table of contents
Conversion of design applications
The system for converting to a design registration application is as follows:A system that enables applicants to change their patent applications or utility model registration applications to design registration applicationsThis system is stipulated in Article 13 of the Design Act, and aims to provide relief to applicants in the following cases, for example:
- When an applicant makes a mistake in the application format
- When your patent application for a new shape has been rejected, you may wish to seek a design registration for its aesthetic aspects.
This article explains the requirements and effects of the system for converting designs to design registration applications.
Requirements for changing application
First, in order for a conversion to a design application to be considered lawful,All of the following requirements must be met:
| ① | In the case of a conversion from a patent application to an application for a design registration, the original patent application must be pending at the Patent Office (however, if a certified copy of the initial decision to reject the original patent application has been served, the conversion must be made within three months from the date of service of said certified copy). |
| ② | In the case of a change from a utility model application to a design application, the original utility model application must be pending at the Japan Patent Office. |
| ③ | If there is a person who holds a provisional exclusive license for the original patent application, the consent of that person must be obtained. |
| 4 | The applicant of the new design application resulting from the change is the same as the original patent applicant/utility model applicant * If the right to obtain a design registration has been legally transferred from the original patent applicant/utility model registration applicant to the new design registration applicant, the applicant is considered to be the same. |
| ⑤ | The design of the new design application resulting from the change must be specifically described in the original specification and drawings of the original patent application or utility model registration application so that the design can be clearly recognized. |
| ⑥ | The design of the new design application resulting from the conversion is identical to the design shown in the original specification and drawings of the original patent application or utility model application. |
As for utility model applications, as long as the application is pending at the Japan Patent Office, they can be converted into design applications without the restrictions that are imposed on patent applications (exceptions in the event of a rejection).
In addition, if there was a provisional exclusive licensee for the original patent application, you will need to obtain that person's consent.
On the other hand, with regard to the holder of a provisional license, no special consent is required, and a provisional license is deemed to have been granted for a new design registration application within the scope specified in the act of granting the provisional license (Article 5-2, paragraph 3 of the Patent Act, as applied mutatis mutandis by Article 34-3, paragraph 9 of the Design Act).
Regarding changes to partial designs
It is possible to change an application to a partial design as well as a whole design.
The requirements for converting an application to a partial design are almost the same. If (i) the initial specification and drawings of a patent application or utility model registration application contain specific descriptions that clearly identify the design for which the design is sought to be registered as a new part of the article, etc. resulting from the conversion, (ii) the contents of the application before and after the conversion are deemed to be identical, and (iii) the other requirements 1 to 4 above are also met, the new design registration application resulting from the conversion will be deemed legitimate.
Effect of lawful amendment to application
If the resulting new design application complies with the above requirements, the following effects will be observed in the new design application:
- The original patent/utility model application is considered withdrawn
- A new design application resulting from the change is deemed to have been filed at the same time as the original patent application/utility model application (Retroactive filing date）
Cases where changes to an application are not recognized as legitimate
Conversely, examples of cases in which a conversion to a design application would not be recognized as lawful include the following:
- When the original specification and drawings of the original patent application or utility model application do not contain any specific description that clearly identifies the design of the new design application resulting from the change.
- Where the design of the new design application resulting from the conversion is deemed not to be identical to the design expressed by a specific description that is clearly recognizable in the original specification and drawings of the original patent application or utility model application
- Where the design of a new design application resulting from a change is modified to include anything other than what was originally stated in the specification and drawings of the original patent application or utility model application
The first and second examples are mirror images of the requirements for changing an application, but as in the third example,Adding elements that were not in the original patent application/utility model registration application is not considered a legitimate change to the application.Therefore, you need to be careful.
When changes to an application are not recognized as legitimate
If the conversion to a design application is not recognized as lawful due to reasons such as falling under the examples mentioned above, the new design application will not be considered to have been filed at the time of the original patent application/utility model application, but will be treated as having been filed at the time of the application conversion procedure.
In other words, For illegal changes to applications, the filing date will not be retroactive.This means that the retroactive application date can have a huge impact, so be sure to pay close attention to whether you meet the requirements when making changes to your application.
Summary
Above, we have explained the requirements and effects of the system for converting applications to design registrations.
It is important to understand that even if you make a mistake in the application format or your patent application is rejected, it may still be possible to obtain a design registration.
However, if the appropriate procedural requirements are not met, the filing date of the new design application will not be retroactive, which may result in disadvantages in terms of novelty, prior filing, etc. Although the system of conversion to a design application is an important relief for applicants, it is important to properly understand the procedural requirements in order to avoid situations where applicants are unable to fully enjoy the benefits due to procedural deficiencies, etc.
Our firm has experts with advanced knowledge and experience in the design system, and can handle cases such as the above-mentioned application amendment. Cost estimates are free of charge.Contact FormPlease feel free to contact us via the form below.