In this article, we provide an overview of the Japanese Design System. With an understanding of the features of the design system in Japan, you can obtain design rights appropriately and smoothly.
It is necessary to file a design application with the Japanese Patent Office (JPO) in order to obtain a design right in Japan. When preparing design applications, the following should be noted.
1-1. One article, one design per application
The Japanese Design Law does not allow multiple designs to be included in a single application. Therefore, if one application includes two or more designs, a reason for rejection will be issued. In order to overcome the rejection, you need to divide the application into multiple applications or delete unnecessary designs.
The JPO accepts shaded or unshaded line drawings, photographs, or computer graphics. Basically, it is necessary to file drawings of six views: the front, rear, top, bottom, right side, and left side. Even if a certain view shows only the parts of the design that you do not claim protection for, you still need to submit the view with the parts drawn in a certain way (e.g., using dotted lines). As an alternative to drawings or photographs, you can also submit models or samples.
2. Substantive Examination
One outstanding feature of the Japanese Design System is that the JPO conducts substantive examinations. Once a design application is filed, the Examiner will carry out a prior design search. It is not necessary to file a Request for Examination. The Examiner will issue an Office Action if reasons for rejection are found, for example, if the design is considered to lack novelty or to be easily created.
In response to the reasons for rejection, you can submit Arguments and/or Amendments. In design examinations, amendments are very restricted, such that amendments that change the gist of the design will be dismissed. Furthermore, you cannot disclaim parts of the design when responding to an Office Action.
3. Deferment of Publication: Up to Three Years
After a design is registered, the JPO will issue a design gazette. It is possible to defer publication of the gazette by up to three years from the date of registration. You can apply for deferment at the time of filing or at the time of paying the registration fee. The deferment system allows you to adjust the time of publication to match the start of sales of your products.
4. Two Significant Systems Provided under the Japanese Design Law
The Japanese Design Law provides two systems, the Partial Design System and the Related Design System. If you appropriately utilize these systems, you can obtain design rights in an efficient manner.
4-1. Partial Design System
The Japanese Design Law allows for protection of parts of a design. This means that you can seek protection for the characteristic parts of an article. For example, the surface of a tire cannot be protected by a normal design application since the surface itself is a part of the tire and cannot be subject to sales transactions individually. However, with the Partial Design System, you can claim protection for the surface of a tire as shown in Fig. 1.
Click here to view Fig. 1.
When you file a partial design application, you need to prepare appropriate drawings.
First, it is necessary to show the parts for which protection is sought in a certain way, for example, with solid lines, and parts for which protection is not sought in another way, for example, with broken lines, as shown in Fig. 1. Furthermore, six views of the entire article are necessary even when seeking protection for only one part of the article.
4-1-2. Differences from disclaimers
The Partial Design System is similar to disclaimers, but its basic concept is different from that of disclaimers. Specifically, in the Partial Design System, parts for which protection is not sought play an important role. For example, together with solid lines in the drawings, dotted lines determine the position, size, and area ratio of the claimed parts in the entire article, as well as the shape of the articles.
Let’s assume that you have a partial design right for the handle of a bag and that a third party manufactures and sells a bag with a handle similar to the handle of your bag. The third party seems to infringe your design right. However, your design may not be deemed to be similar to the design of the third party if the position, size, and area ratio of the handle relative to the other parts are not the same as or similar to that of your handle, or if the position, size, and area ratio are not common in the field of bag handles.
Therefore, when utilizing the Partial Design System, it is necessary to consider the position, size, and area ratio of a part for which protection is sought in relation to the other parts.
4-2. Related Design System
If you normally apply for similar designs created based on one design concept, the applications would be rejected in Japan. In order to overcome this problem, the Japanese Design Law provides the Related Design System that enables similar designs based on the same design concept to be protected and registered. Therefore, you are recommended to utilize the Related Design System if you wish to protect similar designs.
In order to register related designs, the following requirements must be met:
- Related designs must be similar to the principal design;
- All of the applications must be filed by the same applicant; and
- Applications for the related designs must be filed before the principal design becomes publicly known.
We would like you to note that related design rights expire simultaneously with the principal design right, and that the principal design right and related design rights cannot be transferred or licensed separately.