September 2015

About the Design System in Japan – 5

Partial Design

What is a partial design?

 

A partial design is a form of a design registration focusing only on a unique part of a certain design.

 

How effective is this system?

 

Similarity of designs is measured based on the whole shape of designs. Even if parts of a design seem to be identical, both designs may be determined to be dissimilar if the overall impression of a design differs from another design. Thus, a third party might have the possibility to imitate a unique part of a design while creating other parts being different. The partial design system is useful to prevent imitating products because a mere unique part of a whole design is protected.

 

In addition, in Japan, it is not possible to file multiple designs in one application. Thus, for the creation of a variety of designs which share identical parts, an application for every design has to be filed. However, only one partial design application may cover all series of designs.

 

 

How to apply for a partial design?

 

The application form must indicate a “partial design” upon filing. It is not possible to change a normal application into a “partial design” application after having filed the application.

 

In addition, in the drawings, the part of the design for which protection is sought shall be shown in solid lines and the environment or surrounding area shall be shown in broken or dashed lines.

 

IP_Design4_En_1

 

 

Alternatively, the part of the design for which protection is sought may be shown in different colors in order to identify protected and non-protected parts.

 

IP_Design4_En_2

 

Although the part of design for which protection is sought does not appear in some of the views, six views can still be necessary. The following example is a design for a “lamp bulb.” Even though the partial design does not appear in the “top view”, all views are required.

 

IP_Design4_En_3

 

Partial design based on a priority design application

 

Where a basic application seeks protection only for a specific part within the whole shape, it is possible to claim a priority right. As long as the protected part is clearly indicated and distinguished from the other part for which protection is not sought, it is possible to use the “Partial Design”, regardless of how the part is indicated in the basic application, e.g. by the use of lines or color parts.

 

 

Are there any disadvantages for the partial design?

 

The chances for a successful registration may be lower than those for normal applications (whole design applications) because the Examiner only compares the unique part of the partial design to prior publicly known designs. For example, the Examiner may cite the following design against the above design application for a table because the shape of the legs are excluded from the partial design application and do not affect similarity/ dissimilarity of the two designs:

 

 

IP_Design4_En_4

 

Thus, depending on the shape of the protected part, the design should be filed as a normal design application or as a partial design application.

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About the Design System in Japan – 4

The “Secret Design System” in Japan

What is a Secret Design?

 

The design registration process starts with the examination of the respective application for registration in order to ensure that all requirements are being met. After successful examination, a Decision of Registration will be issued, followed by payment of the registration fee, which will finally lead to registration of the respective design. At the same time, the Design Bulletin will be published. The respective publication of the above-mentioned Design Bulletin is usually already taking place within 6 to 10 months after the registration of the design.

 

The Secret Design however allows us to extend this relatively short time period between Registration and Publication of the Design Bulletin. In applying for a Secret Design System, the postponement of the publication can be made for up to three years starting from the date of registration.

 

How effective is the Secret Design?

 

Applying for a Secret Design enables you to keep the registered design secret even after its registration. You might not want your new designs to be publicly known before the respective products are being launched on the market.

 

Japan adapts the so-called “First-to-File-System”, which makes earlier filing preferable. However, earlier filing may lead to an earlier than expected exposure of the design bulletin.

 

In such case, applying for a Secret Design is an effective way to keep the registered design secret.

 

How can we apply for a Secret Design?

 

Postponement of the publication of the Design Bulletin can already be requested while filing applications. The time period of postponement needs to be stated in the application itself.

 

As stated above, the registration fee generally needs to be paid after receipt of the Decision of Registration. At this point, there is a second chance to request postponement of the publication. In this case, the desired time period of postponement needs to be stated in the payment notice for the registration fee.

 

How long can we keep the registered design secret?

 

A design can remain secret for up to three years starting from the date of registration (not the filing date). Within this period it is possible at any time to change its expiration date.

 

What will happen if we apply for a Secret Design?

 

When the design is registered, the Japanese Patent Office (JPO) will issue only a formality bulletin (without pictures / drawings):

When the time period of postponement expires, the JPO will issue a substantive bulletin with pictures / drawings:

Does a Secret Design have any disadvantages?

 

The owner of a design right with a Secret Design status can make a demand for injunction towards a third party only after giving written warning. This warning needs to include documents stating the substantive matters such as pictures / drawings of the registered design certified by the Commissioner of the Patent Office.

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About the Design System in Japan – 3

The Grace Period and lack of novelty in Japan

What is the grace period?

 

If an application will be filed for a design which is already publicly disclosed, the application will be rejected for reason of lack of novelty.

 

However, if the application is filed during the “grace period”, the design is regarded as having maintained novelty even though it was already disclosed. This grace period allows registration of a design that was already available to the public before the application was filed. The grace period is six months from the date of first disclosure.

 

In order to take advantage of the grace period, the following requirements have to be satisfied:

 

 

 

1.The application must be filed within six months from the date of first disclosure along with a request for an exception to be made concerning the lack of novelty (grace period).

 

 

Once the design is available to the public, the application must be filed with the Japanese Patent Office within six months from the date of the first disclosure.

 

Note:

If the application is filed in Japan with a priority claim according to the Paris Convention, the grace period remains the same, i.e. six months from the date of the first disclosure.

 

Further, the application must be filed along with the request for exceptions to be made regarding lack of novelty (grace period). The request cannot be made after the application has been filed.

 

 

2. First disclosure must be conducted by the designer or his successor in title

 

 

The disclosure of the design must be conducted by the person entitled to obtain the design or his successor. Therefore, the grace period does not apply to disclosures conducted by third parties.

 

3.First disclosure shall not be in an official gazette

 

 

When launching the product onto the market, virtually any manner of disclosure is acceptable as the first disclosure, e.g. press announcement, test marketing, etc. However, publication in an official gazette of a design (patent) registration is not permitted for the grace period.

 

 

4. Evidence must be submitted to clarify how and when the first disclosure took place

 

 

Within 30 days of the filing date in Japan, a written statement along with evidence showing how and when the first disclosure took place have to be filed. Copies of the magazine article, newspaper article, Webpages, etc., are usually accepted as evidence. If the first disclosure was in an exhibition, a certificate from the event management may be required.

 

Disclosure of several designs

 

To take advantage of the grace period, evidence must filed for each disclosed design. For example, if a new red car is disclosed at a press conference and the next day the same car will be disclosed in blue on a website, it is necessary to file evidence not only for the red car, but also for the blue car. Failure of filing evidence for the blue car will lead to the rejection of the application because the design has already been publicly known, even if appropriate evidence has been filed to take advantage of the grace period for the red car.

 

However, if the second disclosed design is identical with the first one (identical shape and color), it is not necessary to file evidence for the subsequent disclosure. If it is not identical (identical shape but different color, or identical color but with modified design, etc.), evidence for all disclosed designs have to be filed.

 

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About the Design System in Japan – 2

One-Design-per-Object principle and a design for a set articles

Is it possible to include multiple designs in one application in Japan?

 

No, unlike the European Community Design system, it is not possible to include multiple designs in one application. Thus, if a priority application contains multiple designs, it is necessary to file multiple applications, one for each design. It is called the “one-design-per-object principle”.

 

 

How do you determine “one design”?

 

If there are any differences in shape, color, ornament, or the like, they are not regarded as “one design”. Therefore, it is not possible to file the design variations as one application even if the differences are slight.

 

On the other hand, if a shape changes during normal use, it is possible to file all such shapes as “one design”. For example, a convertible car can be filed in one application for both its roof in an open position and in a closed position.

 

Exceptions for one-design-per-object principle

 

a) When the shapes of physically separated portions show a strong connection, such as in their symmetry, the design will be regarded as being “one-design”, even though it is not physically one body as shown in the example below:

 

< Photo frame >

IP_Design2_En_1

b) When a product consists of multiple components such as a pack of playing cards, it is regarded as being a “one-design,” even though it physically consists of several cards.

 

c) Design for a set of articles

 

What is a design for a set of articles?

 

A design for goods that are commonly sold as a set is regarded as being a single design, even though the design actually consists of several different designs for several different products.

 

For example, tableware is commonly sold as a set containing forks, knives, spoons and the like. As long as all such goods have a unity design it is possible to file all in one application.

 

Please note that the design for a set of articles is only available to the stated articles, such as a “set of underwear”, “set of cuff links”, “set of smoker’s set”, “set of tea cups” and the like.

 

 

A partial design comprising of physically separated portions

 

The one-design-per-object principle at times causes a problem when an application is filed as a partial design (design with a disclaimer).

 

For example, if you would like to protect a design for an earphone and file the design as a whole as shown below, there are no problems regarding the one-design-per-object principle. Because the earphone is drawn with solid lines and it is physically one body:

 

IP_Design2_En_2

Reg. 1384582

 

However, if you would like to file the design as a partial design as shown below, it would be a problem. Since the cables are drawn with dotted lines, it is not physically one body. Thus it is not regarded as being either “one-design” or “one-object”.

 

IP_Design2_En_3

In this case, we would have to file two separate applications, one for the “Head,” and the other for the “Connector” as shown below:

 

< First application: Heads for earphones >

IP_Design2_En_4

< Second application: Connector for earphones >

IP_Design2_En_5

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About the Design System in Japan – 1

Required Illustrations for Design Applications

What kinds of illustrations or drawings of designs will be accepted?

 

Accepted illustrations for design applications are line drawings, computer-generated pictures or photographs in either black-white (grayscale) or color.

 

How many illustrations are necessary?

 

Illustrations of all six sides of the design as a Multiview orthographic projection or at least two illustrations as an isometric projection, which sufficiently show all sides of the design, are necessary. Said illustrations are essential even if the feature of the design is only seen in the front view or the design can be sufficiently illustrated with perspective drawings.

 

Exceptions may only be made for symmetrical designs where one illustration can be used for identical views, or for heavy machinery or vehicles for which the bottom view may be omitted.

 

Example for the Multiview Orthographic Projection:

 

IP_Design1_En_1

 

Example for the isometric projection:

 

Are any other illustrations required?

 

A perspective drawing is not essential. However, it is preferable to file one to clarify the design.

 

When even the above-mentioned illustrations are insufficient to depict a design, a sectional view may be requested by the examiner.

 

For example, the gently curved hollow of the inside of a cup cannot be depicted with the six views seen above:

 

In the case, a sectional view is required to clarify the shape of the design:.

 

 

Please note that the internal mechanism(s) can be omitted in the sectional view in designs for a mechanical product.

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Designs – FAQ

Q1. What designs are applicable for design protection in Japan?

 

A1. A figure of a product is registrable. The product for which the design is applied for must be mass-produced.

Unlike the European Community design system, since the “logo” or “character” do not directly connect with a product, these are NOT registrable. On the other hand, a component part that is not visible during normal use is registrable. A Graphic User Interface (GUI) is registrable as a portion of a product, such as a portion of a mobile phone.

 

Q2. How can a design right be obtained in Japan?

 

A2. It is necessary to file a design application before the JPO. After a formality check, all applications undergo a substantive examination. For a registration to be allowed, an applied design must have novelty, uniqueness, and not be easy to create. It usually takes about six months to receive a first office action from the JPO.

 

Q3. What is necessary for filing an application?

 

A3. At a minimum, the following is necessary:

 

  1. Name and address of the designer
  2. Name and address of the applicant
  3. Illustrations

Please note that no Power of Attorney is necessary for the examination procedure. Also, no assignment document from the designer to the applicant is necessary.

 

Q4. What kind of illustrations are acceptable in Japan?

 

A4. Line drawings, computer-generated pictures, or photographs will be accepted. It is necessary to file views of all six sides of the design as a Multiview orthographic projection or at least two illustrations as an isometric projection, which sufficiently show all sides of the design. Unlike European Community design, even though the design’s feature may appear only on the front, the above-mentioned views still need to be filed.

 

Please refer to “Required Illustrations for Design Applications” for more detail.

 

Q5. How many designs can be included in one application?

 

A5. Unlike the European Community design system, it is not possible to include multiple designs in one application (this is called “one-design-per-object principle”). Thus, if a priority application contains multiple designs, we need to file multiple applications, one for each design.

A design for a set of articles is the exception to the one-design-per-object principle.

 

Please refer to “One-design-per-object principle and a Design for a set articles” for more detail.

 

Q6. Can a priority right under the Paris Convention be claimed?

 

A6. Yes, it is possible. The subsequent Japanese application has to be filed not later than six months after the filing date of the priority application. Late filing of the priority document is accepted, but not later than three months after the filing date in Japan.

However, in order to claim a priority right, the illustrations as filed in Japan must be consistent with those filed in the priority application.

 

Q7. Is there any grace period for lack of novelty?

 

A7. Yes, there is a grace period which is six months from the date of first disclosure.

As we mentioned above, only a design with novelty is allowed for registration in Japan. Thus, if the design is publicly disclosed before filing, it will be rejected. However, if the application is filed during the grace period, the design is regarded as having maintained novelty even though it was already disclosed.

However, in order to enjoy the grace period, there are several requirements:

 

Please refer to “The grace period and lack of novelty in Japan” for more detail.

 

 

Q8. Is it possible to postpone publication in the Design Bulletin?

 

A8. Yes, it is possible to postpone publication in the design bulletin for up to three years from the date of registration. This is called the “secret design system”.

 Please refer to “The secret design system in Japan” for more detail.

 

Q9. Are there any other unique systems to protect designs in Japan?

 

A9. Yes, there is a “partial design system” and a “related design system”.

A “partial design” is a form of design registration that focuses only on a unique part of a certain design, i.e. a design with a disclaimer.

 

Please refer to “The partial design” for more detail.

 

The “related design system” allows a respective registration of similar designs. It is useful to cover design variations with only a few applications. Also, clarifying the scope of a design right is in general difficult. The Japanese “related design system” helps to address this problem and makes such clarification easier and clearer.

 

Please refer to “The related design system in Japan” for more detail.

 

By using these unique systems, it may be possible to reduce the numbers of applications needed to be filed in Japan.

 

IP_Design_FAQ

Source: JPO website

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