Design Others Q&A

APPLICATION

Q1What kind of designs can be registered in Japan?

A1

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:

• (i) a shape, patterns or colors, or any combination thereof, of an article (including a part of an article);
• (ii) a shape and the like of an architectural structure (including a part of an architectural structure); or
• (iii) a graphical image (including a part of a graphical image that is exclusively used for operation of a machine or displayed as a result of performing functions of the machine).

1. Thus, a design needs to satisfy the following requirements:
   • (i) It must be a form or configuration of an article.
     An article means a tangible entity which can be distributed in a market.
     The design law provides for a partial design registration system which permits design registration for a part of an article. However, even in this case, it is necessary to specify the form or configuration of an article which includes the part.
   • (ii) It must be recognized by the eye. In principle, the article should be recognized by the naked eye.
   • (iii) It has to produce a visual aesthetic impression. However, no office action is issued for lacking an aesthetic impression in practice.
2. Under the previous Design Act, real estate and immovable property did not fall under the definition of “article,” so buildings (except for prefabricated houses) were not registrable designs; however, under the revised 2019 Design Act, building designs became registrable subject matter. The types of protectable designs include not only the exterior designs of buildings but also the interior designs of shops, restaurants and offices, etc.
3. Under the previous Design Act, only GUI images which are pre-installed on an article (e.g., a smartphone or tablet) were protected; however, under the revised Design Act, GUI images which are not pre-installed (e.g., images provided through the Internet) became protectable designs. Furthermore, images projected onto non-display devices (e.g., roads or walls) have also become protectable. For example, an image appearing in a display of a copying machine to notify the magnification rate falls under “an image which is provided for use in the operation carried out in order to enable the article to perform its function.” In addition, an image displayed by an OS (operating system) of a computer, previously excluded from protection, is now a registerable image. It should be noted that protection is not yet provided to images which have no functional relationship to the article of the design, such as paintings, characters, etc. for aesthetic purposes only.

Q2Under which criteria is a design not registered? And, is there any measure to register a design that has already been known to the public?

A2

1. The following cases are examples under which a design application is not granted by a known fact.
   • (i) In Japan or any other country, prior to the filing of the application, a design in the application is publicly known, or described in a publication distributed or made available to the public through electric telecommunication lines (Art. 3(1)(i), (ii));
   • (ii) a design similar^*1(Note A2-A) to the design of the aforementioned (i) (Art. 3(1)(iii)); or
   • (iii) a design that could be easily created by a person who has ordinary skill in the art to which the design pertains, on the basis of publicly known design features^*2(See Note A2-B) in Japan or any other country, prior to the filing of the application (Art. 3(2)).
2. Even if a design has been publicly known before filing in Japan, in the following cases, the design is exceptionally deemed to be kept secret and can be filed.
   • (i) In the case where the act which caused the design to be publicly known was performed by a person who is entitled to file the design application: or
   • (ii) In the case where the act which caused the design to be publicly known was performed against the intention of the person who is entitled to file the design application.
     An applicant who seeks the exceptional handling explained above has to file the application within one year^*3 from the date when the design was publicly known.
     In addition to the case of (i), the applicant has to submit a document which explains why and how the design was publicly known within 30 days from the filing date.

• (i) In Japan or any other country, prior to the filing of the application, a design in the application is publicly known, or described in a publication distributed or made available to the public through electric telecommunication lines(Art. 3(1)(i),(ii));
• (ii) a design similar(See Note A2-A) to the design of the aforementioned (i) (Art. 3(1)(iii)); or
• (iii) a design easily created by a person who has an ordinary skill in the art to which the design pertains, on the basis of publicly known design features (See Note A2-B) in Japan or any other country, prior to the filing of the application (Art. 3(2)).

• *1 Note A2-A: “similarity” is defined as follows:
• (i) In comparing two designs, the article is the same or similar and the design feature (See Note A2-B) is similar; or
• (ii) In comparing two designs, the article is similar and the design feature (See Note A2-B) is the same.
  “Similarity” is determined as a whole, based on the aesthetic impressions extracted by individually assessing a common part or different part between two designs to be compared, from the viewpoint of a consumer (including a dealer).

• *2 Note A2-B:
• The design feature is a form or configuration of a design including a shape, patterns or colors, or any combination thereof.

• *3 Changed from six months to one year under the 2018 Design Act

Q3What documents and information are required for filing a design application in Japan?

A3

While a Power of Attorney (POA) or an Assignment is not required to file design applications with the JPO, the following information is necessary:

• – Name(s) and address(es) of the applicant(s).
• – Name(s) and address(es) of the designer(s).
• – Title of the article.
• – Pictures/drawings of the article from six views (front, back, right, left, top, and bottom), and a perspective view.
• – If claiming convention priority, the country, application number, DAS code, and application date of the priority application.

Q4How can you file a plurality of designs?

A4

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.

Q5How can you file for a plurality of similar designs?

A5

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.

• *5 The duration for filing has been extended under the 2019 revised Design Act. Previously, the duration was limited to before the publication of the design bulletin for the principal design – about 8 months from the application of the principal design.

Q6If filing a design application to Japan claiming Paris Convention Priority, will we need to submit the certified copy of the priority application?

A6

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.

Q7Is an ornament pattern in Locarno class 32-00 registrable in Japan?

A7

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.

EXAMINATION

Q1What are the procedures for obtaining a design right? And, how long does it take to obtain the design right from the filing of an application?

A1

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.

Q2What are typical reasons a design application may be rejected?

A2

1. The design lacks novelty (see A2.(1)(i) and (ii)).
2. The design is easily created (see A2.(1)(iii)).
3. The application lacks unity of design (see A4.).
4. The application does not comply with the first-to-file rule (see A9.).
5. The partial design is identical or similar to a part of the whole design disclosed in another application having an earlier filing date but its Gazette was published after the application (Art.3^bis).

Q3Are a whole design application and a partial design application judged in accordance with the first-to-file rule?

A3

Yes, they are judged in accordance with the first-to-file rule.

Q4If an applicant files a design application and receives an Office Action which states that the design is similar to a design of an application that the applicant filed previously, what should the applicant do?

A4

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).

Q5When can we file a divisional application during prosecution?

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.

POST-GRANT

Q1How long does a design right last?

A1

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.

• *6 The duration of a design right has been extended from 20 years after filing under the 2019 revised Design Act.

Q2What countermeasure can be taken against copying of a pending design application?

A2

No legal protection is available until the design is registered. The Design Law has no provision for intermediate publication or provisional protection.

Q3After having received a decision of registration, can the applicant defer publication?

A3

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.

Q4When a registered design right is in conflict with another’s copyright, is there any measure that can be taken to avoid copyright infringement?

A4

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.

Q5When a registered design includes another’s prior registered design, what measures are available for working our design without danger of infringement?

A5

Three alternative options:

1. Obtain a license from the design proprietor,
2. Change or modify the design or
3. Stop working the design.

Q6After a pending design application was allowed and the registration fee was paid, the design has been slightly modified so as to tailor to the latest fashion. Is this design preferentially registered as a similar design related to the registered design?

A6

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).

Q7When a proprietor has two design rights; that is, a Principal design registration and a Related design registration, is it possible for him/her to assign one of them to another?

A7

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.

Q8What types of licensing are available?

A8

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).

Q9Does the lapsing of the Principal design registration due to failure to timely pay an annuity fatally affect the Related design right?

A9

The Related design right nevertheless can survive up to 25 years from the application date of the Principal design, subject to payment of annuities.

Q10A competitor has a design registration, but the prospective user has prior art possibly relevant to the competitor’s registered design. Is it possible to invalidate the design registration, and how?

A10

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.

Q11A product expected to be marketed has been found to include another’s registered design. In such a situation, is a declaratory judgment action available in Japan?

A11

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.

Q12A competitor has a registered design similar to a prospective seller’s product, but the seller’s design was once placed on the market by another distributor in Japan. Can the seller qualify for any advantages due to the prior use?

A12

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.

Q13If a registered design has not been used in Japan for a long time, is there a possibility of a compulsory license or invalidation due to non-working?

A13

No. The Design Law has no provision for a compulsory license or invalidation due to non-working.

Q14How can the proprietor of a secret registered design warn an alleged infringer?

A14

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.

Q15What remedies for infringement of a registered design are available?

A15

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).

APPLICATION BASED ON FOREIGN APPLICATION

Q1What points should be considered when a Japanese design application is filed claiming priority based on a U.S. design patent application?

A1

(A) Drawings

1. As explained in A3-2, a set of drawings from six directions is no longer required as far as one or more submitted views suitably identify the design.
   • (i) However, if the overall appearance of a design to be protected cannot be specified by only the views in the U.S. design patent application, it may be necessary to submit a sectional view(s). For example, in a case where a design has a cylindrical shape provided at its top surface with a recess, a sectional view taken along a vertical line passing through the recess would have to be submitted.
   • (ii) If an article, to which a design relates, can change its shape in use or a portion of the article is releasable or deployed in use, it may be necessary to submit a view showing the article in its changed state. For example, if an article, to which a design relates, is a container with a removable lid, a bottom view of the lid and a top view of the container body may have to be submitted.
2. The above views should be submitted upon the filing of a design application. It might not be allowed to submit the same in a later stage.

(B) Explanation of Article

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.

(C) The number of designs to be included in a (single) design application

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).

(D) Grace period for loss of novelty

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.

Q2What points should be considered when a Japanese design application is filed claiming a priority based on a Community Design (CD) application?

A2

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.

Q3To whom (applicant or representative) does the JPO sends notifications regarding Hague International Application?

A3

The JPO sends notifications regarding Hague International Applications as indicated below.

• (1) Sent directly to the applicant (Not sent to the legal representative before the IB
  Reminders for non-submission of priority certificate
• (2) Sent to the applicant or a legal representative before the IB (if any) (via WIPO) (Not sent to the legal representative before the JPO), First Notifications of Refusal, Statements of Grant of Protection
• (3) Sent to the applicant or a legal representative before the JPO (if any) (directly) (Not sent to the legal representative before the IB)
  Notifications of non-submission of priority certificate, Subsequent Notifications of Refusal, Notifications of Allowance, Decisions of Refusal, Registration Certificates

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.

Q4If receiving an Office Action stating that multiple designs are similar to each other to a Hague International Application, can we overcome such objection?

A4

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.