Domestic design system

Regarding examination of designs: Examination standards of the Patent Office/Registration guide/Revision information

About design examination

A design right, which is a type of intellectual property right, is only established when the patent office examines it and determines whether it meets the registration requirements. What are the criteria for determining whether registration requirements are met?

The registration requirements for designs are different from those for patents and trademarks. On this page, we will explain the requirements for registration based on the examination standards published by the Japan Patent Office.

The Design Examination Standards are intended to ensure a uniform interpretation of the provisions of the Design Act and their application in design examinations, and have been used by the Japan Patent Office with repeated revisions over the years.

1. Flow of design examination

*Source: Japan Patent Office Homepage Design Examination Standards
 Part I Chapter 1 Basic policy of examination and flow of examination Figure 1 Main flow of examination

The examiner conducts a substantive examination of the design registration application to determine whether a design right should be granted, following the flow shown in Figure 1 above.

If the examiner finds no reasons for refusal, he/she will make a decision to grant the application. On the other hand, if there are reasons for refusal, he/she will notify the applicant of the reasons for refusal. The applicant can try to resolve the reasons for refusal by filing a written argument, etc.

2. Main registration requirements

2-1 Designs that can be used industrially
2-2 One design, one application
2-3 Novelty
2-4 Difficulty in creation
2-5 Prior application
2-6 Others

The main registration requirements are explained below.

3-1 Designs that can be used industrially (Article XNUMX, Paragraph XNUMX)

(1) It constitutes a “design” under the Design Act (design applicability)
(2) The design must be specific.
(3) Must be able to be used industrially

(1) Design applicability

A "design" under the Design Act is defined as "the shape, pattern, or color of an article (including parts of an article; the same shall apply hereinafter), or a combination thereof (hereinafter referred to as "shape, etc."), a building (including a part of a building). (The same shall apply hereinafter) or an image (including the image portion only if it is used for the operation of the device or is displayed as a result of the device performing its function. (Omitted) The same shall apply hereinafter. ), which evokes a sense of beauty through the sense of sight.''

Designs that do not fall under the above definition cannot be registered as a design.

Specifically, the following requirements must be met.

  1. The photograph must be recognized as an object, building, or image (object, etc.)
  2. The shape of the item itself
  3. It must be visually appealing
  4. It must be aesthetically pleasing through the eyes.

*Revision (revised) information
With the revision of the Design Law that came into effect on April 2, 4, "buildings" and "images (images themselves independent of articles)" are now recognized as designs under the Design Law.

Please refer to the following page for details regarding image design.
https://www.harakenzo.com/graphic/

(2) The design must be specific.

For a design to be registered, the following matters must be directly derived from the description in the original application, based on common knowledge in the field to which the design belongs.

  1. The purpose of use of the article, etc. to which the design pertains, and its use and function based on the state of use, etc.
  2. The shape of the design for which registration is sought

A design is deemed not to be specific if any of the following apply:

  1. The drawings are not consistent with each other and the contents of the design cannot be identified
  2. Drawings and photos are unclear
  3. Explanation of material or size is not provided when required

(3) Must be able to be used industrially

Designs protected under the Design Act are limited to those that can be mass-produced (manufacturing multiple copies of the same product, etc.). Therefore, nature itself and pure art cannot be registered as designs because they cannot be used industrially.

7-XNUMX One application for one design (Article XNUMX)

Design registration applications must be filed for each design. Therefore, in cases where two or more articles, etc. are listed in parallel in the "Articles to Design" section of the application, it is considered that two or more designs are included and does not meet the requirements for one application for one design. You will be judged.

*Revision (revised) information
Due to the amendments to the Design Law that came into effect on April 3, 4, it is now possible to file applications for multiple designs in one application (multiple applications at once). Furthermore, since design rights are established on a per-design basis, it is still stipulated that each application must include only one design (one design, one application).

Exception to one application for one design

(8) Design of composition (Article XNUMX)

A design relating to two or more articles, buildings, or images that are used at the same time and which constitute those specified by the Ordinance of the Ministry of Economy, Trade and Industry is filed as a single design if the entire set is unified. and can receive design registration.

(2) Interior design (Article 8-2) *Now recognized as of April 2020.

For designs related to articles, buildings, or images that make up the interior equipment and decorations of stores, offices, and other facilities, if they create a unified aesthetic sense as a whole, an application can be filed as a single design and the design can be registered. You can receive it.

For more details about the interior design, please see the link below.
https://www.harakenzo.com/protection/

3-1 Novelty (Article XNUMX, Paragraph XNUMX)

In addition to designs that were publicly known in Japan or abroad prior to the filing of an application for design registration, designs that were described in a distributed publication, or designs that were made available to the public through an electric communication line, designs that consumers consider to be similar to a publicly known design will not be eligible for design registration.

The main entity in determining novelty is the consumer (including traders).

The similarity determination is made by comparing 1) the use and function of the article, etc. related to the applied design and the publicly known design, and 2) the shape of the article, etc. related to the applied design and the publicly known design, etc.

3-2 Difficulty in creation (Article XNUMX, Paragraph XNUMX)

If a person skilled in the art could easily create a design based on a publicly known shape, pattern, color, or their combination (shape, etc.) or image before filing for design registration (easiness of creation), Designs cannot be registered.

The person skilled in the art is responsible for determining ease of creation. A person skilled in the art is a person who has ordinary knowledge in the field to which the design pertains.

The examiner will consider that the applied design was created based on constituent elements and specific aspects that became publicly known before the application was filed, and was created using "common methods" in the field to which the design belongs. If it is determined that the design is easy to create, or if the modification to the design is only a minor modification in the field to which the design belongs, it will be determined that the design is easy to create.

9-XNUMX Prior application (Article XNUMX)

When there are two or more applications for design registration for the same or similar designs, only the first applicant for design registration can receive design registration. Therefore, the applicant of the later application will not be able to obtain a design registration.

(4) Application of exceptions to loss of novelty (Article XNUMX)

When a created design becomes a publicly known design against the will of the person who has the right to obtain a design registration at the time of its publication, or due to the actions of the person who has the right to obtain a design registration, the published design will be deemed not to be a publicly known design in terms of judging the requirements of novelty and ease of creation if the person who has the right to obtain a design registration files an application for a design registration within one year from the date on which the design was first published and meets the prescribed requirements.

For details on the procedures for exceptions to loss of novelty, please see the link below.
https://www.harakenzo.com/basic3/

(10) Related designs (Article XNUMX)

In the creation of designs, the reality is that many variations of designs are continuously created from a single concept.

The related design system is a system that protects a series of designs that have been created as having equal value only if they are filed by the same applicant, and allows rights to be exercised for each design separately.

In order for an applied design to be registered as a related design, it must primarily meet the following requirements:

  1. The design application must be filed by the same applicant as the original design (Note 1).
  2. The application is for a design similar to the original design
  3. The application must have been filed more than 2 years after the application date for the basic design (Note 10).

(Note 1) Principal design: A design selected from one's own design application or one's registered designs, which is the basis for a related design.
(Note 2) Basic design → First selected design related to the related design

In principle, even if the applicant is the same, the earlier application will be subject to judgment, and designs similar to the earlier application cannot be registered. However, under the related design system, as an exception to the earlier application provisions, related designs that are similar to the main design are excluded from the application of earlier application determinations. By using the related design system, it is possible to protect similar designs in a chain.

Revision (revised) information
- Due to the revision of the Design Law that came into effect on April 2, 4, the period in which applications for related designs can be filed is now until the day before 1 years have passed since the application for the basic design. Additionally, previously it was not possible to register designs that were similar only to related designs, but now it is now possible to register related designs that are similar only to related designs.

For more information about the related designs system, please see the link below.
https://www.harakenzo.com/utilization/

Other 3.

・Exclusion of protection for later-filed designs that are partially identical or similar to the earlier-filed design (Article 3-2)
If a part of the design of the earlier application is applied for design registration as a design of the later application almost unchanged, and no new design is found in the design of the later application, the design cannot be registered.

・Designs that cannot be registered (Article 5)
Even if the applied design satisfies the registration requirements such as novelty and ease of creation, a design that is contrary to public order and morals cannot be registered at the time of the decision to register the design.

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