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Following the acquirement of a design right, it is crucial not only to appropriately administrate and maintain the right, but also to exploit it effectively. We would like to provide a brief explanation of the important points to take into account from a practical point of view in order to appropriately manage a design right.
Note : As the related fees may vary depending on the particulars of each case, we will provide you with detailed estimates on a case by case basis.
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Design right maintenance
Annuity fees must be paid to the Japan Patent Office (JPO) for the maintenance of the design right. The related Official fees and our Attorney’s fee for one design are as follows.
| |  | Official fee | 1st to 3rd year | 8,500 yen per year |
| | 4th to 10th year | 16,900 yen per year |
| | 11th to 20th year | 33,800 yen per year |
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| Attorney’s fee | 1st to 3rd year | 22,000 yen |
| (Payment of the three years in lump sum) |
| | 4th to 10th year | 9,000 yen (for each payment) |
| | 11th to 20th year | 10,000 yen (for each payment) |
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* The above fees apply in the case of orders from foreign clients.
Licensing a design right
The system of license agreement makes it possible for the owner of a design right to allow a third party to practice the registered design without proceeding to an assignment.
License rights can be divided between non-exclusive license rights and exclusive license rights.
In the case of an exclusive license, the person designated as the licensee can enforce his right monopolistically and exclusively regarding the registered design and similar designs. An exclusive license right must be registered with the JPO in order to become valid (i.e. registration is a “requirement for validity”).
A non-exclusive license gives the right to enforce the registered design or a similar design; however, this right is not exclusive. The licensee is in this case protected from accusations of infringement raised by the owner of the design right.
In the case that the design right is assigned, thus resulting in a change in the owner of the right, the registration of the non-exclusive license is necessary for a licensee to be able to claim to the new owner of the design right the non-exclusive license right (i.e. registration is a “requirement for claims to third parties”).
Transfer of right
The transfer of a design right is the act of changing the owner of a design right without altering the content of the right.
In the case of a transfer through assignment of a design right to a third party, it is necessary to submit a Request for registration of transfer to the JPO. There are, broadly speaking, two types of transfer : general succession (merger, inheritance…) and specific succession (assignment and the like). The following is a brief explanation of the transfer through assignment, which is the most common regarding design rights.
Design right assignment
In order to keep the ownership of the right as clear as possible, a transfer through assignment must be recorded with the JPO in order to become valid.
In principle, the documents necessary to allow our firm to act as representative for the submission of a Request for registration of transfer of right through assignment are a Deed of Assignment sealed or signed by the Assignor and two Power of Attorney forms – one in the name of the Assignor and the other in the name of the Assignee. (We will provide you with the related blank forms upon receiving your order.)
| | Fees related to the registration of a transfer of design right through
assignment (for one design) |
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| Official fee | | 9,000 yen |
| Attorney’s fee | | 65,000 yen |
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* The above fees apply in the case of orders from foreign clients.
OSAKA
