Design
A design right is an intellectual property right granted by a government to a creator for a limited period of time in exchange for public disclosure of an design in principle.
The purpose of design system is, through promoting the protection and the utilization of designs, to encourage creation of designs, and thereby to contribute to the development of industry (Article 1 of the Japan Design Act). Where, an "design" means the shape, patterns or colors, or any combination thereof, of an article (including a part of an article), which creates an aesthetic impression through the eye according to the Act.
Please refer to outline of the Japanese Patent System below and if you have any questions and/or requests please let us know by email.
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Partial revision of the Design Act
The Design Ordinance was enacted in Japan about 130 years ago, in the Meiji era. Since then, Design protection was limited to "shapes and colors, etc. of articles(= tangible property). However, the revised Design Act, which came into effect on 1 April 2020, protects not only "articles" but also "images" that are intangible objects, "buildings" and "interiors" that are real estate. It is the first time since the legislation that the Design protection transcended the framework of articles, and the amended act can be said to be a major revision since the Meiji era.
i) Designs for "images", "buildings" and "interior" are also protected!
In addition to tangible property = "article" design, "image" design and "building" design that are not recorded or displayed on the article are also covered by the Design Act. It is also possible to register an "interior" design consisting of multiple items, decorations such as walls and floors as a unique design.
ii) The related design system has been expanded to protect the designs of series products!
The related design system is a system that allows subsequent applications for designs similar to a registered design (principal design) by the same applicant. The amended law extends the period for which a related design can be filed later, to 10 years from the date of the application for the principal design, and enables registration of a design that is similar to the related design, but not to the principal design.
iii) Change of the duration of a design right
It has been changed from "20 years from the date of registration" to "25 years from the date of filing".
iv) Filing multiple designs in one application
Two or more designs can be filed in a single application. Any design can be included in an application, even if the designs do not fall under the same Locarno Classification.
v) Drawings in six dimensions no longer essential
The new Guideline for Design Examination does not require drawings representing a design in six dimensions in order to register such design as long as the filed design is clearly represented by drawings, pictures, or computer graphics. A part of the design that is undisclosed in the representations will be regarded as disclaimed for protection.
vi) Expansion of the provisions for indirect infringement*
* Note: Under this system, if a third party conducts a preparatory or supporting action that has an extremely high probability of inducing infringement of a design right of a right holder, such action is deemed to be infringement.
It is stipulated the provisions for subjective elements of a design, such as “being aware that the given article is used for working the given design” and thereby to allow authorities to crack down on acts of manufacturing or importing infringing products by separating such products into components in order to avoid such crackdowns.
Japanese Design System
General
A design right shall become effective upon registration of its establishment. A holder of a design right shall have the exclusive right to work the registered design and designs similar thereto as a business. The holder has the exclusive right to work the registered design as a business and to prevent or stop others from commercially exploiting the registered design.
The protection period is 20 years from the date of registration of its establishment.
Application
Applicant needs to submit to the Japan Patent Office("JPO") an application stating the article to the design and drawing depicting the design for which registration is requested. The official fee for an application is 16,000 Japanese yen("JPY").
Where the shape, patterns or colors of the article to the design is changeable based on the function possessed by the article, if the applicant intends to request a design registration of the shapes, patterns or colors, or a combination thereof as it appears before, during and after the said change, he/she shall state such an intention and include an explanation of said function of the article in the application.(Article 6-4 of the Act)
A principle of one application per design: An application for design registration shall be filed for each design in accordance with a classification of articles as provided by an Ordinance of the Ministry of Economy, Trade and Industry.(Article 7 of the Act)
Effect of Application: The most important effect is effect of exclusion of the subsequent application. Where two or more applications for design registration have been filed for identical or similar designs on different dates, only the applicant who filed the application for design registration on the earliest date shall be entitled to obtain a design registration for the design.
Examination
The examination of applications for design registration is carried out by an examiner directed by the Commissioner of the JPO and he/she shall render an examiner's decision to the effect that an application for design registration is to be refused where the application for design registration falls under any of the inhibition requirements for registration.
Where no reasons for refusal are found for an application for design registration, he/she shall render a decision to the effect that a design registration is to be granted.Aggressive Registration Requirement
1. Industrial Applicability
A creator of a design that is industrially applicable may be entitled to obtain a design registration for the said design. This is the purpose of registering a design that can be implemented in an industrial production process, not a design in the production process by one point production, considering the difference with the copyrighted work.2. Novelty
The design which is sought registration shall be new. Designs which have lost novelty are;
(i) designs that were publicly known in Japan or a foreign country, prior to the filing of the application for design registration;
(ii) designs that were described in a distributed publication, or designs that were made publicly available through an electric telecommunication line in Japan or a foreign country, prior to the filing of the application for design registration; or
(iii) designs similar to those prescribed in the preceding two items.3. Exceptions to Lack of Novelty
In the case of a design which has lost novelty against the will of, or as a result of, the person having the right to obtain a design registration, such design shall be deemed not to have lost novelty for any design in an application for design registration which has been filed by the said person within six months from the date on which the design first lost novelty.4. Ease of Creation
Where, prior to the filing of the application for design registration, a person ordinarily skilled in the art of the design would have been able to easily create the design based on shape, patterns or colors, or any combination thereof that were publicly known in Japan or a foreign country, a design registration shall not be granted for such a design, even if the design is new.Passive Registration Requirement
The followin designs shall not be granted a design registaration;
(i) a design which is liable to injure public order or morality;
(ii) a design which is liable to create confusion with an article pertaining to another person's business; or
(iii) a design solely consisting of a shape that is indispensable for securing functions of the article -- i.e., Features dictated by functionality.
Systems specific to the Design Act
Here we will explain specific systems to the Act in Japan.
Partial Design
A partial design is a design for protecting a part occupying a certain range in the form of the whole article. For example, in case of a design characteristic of the edge of the cup, it is possible to receive a partial design for the part of the edge of the cup.
Since the object of protection of the design was "independent product" from the past, the design of a certain "part" of the product has not been regarded as the protection target. Therefore, if some original creative parts are included in the design, if a part of it is imitated, it can not cope with the counterfeit item, and the registrant was not able to receive adequate protection.
Therefore, in the 1998 revised Act, it was decided that by clarifying that "a part of an article" is included in the definition of "an article" in Article 2 of the Act, a partial design hase been protected.Design for a set of articles
Where two or more articles are used together and are specifically designated by an Ordinance of the Ministry of Economy, Trade and Industry (hereinafter referred to as a "Set of Articles"), if the Set of Articles is coordinated as a whole, an application for design registration may be filed as for one design, and the applicant may obtain a design registration, for designs for the articles that constitute the Set of Articles.
This is an exception of "a principle of one application per design".
* EXHIBIT List of constituent parts of Set of ArticlesRelated Designs
In the design development of industrial products, designs of many variations from one design concept are often created at the same time. When the design of such multiple variations is born, the related design system is a system which allows design registration of the most central design among them as a selected design, and other variations design as related designs thereof. However, the design and the related design must be similar in design to each other(hereinafter the selected design is referred to as the "Principal Design" and a design similar to it is referred to as a "Related Design").
One of the major drawbacks of design rights is that a range which is recognized as similar is narrow, but by using the related design system, the range regarded as similar becomes wider by filling the design around a Principal Design with many Related Designs. In other words, by using the related design system, we will be able to overcome a weak point of a design right and to obtain strong design rights.
* Article 10: Notwithstanding Article 9 (1) or (2), an applicant for design registration may obtain design registration of a design("Related Design") that is similar to another design("Principal Design") selected from the applicant's own designs either for which an application for design registration has been filed or for which design registration has been granted, if the filing date of the application for design registration of the Related Design is issued.
* A collection of related designs of partial designs（the JPO）Secret Design
The secret design system is a system that allows a secret state to be kept without disclosing the content of a design that has been registered for a period of three years or less even from the date of the registration establishing the design right at the request of the applicant. The request shall be filed at the time of filing of the application for design registration or payment of registration fee for the first year.
In order to obtain design registration, we will file an application for design registration. If the examiner grants a design registration thereof after examination, the content of the design will be disclosed in the design bulletin. Then, anyone may know the design. However, the registrant may want to keep the design secret until it announces or releases a new product related to the design. Therefore, this system is established so that if the applicant wishes, it will be possible to keep the design secret for a while after registration.
Appeal against Examiner's Decision of Refusal
A person, or a successor thereof, who has received an examiner's decision to the effect that an application is to be refused and is dissatisfied may file an appeal against the examiner's decision of refusal within three months from the received date thereof. Any procedure taken during the examination procedure is also effective in appeal against an examiner's decision of refusal.
Design Right
A design right shall become effective upon registration of its establishment, which shall be registered where the registration fee for the first year has been paid.
Where the registration has been effected, the patented matters shall be published in the patent gazette.Duration
(1) The duration of a design right (excluding design right of a Related Design) shall expire after a period of 25 years from the date of filing.
(2) The duration of a Related Design shall expire after a period of 25 years from the date of filing of an application for its Principal Design.
