Designs – FAQ
Protection for the designs of commercial products may be made through application to the Japanese Patent Office. Protection covers the combination of color, shape and pattern. The scope of protection includes designs (products) that are similar to the registered design. Design applications are examined and will qualify for registration only if there exists absolute novelty and sufficient merit of design innovation.
Design rights remain valid for 20 years from the date of registration on condition of payment of the annuities.
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:
- Name and address of the designer
- Name and address of the applicant
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 one year 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.
Source: JPO website