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Overview and Restrictions on Amendment Procedures for Design Registration Applications
When filing a design registration application, documents must be submitted in accordance with the prescribed format, but in some cases, errors or unclear descriptions may occur. The procedure for correcting such deficiencies is called "correction." This article explains how to correct design amendments.
Overview of corrections
An amendment is a correction made by an applicant on his/her own initiative or in response to a request from the Patent Office when there are deficiencies in the application documents, such as typographical errors or unclear descriptions that do not comply with the law or the prescribed format.Procedures for correcting or supplementing documents after filingYou read it right!
It would be ideal if you could submit perfect documents from the start, but because of the first-come, first-served system, if you are rushing to prepare your application, you may not be able to submit complete documents.
Therefore, the law allows for correction procedures.
Amendments have the effect of treating the application as if it had been submitted in an amended state from the beginning. Therefore, if the contents of the original application could be freely changed, this would go against the spirit of the first-to-file system and could cause unforeseen disadvantages to third parties.
for that reason,There are limitations to the amendment.
Correction limitations
Content Restrictions
Amendments are made to the application and drawings attached to the application.It should not change the abstract.If the amendment changes the gist of the design, the amendment will be dismissed. The gist of a design will be explained in the next section.
Time constraints
A person who has filed a design application, request, or other proceeding relating to a design registration may make an amendment only if the case is pending examination, appeal, or retrial.
Abstract of the design
As mentioned above, if the amendment changes the essence of the design, the amendment will be dismissed.
So what exactly is the essence of a design?
The gist of a design is:The specific design content that can be directly derived from the description of the application and drawings attached to the application based on ordinary knowledge in the field to which the design belongsRefers to.
In other words, the essence of the design is the content that a person in that industry would normally understand to be a certain shape, etc. based on the information contained in the drawings, etc., and changes to this content are not permitted.
This is a difficult concept to understand, so we will explain it by giving specific examples of cases where the abstract is considered to have been changed.
Examples of amendments that change the gist of a design
A change that goes beyond the scope of identity that can be naturally derived based on ordinary knowledge in the field to which the design pertains.
If an amendment causes a change that goes beyond the scope of identity of the design, it will be dismissed because it goes against the spirit of the first-to-file system and will cause unforeseen disadvantage to third parties.
Example: When it is not possible to deduce from the description in the application or drawings that a part is transparent, an amendment is made to add a description that a part is transparent.
Clarifying the gist of a design that was unclear at the time of application
Even if the gist of a design was unclear at the time of application but becomes clear through amendment, the amendment will be dismissed because it goes against the spirit of the first-to-file system and causes unforeseen disadvantage to third parties.
Example) In the case of an ashtray design, if the only description is that "the central ash drop area (a) is concave," there are multiple possible shapes of the concave, as shown below. In this case, an amendment to clarify the shape of the concave by adding a cross-sectional view will be considered to change the gist of the claim.

When changing the scope of the design for which registration is sought
Even if the scope of the design for which registration is sought is changed to include a scope not disclosed in the original application or in the drawings attached to the application, the examiner will reject the amendment, since this goes against the spirit of the first-to-file system and will cause unforeseen disadvantage to third parties.
Example) Normally, when filing a partial design application, the scope of the right of the article is depicted with a solid line, and the rest of the right is depicted with a broken line. If you change the broken line to a solid line, or vice versa, you are changing the scope of the design you wish to receive, and such an amendment is not permitted.
Amendments that do not change the gist of the matter
Correcting obvious errors or omissions based on common knowledge
Even if there are errors or unclear descriptions in the description or drawings at the time of application, if it is clear from a comprehensive judgment that these are due to mistakes or limitations in the writing or drawing production, and the correct description can be directly derived based on ordinary knowledge in that field, an amendment to correct the description to a flawless description will be accepted.
Example) In the design of fishing pliers shown below, there is a spring at the arrow, but the spring is not drawn in the rear view. However, when judging the drawings other than the rear view comprehensively, the absence of the spring in the rear view is an obvious defect, and the shape with the spring can be derived. Therefore, even if a spring is added to the rear view, it is not considered to be a change in the gist.

When correcting minor errors or omissions that do not affect the essence of the design
Even if there are errors or unclear descriptions in the description or drawings at the time of application and it is not possible to determine which is correct when considering the whole picture, if the errors or omissions are found to be minor details that do not affect the gist of the design, an amendment may be made to correct the description to one without any omissions.
What to do if your amendment is rejected
So, what can you do if your correction is not approved?
Request a trial
If you are dissatisfied with the fact that your amendment has been rejected, you can request an appeal against the rejection of the amendment. If you can argue that the rejected amendment does not change the gist of the application, the amendment may be allowed as a result of the hearing.
However, the request must be made within 30 days of receiving a copy of the decision to reject the amendment, and there will also be a fee for filing the appeal.
New application after amendment
Within three months of receiving a certified copy of the decision to reject the amendment, you may file a new design application for the amended design. This new application will be treated as having the filing date of the amendment, unlike a fresh application. However, if you file this new application, the original application will be considered withdrawn.
Re-correction procedure
If an amendment is made not voluntarily but in response to a comment from an examiner, etc. (a notice of refusal or an order to amend), even if the amendment is rejected, the applicant may make an amendment again within three months of receiving a copy of the decision to reject the amendment, so long as the amendment is made in order to respond to the comment (to resolve the reason for refusal, etc.).
No action, aiming to register the original design
If the amendment is rejected, the examination will proceed with the original design. Therefore, if the original design meets the conditions for registration, it will be registered as it is.
If you have filed an amendment procedure but upon careful consideration, realize that there would be no particular problem if the original design were registered, you may choose to not respond to the rejection of the amendment and instead aim to register the original design.
However, amendment procedures are usually carried out to respond to the examiner's comments (notice of reasons for refusal, etc.), and as such, the original design is in a state where it cannot be registered, and ultimately, in many cases, registration will not be approved.
Prepare your design application carefully!
Above, we have explained amendments in design applications, giving concrete examples of when amendments are permitted and when they are not permitted.
Although we have given examples where amendments were allowed, when actually considering filing an application, it is best to assume that amendments will not be allowed in principle.
If the amendments are not approved, the money and effort spent up to that point will be wasted, and there is a possibility that another company may have already filed a design application with a similar design before you can file a new application.
Therefore, when filing a design application,Carefully prepare your drawings and application.
We create drawings and prepare documents quickly and carefully according to our clients' needs, taking the utmost care to avoid the need for corrections.
We will continue to provide expertise and careful support so that you can trust us with your design registration applications.
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