table of contents
About the One Design, One Application System
Application by design
Article 7 of the Design Act stipulates that a design registration application must be filed for each design.
The specific procedures are governed by the Design Act Enforcement Regulations (Article 7), which allow for the filing of a single application for multiple designs (see below), but stipulate that each application must contain only one design (one design, one application).
The requirement of one design, one application is based on the consideration of procedural convenience, namely, clarifying and ensuring stability of the content of the right by generating one design right for one design, as well as preventing unnecessary disputes, and convenience in the event of infringement disputes.
In addition to the above requirements, the Regulations also stipulate that the purpose, assembly or interior of the article, building or image to which the design pertains must be clear, so that the content of a single design right is not too broad.
When determining whether or not a design applied for satisfies this requirement, the examiner will make a comprehensive judgment based not only on the statement in the “Article to the Design” column of the application, but also on the statements in the other columns of the application and the drawings, etc. attached to the application. If the use and function of the article, etc. of the design for which design registration is sought can be clearly recognized, the examiner will determine that the requirement is met.
This article explains the single design application.
Determining whether or not an application has been filed for each design
If an application for design registration falls under any of the following cases, for example, the examiner will determine that the application contains two or more designs and does not qualify as an application for design registration for each design:
| (1) | When two or more articles, etc. are described in parallel in the column of “Article to the Design” of the application |
| (2) | When two or more items are shown in a drawing, etc. (including an arrangement of several items, etc.) However, this does not apply when the application is for a design registration for a set of items or an interior design. |
| (3) | When a single article, etc. contains two or more physically separate "parts for which a design registration is sought" |
How to determine whether an item falls under two or more categories of goods, etc.
| ① | Even if multiple components are shown in a drawing or other document, if all of those components are considered essential to a single specific use and function according to accepted social standards, the examiner will determine that they are a single article, etc. |
| ② | Even if the connection is not strong, if the following points are met, the examiner will take these points into consideration in determining whether the items are a single article, etc. (A) When all components are physically one unit, or when they are closely related in shape, etc. and created as a single unit, etc. (a) When it is socially acceptable to carry out the project in an integrated manner. |
| ③ | If the multiple components are not found to be connected in any way to fulfill a single specific use or function, the examiner will determine that there are two or more articles, etc. However, if the products can be distributed as a single unit according to social standards, and all of the components are created as a single unit with a close relationship in shape, etc., the examiner will determine that they are a single article, etc. |
When a single article, etc. contains two or more physically separate "parts for which a design registration is sought"
In an application for a design registration for part of an article, etc., if a single article, etc. contains two or more physically separate "parts for which design registration is sought," in principle it will not be recognized as a design registration application filed for each design.
However, if the design applied for falls under any of the following conditions, the examiner will treat it as a single design even if it contains two or more physically separate "parts for which design registration is sought."
| (1) | When there is unity of shape, etc. |
| (2) | When there is functional integrity |
| (3) | When a part that serves a certain purpose or function, or a part that has a unity of shape, etc. is considered as "other parts" |
| (4) | Where the part sought to be registered appears physically separate on the drawing, separated by an undisclosed part; |
Judgment on clarity of use and function of the article, etc. to which the design relates
A design for which a registration is sought must clearly indicate the use and function of the article or other item to which the design relates.
The examiner will determine that the design applied for does not meet this requirement if the use and function of the article, etc. to which the design relates is unclear, or if the design is so unclear that it may include a large number of articles, etc.
While keeping in mind that the “article to which the design pertains or the use of the building or image to which the design pertains” stipulated in Article 6 of the Design Act as an item to be described in an application should in principle be clearly stated in the “article to which the design pertains” column of the application, the examiner will make a judgment as to whether or not the applied design meets this requirement based not only on the description in the “article to which the design pertains” column, but also on a comprehensive basis on other descriptions in the application and drawings, etc. attached to the application.
Details in the column of [Article to the Design]
When filing an application for a design registration, for each design for which a design registration is sought, the article to which the design relates or the use of the building or image to which the design relates must be described in the “Article to which the design relates” section of the application form (Article 6, Paragraph 1, Item 3 of the Design Act).
Previously, the “Article of the Design” column was required to indicate the “classification of the article” specified by the Ordinance of the Ministry of Economy, Trade and Industry (Article 7 of the Design Act). However, due to the partial amendment in XNUMX, the same column is now required to indicate the “classification of the article” “as provided for by the Ordinance of the Ministry of Economy, Trade and Industry,” and “Appendix XNUMX of the Design Act Enforcement Regulations (hereinafter, “Appendix XNUMX”),” which listed the “classification of the article,” has been abolished.
Therefore, from April 3, 4, the column for [Article related to the design] will be filled in so as to clearly state the purpose, structure, or interior of the article related to the design or the building or image related to the design (Article 1 of the Enforcement Regulations of the Design Act).
The Japan Patent Office's Design Examination Standards Office has created a table entitled "Examples of Articles Related to Designs," which lists concrete examples of descriptions in the [Articles Related to Designs] column that clarify the purpose or interior of the article related to the design or the building or image related to the design. This "Examples of Articles Related to Designs" is based on the previous "Appendix 1," and has been updated with the addition and deletion of article names in accordance with recent design registration records, the review of old notations, and changes to the order of listing, in order to serve as a reference when preparing design registration applications.
Click here for "Examples of articles, etc. relating to designs"
https://www.jpo.go.jp/system/laws/rule/guideline/design/ishou_kisoku_betuhyo.html
Examples of articles, etc. to which designs relate that are unclear in terms of their uses and functions
If an application for design registration falls under any of the following, the examiner will determine that the use and function of the article, etc. to which the design of the applied design is applied is unclear.
| (1) | When the description in the column of "Article relating to the design" of the application falls under any of the following: a) The design is not used as a general name in Japanese (or English in the case of an international design application) in the field to which the design belongs. (Examples: names in a language other than Japanese (English in the case of international design applications), abbreviated names that are not widely recognized as common names, and names that include proper nouns such as trademarks or product names. However, in the case of Japanese, names that include alphabetic abbreviations (e.g., "LED," "DVD," etc.) will not be treated as problematic if they are commonly used names.) b) Those for which no use or function can be recognized (Example: "item", "thing") |
(2) | When the use and function of the article, etc. of the applied design cannot be clearly identified even after comprehensively examining the description of the application and the drawings attached to the application |
Legal Treatment
When complying with the principle of one design, one application
Provided that other registration requirements (Articles 3, 5, etc.) are met, the design will be registered (Article 20) and a design right will be established (Article 23).
Violation of the principle of one design, one application
The application will be rejected as a violation of Article 7 (Article 17). Such a reason for rejection may be remedied by amendment (Article 60-3), division (Article 10-2), etc.
However, a contract will not be invalidated for violation of Article 7 (Article 48). Article 7 is a provision established from the perspective of providing for procedural convenience, etc., and it is not appropriate to invalidate a contract unless there is a substantial defect.
<Reference> Multiple Designs Application Procedure
In the partial amendment of 2, in light of the growing need for filing applications in a single application for designs in which shapes, etc. based on the same concept are applied to different articles, amid an increase in the number of companies that are enhancing their brand value by using a common, consistent design concept for multiple products, the METI Ordinance (Article 2-XNUMX, Enforcement Regulations of the Design Act, etc.) was amended to prescribe procedures for filing applications for multiple designs by using a single application.
(1) Overview of the flow of procedures for filing a collective multiple design application
After the application procedure is completed, a procedure number will be notified and a formality review will be conducted.
After the requirements, such as the completion of the formality examination, have been met, an application number will be notified to each individual design registration application.
Substantive examination and design registration will be conducted for each individual design application, as under the current system.
(2) Application format
- An application for a multiple design application procedure must be prepared in accordance with Form 2-bis.
- Any description of part of an application will be deemed to have been made in all included design registration applications containing the same matters.
-Columns for the article to which the design relates, creator information, explanation of the article to which the design relates, and explanation of the design must be provided for each design.
(3) Treatment of documents submitted with the application
Certain documents submitted in a multiple design application procedure (such as a certificate of exception to lack of novelty, a priority certificate, or a document stating an access code, etc.) will be deemed to have been submitted for all included design applications on the date of their submission.
(4) Applications that cannot be included in a multiple design application procedure
Some applications, such as divisional and converted applications, cannot be included in multiple design filing procedures.
Some documents, such as the feature description, cannot be submitted in relation to a multiple design filing procedure.
(5) Request for issuance of a priority certificate, etc.
- Requests for the issuance of a priority certificate, and for the issuance and inspection of certified copies of documents related to design registrations can be made collectively for multiple design registration applications included in the same procedure by using the multiple design consolidated application procedure number (requests can be made even after the application number has been notified).
As before, it is possible to make a request for an individual design application by submitting the application number.
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