Domestic design system

Differences between designs and patents

Differences between designs and patents

For example, when you develop a new product and consider filing a patent application, you may wonder whether you should also file a design registration application.

We will explain the differences between patents and designs, including whether you should protect your rights as a patent or a design, and whether it is possible to protect your rights as both.

Key Points

  • A patent protects the creation of a technical idea, while a design protects the aesthetic appearance of an article.
  • If the shape of an article has both a technical effect and an aesthetic appearance, it can be protected by both a patent and a design right.
  • Even if only a patent application has been filed, it is possible to change the patent application to a design registration application if the requirements are met.
  • Compared to patents, designs have the advantages of quicker examination and a longer duration.

Differences between designs and patents

Protection target

Patent: A highly advanced creation of a technical idea that utilizes the laws of nature.
*Inventions of objects, programs, methods, production methods, etc. The concept of an invention is written down and protected.

Design: The shape, pattern, color, or combination of these of an article, the shape of a building, or an image that evokes a sense of beauty through the eye.
*Each part of an object, building, or image is also protected. Visible objects are the subject of protection, and conceptual objects that do not appear in the exterior cannot be protected. The extent to which an object is identical or similar as shown in a drawing, etc. is protected. Even if there is no technical novelty, it can be protected if its appearance is novel.

  • ①Items protected by both patent rights and design rights
    Both designs and patents have novelty as one of the requirements for registration, and share the view of protecting creations, but patents protect the creation of technical ideas, while designs protect the aesthetic appearance of an article, etc. Therefore, if the shape of an article has both a technical effect and an aesthetic appearance, the applicant can choose to apply for either a patent or a design, and obtaining both a patent right and a design right allows for multifaceted protection.
    In addition, the Design Law protects the "aesthetic appearance" of an item, but does not require decorative elements or whether it is perceived as beautiful. Therefore, even industrial machinery that does not have aesthetic decoration, such as those protected by the Patent Law, can be protected if it has a novel appearance.

    Patent rights have a broad scope because they apply even if the appearance is dissimilar, as long as the technical effect is the same.
    Design rights apply if the appearance is identical or similar, but if the appearance is dissimilar, the right does not apply even if the technical features are identical. However, the scope of rights can be expanded by using related designs or partial designs, and generally, designs are more likely to be registered than patents.
  • ②Items protected by patent rights but not by design rights
    Inventions are divided into product inventions and method inventions.
    In the case of an invention of an object, if the object has a distinctive appearance, it is possible to protect that appearance with a design right.
    On the other hand, in the case of a method invention, unlike an invention of a product, the method itself is not subject to design protection because it is not the shape of a product, and is therefore not protected by a design right.
    Examples of method inventions: method of use, method of measurement, method of inspection, method of manufacture, etc.
  • 3) Items protected by design rights but not by patent rights
    The aesthetic appearance of an article can be protected by a design right, but if the shape of the article has no technical effect, it cannot be protected by a patent right.
    For example, the shape and pattern of a chair can be protected by a design right, but if the shape does not have a technical effect, it does not constitute an invention and cannot be protected by a patent right.

Examination request system

  • Design: None (substantive examination will begin even if no examination request is filed)
  • Patent: Yes (request for examination must be made within 3 years from the application date)

Application publication system

  • Design: None (not disclosed until registered)
  • Patent: Yes (will be published 1 year and 6 months after filing)

Review period (first action period) *2020

  • Patent: Approximately 10 months (from request for examination to notification of first examination result)
  • Design: Approximately 6 months (from application to first examination result notification)

Duration

  • Patent: 20 years from the filing date
  • Design: 25 years from the filing date

Scope of an application

  • Patents: External features that can be implemented in multiple ways can be filed together in a single application.
  • Design: One design, one application. If there are multiple forms, a related design application or a partial design application will be used.

Design-specific system

  • Partial design (design registration can be obtained for the part of an article that has design features)
  • Secret design (You may request that the contents of the design not be published in the Design Gazette for a period of three years from the date of design registration)
  • Related designs (designs similar to one's own applied design or registered design (principal design) can be registered as related designs)

<Changes to applications>
When filing only one of a patent application or a design application due to cost considerations, etc., it can be difficult to determine which is more advantageous, and you may end up choosing the wrong application format. In such a case, if the requirements are met, it is possible to change a patent application to a design application, or vice versa.

Advantages of changing from a patent application to a design application

  • Retroactive filing date
    Since the application date is retroactive to the date of patent application, a design can be registered even if it became publicly known after the patent application was filed.
  • Alternatives to patents
    If a patent application is rejected due to lack of novelty or inventive step, it may be possible to obtain rights by changing it to a design registration application if the appearance is novel.
  • Multifaceted protection through patent rights and design rights
    In cases where, after a patent application has been filed, it becomes apparent that a design also has value that should be protected, it is possible to obtain multifaceted protection through both patent rights and design rights by utilizing division and modification while retaining the original patent application.
  • Early patent application
    In cases where it takes time to obtain rights under a patent, changing to a design has the advantage of speeding up the process. This is beneficial in cases where you want to expedite the process, such as when another company is already using the product covered by the patent application and the product has a similar appearance.

[Reference] It is possible to change a utility model application to a design application. A trademark application cannot be changed to a patent application or a design application.

Finally

Our patent office has a large number of experienced patent attorneys and experts who provide prompt and high-quality intellectual services.
For design registration, go to HARAKENZO. Please feel free to contact us.

Related article

TOP