Domestic design system

Division of Design Applications

Division of Design Applications

In a design application, if the application contains two or more designs, it is possible to divide part of the application into a separate design application.

In this article, we will introduce an overview of the divisional application system, the requirements for divisional applications, and the knowledge necessary for filing a divisional application.

1. Provisions of the Design Act regarding division of design registration applications

The Design Act provides the following regarding divisional applications:

Design Act Article 10-2
An applicant for a design registration may file part of an application for a design registration which covers two or more designs in one or more new applications for a design registration only where the application for a design registration is currently undergoing examination, appeal or reexamination.
(2) Where an application for a design registration is divided, the new application for a design registration shall be deemed to have been filed at the same time as the original application for the design registration.

The Design Act stipulates the "principle of one design per application" (Article 7), and this system was established with the aim of providing relief to applicants who, in violation of this principle, mistakenly include two or more designs in a single application when filing a design registration application.

In cases where two or more designs are included in a single design application, a notice of reasons for refusal will be issued under the provisions of the Design Act. In such cases, it is possible to obtain rights for each design by filing a divisional application.

2. Requirements for division of a design application

When filing a divisional design application, the following requirements must be met:

  • The design application is pending examination, appeal or retrial
    Once a design application has been granted, a divisional application cannot be filed.
  • The applicant for the design registration is the same
    The applicant for the new divisional design application must be the same as the applicant for the original design application.
  • Division of a design application containing two or more designs
    This applies when two or more articles are listed in the “Article to the Design” section of the application, or when two or more shapes, etc. are represented.
    In addition, if an application contains two or more physically separate "parts for which design registration is sought" and there is no unity of shape or function, it will be considered to be an "application for design registration containing two or more designs."
  • The design in the new design application resulting from the division is the same as any one of the two or more designs contained in the original design application.

International design applications can also be divided.

3. Unacceptable division procedures

One design, one application

When a design registration application that has been filed for each design and that satisfies the requirement of "one design, one application" under Article 7 of the Design Act is divided into applications for each part that constitutes the article.

⇒ In principle, it is not permitted to divide an application that satisfies the provision of “one design, one application” in Article 7 of the Design Act.

*There is a precedent where it has been determined that the design shown in the reference drawing is "not permissible for division of an application."

  • "Piano Auxiliary Pedal Case" (Intellectual Property High Court Case No. 10136, 2006)
    In the original application, the article relating to the design for which the design was sought to be registered was a "piano auxiliary pedal," and the reference drawing included an illustration of a piano auxiliary pedal with an attachment attached.
    Subsequently, a divisional application was filed for the design relating to the auxiliary piano pedal with the attachment attached, but it was determined that "it cannot be considered part of a design registration application which includes two or more designs, and therefore division of the application is not permitted."

The design of the braid

When a design application that meets the requirements for a "set of designs" under Article 8 of the Design Act is filed separately for each of the constituent articles, etc.

⇒ If the design of an assembly does not meet the requirements of Article 8, such as if it is determined that the design as a whole lacks unity, it is possible to file a divisional application for each of the constituent articles.

Other designs

・When a design registration application that meets the requirements for an "interior design" under Article 8-2 of the Design Act is filed separately for each component part, etc.

The design depicted in the new divisional application is a change in principle from the design contained in the original application.

・When filing a divisional application for new parts of an entire design that is recognized as a single design, or a part of an article, etc. that is treated as a single design

⇒ With regard to a new design application that does not meet the above requirements for division, the new design application will not be deemed to have been filed at the time of the original design application, but will be treated as if it had been filed at the time of division.

4. Practical explanation of procedures to be followed at the Patent Office

In addition to filling out a regular application form, the application form for a divisional application must include the following additional fields and the necessary information must be entered.

[Special Notes]: Application for design registration pursuant to Article 10-2, Paragraph 1 of the Design Act
[Display of original application]: Enter the application number and filing date of the original application.

The fee to be paid to the Patent Office is 16,000 yen, the same as for a regular design registration application.

5. How to deal with the original application when a divisional application is filed

When dividing a design application, an amendment must be made to the original application to delete the design(s) that are to be divided from the two or more designs contained in the original application. This amendment must be made at the same time as the divisional application is filed.
(However, if the amendment is not made at the same time as the division, the amendment may be made while the application is pending examination, trial or retrial.)

If the original design application is not amended, it will be rejected as an application containing multiple designs.

*In a design registration application that includes two or more designs, an amendment that leaves one design and deletes the others without filing a divisional application is not considered a change in the gist and is acceptable.

Points to note when filing a divisional application

With the introduction of the "multiple design consolidated application" system that came into effect in April 2021, it is now possible to file multiple design registration applications at the same time using a single application form.

Please note, however, that a divisional application cannot be included among multiple design applications in a "multiple design application."

Regarding the handling of divisional applications for design registrations in foreign countries

Divisional applications are handled differently in different countries.
For example, in the United States and China, multiple design applications are possible, and if the original application contains two or more designs, a divisional application can be filed for one or more of the designs.

On the other hand, in the case of international applications for designs (Hague applications), if the requirement of unity of design is not met but an application for a design is filed in the same international application, some countries will carry out a divisional procedure for the international application, and will refuse protection in the designated contracting party unless the requirement of unity of design is met, so caution is required.
*When specifying Estonia, Kyrgyzstan, Romania, Singapore, or Syria

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