Q1: "What is a design?"
A design is "something which creates an aesthetic impression through the eye." (i.e. something that has an aesthetic appearance) with respect to the following objects.
- The shapes, patterns, or colors of an article (including a part of an article) or any combination thereof (hereinafter referred to as 'shape etc.').
- The shape, etc. of a building (including parts of a building).
- Images (limited to those used in the operation of equipment or displayed as a result of the performance of the equipment's functions and including parts of images).
All of the following articles could be registered as the object of Design.
Automobiles, ships, airplanes, ornaments, houses, screws, wrapping paper, chairs, and table sets, etc., as well as foodstuffs such as Monaca skins and pressed sushi are also subjects to be registered.
It can be said that basically anything with a shape that can be made and sold in a similar way is eligible for the registration.
It is also possible to register only a unique part of the overall shape.
Even if it is difficult to obtain rights in Patent (i.e. when there is no technically significant feature), it is possible to obtain rights quickly with reasonable cost by means of Design if the external shape has a functional feature.
Q1a: "What do I need to know about Design?"
The following points should be noted about Design dealt with under the Design Act
-Design: Design must be a creation for an 'article of design', an 'architectural object of design' or an 'image of design'. Mere motifs detached from these are not eligible for protection.
Design is an integral and indivisible part of the "article of design", the "building of design" or the "image of design".
-Shape, etc.: In Design, shape is an essential element, while other elements are optional. Therefore, the design may be "shape only", "shape + pattern", "shape + color" or "shape + pattern + color".
-Visuality: Design must be visually recognizable, visible to the naked eye (including magnified vision with a magnifying glass, depending on the trade circumstances), and be external (to be seen without dismantling or destroying it, e.g. a piano keyboard is visible without dismantling or destroying it). The keyboard is visible when the keyboard lid is opened, so it falls under the category of external).
-Aesthetics: some aesthetic treatment is considered sufficient. It does not mean that aesthetically pleasing form, ornamentation, function, or order are essential (though they can be present).
Q1b: "What are the typologies of Design?"
Design can be divided into the following types.
＜'Design for articles to which the design pertains'.
The term 'articles' refers to tangible objects that have definite shapes and are the goods circulated in markets.
Therefore, such as electricity, heat and light, and gases, liquids and powders that do not have a definite form are not concerned as articles.
For example, solid soap and ice-cream made of fixed aggregates of powdery substances are considered as articles.
＜Design for buildings relating to design.
Buildings are, for example, a house, an office or a shop used for residential, business or retail purposes.
＜Design for images relating to design.
Images are, for example, images for information display, images for input, etc.
＜Design for Part of an article, a building or an image.
Part of an article, a building or an image are the component that occupies a certain area of them and can be compared with other parts of Design.
For example, the part of the 'heel' of a pair of 'socks' falls under this category.
Q1c: "Who is the creator?"
The creator is the person who has actually 'created the design'.
As design creation itself is a social factual act rather than a legal act, the creator is limited to those who directly participated in the process of creating the design.
Whereas the 'applicant' who carries out the application procedure can have an 'agent (of the applicant)' in performing the legal act, the 'creator' cannot in principle have an 'agent (of the creator)'.
In addition, the 'applicant' can be a natural or legal person, whereas the 'creator' must be a natural person.
Q2: "What is a pre-application search?"
Pre-filing search means that the applicant investigates whether a similar design has already been registered by a third party for the design for which the application is to be filed after or prior to the creation of design.
The results of the search can feedback into the process of creating the design.
For the search, the JPO provides a free database (the patent information platform named "J-platpat", which is operated by the National Institute of Industrial Property Information and Training).
Q3: "What is a design registration application dossier?"
The application dossier for design registration consists of an 'application form' with 'drawings' attached. The contents of each document are as follows.
This is a document called an "application for design registration", which states the intention to register a design.
It contains information of the 'applicant', the 'creator', the 'representative' if a representative has been appointed, the 'articles in connection with the design, the use of the building in connection with the design and the use of the images in connection with the design' and the 'application fee'.
If necessary, the applicant should also provide a "Description of the use of an article or a building in relation to the design and the use of the images in relation to the design" and "Description of the design".
Drawings are documents that illustrate the design in six perspectives (front view, rear view, left side view, right side view, plan view and bottom view) at the same scale.
In case the both left and right side views are symmetrical, one of them can be omitted. If the design cannot be adequately expressed in the six-view plan, additional views such as a development, cross-sectional view, end view of the cut, enlarged view or perspective view should be added.
In addition, a 'drawing that shows the state of use' of the article etc. is added as a reference diagram.
In the case of Partial Design, the subject part should be shown with a solid line, and the entire surrounding area with a dashed line.
Where possible, photographs, models or samples may be substitutes for the drawings.
Q3a: "How should the drawings be drawn?"
Drawings that illustrate the design are based on six-view plans at the same scale, but the drawing must avoid including 'lines' that do not constitute a design.
For example, a single point line that represents the center line of the object, which is drawn on blueprints, must be avoided.
The lines that make up the design should be the contour lines that divide the space from the object, the boundary lines that divide the area of the object from the neighboring area, and the lines that show the pattern.
Although lines for shading are added to create a three-dimensional effect in the USA and other countries, shading lines are not used in Japan. The three-dimensional effect should be represented in perspective views.
In recent years, drawing software has made it possible to express very detailed outlines and boundaries.
For example, when the radius of curvature of a surface is not constant, but varies from section to section, lines are drawn at the boundaries of the different radii of curvature.
However, drawings with too much detail for a design registration application may result in a relative narrowing of the scope of identity of the design. It is preferable to use the minimum number of lines necessary to form the design.
A patent or utility model application can be converted into a design application. If there is such a possibility, it is advisable to include a six-sided drawing of the same scale in the drawing of the patent or utility model application.
Q3b: "Can I prepare my own application documents for design registration?"
Under the legal system, there is no problem for creators and/or applicants to prepare their own design registration application documents.
However, as explained previously, the actual preparation can be quite a difficult task.
This is because, while the creation of a design is an act of social fact, the application form in which the design is incorporated is a legal document in its own right.
The description is submitted for examination from a legal point of view, provided that it is supported by the design. This makes the preparation of the documents an extremely burdensome task for a person without such knowledge, as it requires an understanding of the Design Law, the Design Law Enforcement Order, the Design Law Enforcement Regulations, JPO examination criteria, cases of trial decisions, precedents and practices, in addition to your own specialization in designs.
The patent attorneys who represent you are experts in these matters. Even though there will be additional costs, we recommend that you ask your patent attorney to prepare the application documents for design registration.
Q4: "What is the application procedure?"
The application procedure requires submitting an application for design registration with the 'application fee' to the JPO.
You can submit your application electronically (online via an internet connection), or you can submit written documents (paper-based) by post or over the counter.
However, when submitting documents in written form (paper-based), the electronic filing fee must be paid separately from the filing fee.
This is the actual cost of digitizing the application at the JPO (in practice, this is handled by the Industrial Property Electronic Data Processing Centre).
Our office handles electronic filing. As soon as the electronic application for design registration is received, the application number will be assigned (e.g. Design application 2020-123456).
Q4a: "What are filing fees?"
The filing fee is the fee required for the acceptance of the design registration application documents and for the 'formal examination' and 'substantive examination'. In principle, the fee is to be paid at the same time as the documents’ submission. For electronic applications, payment is made by debit from a prepayment ledger (deposit) opened in advance at the JPO by the applicant or his/her representative or by a credit card. In the case of a written (paper-based) application, the payment is made by affixing a patent stamp to the application form.
If the patent stamps are not affixed or the amount is insufficient, an amendment order will be issued stating that the specified amount must be paid within a specified period.
Please note that the Commissioner of the Patent Office may reject the application if the amount due is not paid within the designated time limit. The filing fee is currently "16,000 yen" (there is no reduction or exemption system).
Q5: "What is formal examination?"
Formal examination is an examination carried out by the Commissioner of the Patent Office (in practice, the department in charge) on the applicant's procedural capacity (treatment in the case of minors, etc.), special authorization to an agent and the form (form of documents) prescribed by law, etc., in addition to checking the payment of the application fee.
In case of any violation found, an amendment order is issued stating that the amendment should be made within a specified period.
Please note that if the amendment is not made within the designated period, the Commissioner of the Patent Office can reject the application. Furthermore, any unlawful procedure that cannot be amended will be rejected. This applies to the case, such as when the application for design registration does not state in the application form "the article to which the design pertains, the use of the building to which the design pertains and the use of the image to which the design pertains". Rejection means that the application is not accepted as an application and no application number will be assigned.
Q6: "What is Secret design?"
Design is entitled by appearance, which is determined by shape and other factors. This means that there is a high probability that a third party will immediately imitate the design once it has been published, or that a competitor will recognize the direction of development of the company's design. Taking these circumstances into account, the design registration system differs from the patent system in that the application is not published (publication of the application contents before registration).
On the other hand, once a design has been registered, the registered design is published in the design gazette, as the exclusive right so called design right must be made public.
The owner of the design right cannot stop the publication of the design gazette. However, they can request the drawings etc. to be kept secret (postpone the publication in the design gazette) for a period of up to three years from the date of registration of the establishment of the design right. This applies to the following case as an example; where a disadvantage may arise due to a time lag between the publication of the design gazette and the implementation of the goods, etc. with the registered design. This applicable design or the system are called as “Secret design”.
The applicant who wishes to obtain Secret design submits a request with the request fee upon filing the application or when paying the first year's registration fee in accordance with the registration decision or decision.
At present, the secret request fee is "5,100 yen". Please note that secret designs are treated differently from ordinary designs when exercising design rights.
Q7: "What are the requirements for design registration in the narrow sense?"
The requirements for design registration in the narrow sense are the most basic requirements for the design for which an application is filed to be registered.
<Requirements for designs.
＜Requirements for the applicant.
The creator must have the right originally to obtain a design registration.
Q7a: "What is industrial availability?"
Industrial availability means that the product can be mass-produced through an industrial production process (including handicrafts), and it is sufficient that it has such potential.
For example, agricultural implements are used in agriculture, however the implements themselves can be mass-produced industrially; therefore they have industrial applicability.
On the other hand, a natural object as the main element of a design or a work of pure art does not have industrial applicability, as the same object cannot be mass-produced repeatedly by industrial means.
Q7b: "What is novelty?"
Novelty means that the design applied for is neither a design that was publicly known in Japan or abroad before the application was filed nor the one similar to it.
While the creator's subjective perception is sufficient for creativity in a design, the requirement for design registration is that the design must be objectively novel.
The term "publicly known design" includes the applicant's other designs. Designs that are not novel and similar designs do not constitute creations and therefore do not have design registrability.
The followings are the summary.
＜Designs which have become publicly known
Publicly known design: a design that is actually known to a person who is under no obligation of confidentiality. （In practice, this is referred to as public knowledge.)
Designs described in distributed publications and designs made available to the public via telecommunication lines: both are designs that have been placed in a state where they can be seen by unspecified persons.
Whether or not it was actually seen is irrelevant. (In practice, this is referred to as "public knowledge of documents").
＜Criteria for determining public knowledge.
Time criterion: Judged on the time that the design application was filed, not at the day.
Regional criterion: Judged on a global basis, i.e. in Japan or abroad.
Q7c: "What if my design became public knowledge before I filed the application?"
Even if it is your own design, it is grounds for refusal as a 'design that has become public knowledge' once it becomes public knowledge before the application is filed (known as loss of novelty).
It means that it is not registrable as a design if you file an application after your own design becomes public knowledge.
However, this may result in a harsh outcome for the applicant.
For example, if the timing of the application does not coincide well with the time of submission for the designed article to a design competition.
In order to avoid such a situation, an exception to the loss of novelty can be taken, so that a design which has become publicly known is not treated as a ground of novelty and non-creative difficulty.
However, please note that a design is not subject to the exception to lack of novelty if it is a shape, etc. or an image motif that is detached from the article, etc. to which the design pertains.
Timing condition: the request must be filed at the same time as the application within one year from the date on which it becomes public knowledge.
Design subject to exception: designs which become public knowledge against the will of the person who is entitled to a design registration (in cases where the design was intended to be kept secret but was made public by another person); designs which become public knowledge as a result of the acts of the person who is entitled to a design registration (in cases where the design was entered in a design competition by the person who is entitled to a design competition).
Q7d: "What is Creative difficulty?"
Creative difficulty means that the design applied for is not a design that could have been easily created by a person skilled in the art based on a shape, etc. or image that was publicly known in Japan or abroad prior to the filing of the application.
It is important to note that the decision is based on the "shape, etc. or image that has become known to the public" and not on the "design that has become known to the public".
Novelty is based on a "design" that is integral to the article etc., whereas Creative difficulty is based on a design that is integral to the article etc. as well as a shape etc. or image that is detached from the article etc. (in practice, these are sometimes referred as "motifs").
It is possible for an applied design to be both novelty-free and non-Creative difficulty, in which case the requirement of novelty-free will prevail.
＜Subject of the decision.
A person skilled in the art: A person having basic knowledge in the field to which the design in the application pertains.
Q7e: "What does it mean that the creator is prima facie entitled to a design registration?"
This means that the 'right to obtain a design registration' accrues to the creator upon the creation of the design.
Therefore, the applicant is the creator prima facie.
On the other hand, the right to obtain a design registration can be transferred as a property right.
For example, if an employee of a company creates a design, the right to obtain a design registration can be transferred to the company, and the company can apply as an applicant.
Q8: "What are the requirements for design registration in the broad sense?"
The requirements for design registration in the broad sense include the followings in addition to the requirements for design registration in the narrow sense (although there are also requirements other than those listed here, they are complex and will be skipped).
If the requirements for design registration in the broad sense, including the requirements for design registration in the narrow sense, are not fulfilled, the application will fall under the 'reasons for refusal' which will be explained later, and will not be registered as Designs.
<Requirements for Design registration
The design must not be identical or similar to a part of the prior designs.
The design must not fall under the grounds for non-registration.
The design of an assembly must be consistent with the assembly as a whole.
The design of the interior must give a unified aesthetic impression as a whole interior.
The application must be the earliest filed.
Related designs must have a certain relationship to the main design.
＜Requirements for applications
The applicant must fulfil the "one design, one application" principle.
＜Requirements for the applicant
The application must be filed by the person entitled to obtain a design registration.
Q9: "When is a design right established?"
Upon the payment of the registration fee for the first year, the Commissioner of the Patent Office registers the creation of the design right in the design register (similar to the real estate register) and the design right is established upon the registration.
The payment is due within 30 days from the date on which the registration decision or the decision on the success of the request (registration decision) is delivered to the applicant (date of service).
If the registration fee remains unpaid, the application for design registration may be rejected.
Interested parties (e.g. licensees) may pay the registration fee even against the applicant's will and claim reimbursement of the costs from the applicant.
The registration of the establishment gives a design registration number (design registration no. xxxxxxxxxx), which is separate from the application number.
Q9a: "What is the amount of the registration fee?"
The registration fee is currently set at the following amounts.
The duration is sloped in two phases so that the economic value of the design right over time can be considered upon the decision making concerning whether to maintain the design right or not.
Each year from the 1st to the 3rd year: JPY 8,500.
Each year from year 4 to year 25: JPY 16,900.
Q9b: "Are there any reductions or exemptions to the registration fee?"
No reductions or exemptions are offered for registration fees for design rights.
Q9c: 'What is the duration of a design right?'
The duration of a design right (excluding design rights for related designs) begins on the date of registration of establishment and ends on the expiry date of 25 years from the filing date.
Please note that this does not mean a full 25 years from the filing date.
The duration is maintained by paying the registration fee for the second and subsequent years on or before the year prior to the applicable year. The registration fees for the second and subsequent years can be paid for each year or for several years at once.
The holder of a design right may extinguish the design right by failing to pay the registration fees for the second and subsequent years.
Once the design right is extinguished, the registered design and similar designs may be freely practiced (used?) by anyone.
The former holder of the design right may not re-register the same or similar design.
Please note that interested parties (e.g. licensees) may pay the registration fee even against the will of the design owner and claim reimbursement of the costs from the design owner.
The duration of the design right of a related design begins on the date of registration of establishment and ends on the expiry date of 25 years from the filing date of the underlying design.
Q9d: "Can the duration of the design right be extended?"
Unlike patent rights, the duration of a design right cannot be extended.
Q10: "What is the Design Gazette?"
Once a design right is registered, the Commissioner of the Patent Office publishes the details of the design right determined through examination and trial in the Design Gazette for publication to the public (public notice).
Since there is no publication of applications in the design registration system, the description, drawings, etc. of the application as filed, or the amended version if any, amendment has been made through substantive examination, will be published. In the case of a Secret design, the design gazette is published after the expiry of the period for which secrecy is requested.
Q11: "What is a design registration certificate?"
Upon the registration of the establishment of a design right, the Commissioner of the Patent Office issues a design registration certificate to the holder of the design right. The design registration certificate is issued as a 'proof' of the honor of having acquired the design right. It is not a certificate of title or a certificate of validity indicating the acquisition or loss of a right. For example, transferring a design registration certificate does not mean that the design right is 'transferred'.
Q12: "Can design rights be transferred (sold)?"
Design rights can be transferred (sold) as property rights.
However, the mere agreement between the parties to the transfer does not make the transfer effective.
As design rights are intangible property rights, transfers of the rights (excluding general succession by inheritance or company merger), including assignments, only come into effect after registration in the design register, provided that the parties have reached an agreement.
In the case of transfer by assignment, the application for registration needs to be submitted on the "Application for registration of transfer of design rights" with the "deed of assignment" between the parties attached.
In the case of general succession, the transfer takes effect even without the registration; however, it must be notified to the Patent Office without delay.
Information on rights relating to the creation, transfer, etc. of design rights is made public by means of the design register kept at the JPO (however, like the property register, this register has no public credibility).
The design right of a related design cannot be transferred separately from the design right of the underlying design, nor can the design rights of related designs be transferred separately from each other after the expiry of the underlying design right.
Q13: "What is the effect of a design right?"
The holder of a design right has the exclusive right to work the registered design and designs similar to it in the course of business.
However, when an 'exclusive license' is granted, the right to work the design within the scope of the act of grant (contract) is not granted as described below.
An important aspect of design rights is that, whereas the scope of identity of a patented invention or registered utility model expressed in words has certain scale, the scope of identity of a registered design expressed in drawings, etc. has smaller scale. Therefore, similar designs can be included to a design right.
The extent of the scope of similar designs, excluding related designs, will be revealed ex-post facto.
The respective meanings of the words are as follows.
'in the course of business': refers to any practice other than personal or family practice. Conversely, the design right does not extend to private or family practice.
Exclusive": means to possess exclusively (positive effect, exclusive effect, monopoly right) and, moreover, to be able to exclude others from acting against the monopoly (negative effect, exclusive effect, exclusive right).