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:
An application may include a plurality of designs in a single application (Art. 7). Under the 2019 revised Design Act, the former one application-one design system was abolished.
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.
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.
No, they aren’t, but it should be noted that there is Design Law Article 3bis (see A7.(5)).
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).
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.