of the design application (Art. 10).
It is not possible. Art. 22 of the Design Law prohibits mutually similar designs from being separately owned by different persons. In this case, the two design rights must be entirely assigned to the same person.
There are two types of licenses; one is non-exclusive and the other is exclusive. The exclusive license must be registered at the JPO because of its exclusivity. If a licensor owns two rights to a Principal design and its Related design, he or she must grant an exclusive license at the same time to one licensee covering the two design rights (Art. 27).
The Related design right nevertheless can survive up to 25 years from the application date of the Principal design, subject to payment of annuities.
The user can do so by filing an Invalidation Trial with the Appeal Board of the JPO, where the prior art will prove the lack of novelty of the design.
Yes, it is available, but apart from it, anyone can request the JPO to provide an opinion as to whether the product falls within the scope of another registered design under Art. 25 of the Design Law. If the request is made, a collegial body of three Examiners compares the requester’s design with the registered design at issue. The charge is reasonable, and the time is short, as compared with a judicial declaratory judgment action in a court. This system is called “Hantei” and is accepted as an “administrative judgment” which is not enforceable or appealable. However, judicial judges respect a “Hantei” as an officially recognized opinion.
Yes. The seller may assert a prior user’s right under the Design Law Art. 29. The fact of prior use also can be used as a ground for invalidating the registered design.
No. The Design Law has no provision for a compulsory license or invalidation due to non-working.
The warning must be done by showing a copy of the registered design certificate authenticated by the JPO. The Design Law provides no presumption of negligence for a secret design.
The remedies that can be enjoyed are an injunction, compensation for monetary damages and an order for apology in print media, such as newspapers and magazines (Art. 37 to 41).
If it might be difficult for an Examiner to understand a function of an article and/or how to use it, an “Explanation of Article” stating such a function, etc. would have to be given. For example, if a design relates to an article which has not yet been known, the above “Explanation of Article” would have to be given.
As explained in A4, multiple designs in a single design application are no longer prohibited under the revised Design Act, and a single design application can be filed even if the earlier U.S. application includes therein more than one design (embodiments).
If, before the earlier U.S. application is filed, a design has already been publicly known anywhere, a Japanese design application should be filed within one year from the date on which the design was publicly known, while claiming priority based on the earlier U.S. application.
It is basically the same as that to Q26 and the following would have to be particularly considered:
It is often found that CD applications were filed with color photographs. Nevertheless, the applicant of the above CD application may provide a Japanese patent attorney with drawings without colors for a Japanese design application.
Additionally, the applicant may send a priority certificate to a Japanese patent attorney before the filing of a Japanese design application and photographs, which are attached to the priority certificate, may be black and white.
Thus, in the case where it is assumed that a CD application was filed with color drawings or photographs, the same should be confirmed before the filing of a Japanese design application.
The JPO sends notifications regarding Hague International Applications as indicated below.
Notifications sent by the JPO to legal representatives before the International Bureau are limited to those sent via WIPO as provided in the Hague Agreement, and other notifications generally are sent directly to applicants.
Yes, we must submit the priority document to the JPO within 3 months from the filing date. The JPO now accepts the DAS code issued by WIPO. Therefore, if you inform the JPO of the DAS code of the priority application, there is no need to submit a certified copy of the priority document.
If multiple designs in a Hague International Application are considered to be similar to each other, the JPO will issue an Office Action stating that one of these applications will not be allowed for registration under the Japanese Design Act, as Article 9 thereof prohibits so-called double registration of identical or similar applications filed on the same day.
Please be assured that we will be able to easily overcome this Office Action by selecting one of these applications to be the “principal design,” and amend the other application to be a “related design.” For your information, a “principal design” and a “related design” both provide the same protection against third parties, as if they were two independent registrations; however, once two designs are made related on the JPO Registry, if either design is transferred to a third party, the other related design also would have to be transferred.
When a dispute related to intellectual property rights arises and it is difficult to resolve the dispute by discussion between the parties to the dispute, such dispute may be resolved mainly by filing an action with a court or by means of an alternative dispute resolution (hereinafter referred to as “ADR”). An example of ADR is mediation. Parties to a dispute may have mediation proceedings related to intellectual property rights at the Japan Intellectual Property Arbitration Center (hereinafter referred to as “JIPAC”). JIPAC is a private ADR organization that has been operated jointly by the Japan Patent Attorneys Association and the Japan Federation of Bar Associations since April 1998. Its services include not only mediation services but also various other services related to intellectual property rights such as consultation, arbitration, JP domain name dispute resolution, the Center’s advisory opinion, the Center’s essential patent evaluation, advisory opinion on operability, and evaluation of the level of contribution of a patent to business. JIPAC is an ADR organization certified under the ADR Act (Certification No. 119). The JIPAC website (https://www.ip-adr.gr.jp/eng/) shows a detailed explanation of services provided, examples of dispute resolution cases and other matters.
The characteristics of mediations by JIPAC are (i) expertise, (ii) being closed to the public, (iii) neutrality and fairness, (iv) voluntariness, (v) flexibility and (vi) speediness.
(i) Characteristic 1: Expertise
The persons who may serve as mediators when an application for mediation is made (mediator candidates) consist of experienced attorneys-at-law, patent attorneys and academic experts. In JIPAC mediations, mediators exhibit their very high expertise and present a persuasive mediation proposal by forecasting the result of a lawsuit that may be filed if the dispute is not settled by mediation. Mediators are appointed by the Director of the Center of JIPAC, and the parties are also allowed to appoint the mediators whom they want to appoint if the parties agree on such appointment.
(ii) Characteristic 2: Being closed to the public
In the case of a lawsuit, court proceedings take place at an open court on the date for oral argument and the judgment and records thereof are generally disclosed to the public. On the other hand, mediation proceedings at JIPAC, including whether or not an application for mediation is made, are not disclosed to the public and the result of mediation proceedings is also not published. For this reason, a dispute may be resolved without the existence of such dispute being known to third parties.
(iii) Characteristic 3: Neutrality and fairness
JIPAC is an organization established jointly by the Japan Patent Attorneys Association and the Japan Federation of Bar Associations, and its neutrality and fairness are guaranteed. In addition, the Rules for Mediation Proceedings of JIPAC provide for the exclusion or challenge of mediators, and JIPAC always confirms that mediators have no interest in the relevant case before appointing the mediators.
(iv) Characteristic 4: Voluntariness
In mediations by JIPAC, the parties to a dispute can have advanced discussion with the mediators, who are third parties with abundant experience and knowledge. As a result, if the parties can find a point of compromise, they can reach a settlement. If the parties think there is no room for compromise, they can refuse to reach a settlement and terminate the mediation proceedings. Because of this voluntariness, mediation by JIPAC is considered to be the more sensible response to a dispute compared with simply continuing to ignore the other party’s demands, with a risk of being sued.
(v) Characteristic 5: Flexibility
Mediations by JIPAC are a purely voluntary method of dispute resolution by a private organization and therefore have the advantage of being flexible. For example, when a party makes a claim for the payment of money, the party is not always required to specify the amount in the application for mediation, and there is no problem with stating “we claim an appropriate compensation” or the like in the application. Unlike court settlements where the parties feel pressured from being subject to a judicial decision if they cannot reach an agreement, mediation by JIPAC is commenced only after the other party agrees to commence mediation proceedings. Therefore, mediation by JIPAC is flexible with regard to the progress of proceedings. In addition, mediations by JIPAC allow the parties to discontinue mediation proceedings partway along the process to return to voluntary negotiation, file an action, or take other options.
JIPAC also provides arbitration services (a dispute resolution system under which the parties to a dispute are assumed to agree in advance to appoint arbitrators, who are neutral third parties, to make a decision on the dispute and follow such decision) in addition to mediation services. For this reason, JIPAC may start with mediation proceedings and, if the parties in the medication proceedings reach an agreement to commence arbitration proceedings, move on to arbitration proceedings, thereby taking the proceedings successively in order to exploit the advantages of both mediation and arbitration proceedings. In this case, mediators may continue to serve as arbitrators, or new arbitrators may be appointed depending on the will of the parties.
(vi) Characteristic 6: Speediness
The average time period required to resolve a dispute through JIPAC mediation is 176 days (the median is 162 days) and the minimum number of days required for proceedings is 65, although it depends on the level of cooperation between the parties and the details of the case. When the parties want to resolve a dispute speedily, it is possible to perform examination in a concentrated manner in a shortened period of time. With respect to the dates for mediation proceedings, we expect that about three dates will be required for resolution and aim to complete the proceedings within six months from the first date of mediation proceedings, although it will differ depending on the nature of the case. Looking at past cases of dispute resolution, the average number of dates is 4 (the median is 4) and the minimum number of dates is 2. This indicates that the proceedings until the resolution of disputes proceeded almost as expected.
As stated above, mediations by JIPAC are characterized by their expertise, being closed to the public, flexibility, and speediness, and therefore can be an excellent means of dispute resolution when the parties have the intention to resolve the dispute by discussion and want to resolve the dispute soon or at a place closed to the public.
In addition, intellectual property-related mediations in court do not allow the parties to appoint the members of the Mediation Committee, but mediations by JIPAC allow the parties to appoint the mediators whom they want to appoint if the parties agree on such appointment. For example, the parties may appoint the same mediators as the mediators for a past mediation case or appoint attorneys-at-law or patent attorneys who are specialized in the relevant field. They may also appoint, for example, a former judge who was in charge of famous lawsuits in the past or an academic expert who has published many papers. The fact that the parties are allowed to appoint mediators whom they can trust is considered to be a strong point of JIPAC mediations.
As stated above, mediations by JIPAC have various advantages that lawsuits do not have.