Domestic design system

Explaining the notice of reasons for refusal of a design registration application

Response to notification of reasons for refusal

1. What is a notice of reasons for refusal?

After filing an application for design registration, after a formal examination, an examiner at the Japan Patent Office will examine whether the application satisfies all the registration requirements according to the examination standards. The main registration requirements are as follows.

■Main registration requirements
・The design is protected by the Design Act
・The design can be used industrially
・It must be a new design that has never existed before (novelty)
・It is not something that could be easily created (difficulty in creation)
・The design is not the same as or similar to a part of the design of the earlier application
・It must not be a design that violates public order and morals.
・Applied earlier than others (first application)

For details, please refer to the link below.
  Basic information on the design system>3. General requirements for registration of designs

If the examiner determines that the application does not meet any of the registration requirements, it will not be immediately determined that the application cannot be registered, but a "Notice of Reasons for Refusal" will be issued to the applicant and will include explanations, counterarguments, and amendments (corrections). You will be given the opportunity to submit the following documents.

If you do not take any action after receiving the "Notice of Reasons for Refusal", a decision of refusal will be sent and the applied design will not be able to be registered. You will need to respond accordingly.

2. Response period for notification of reasons for refusal

The response period for the notice of reasons for refusal is set within 40 days (March for overseas residents) from the date of mailing.

Regarding extension of response period

If for some reason it is difficult to respond within the deadline, the response period can be extended by filing a request for extension, regardless of whether the applicant is a domestic resident or a foreign resident.

The period extended by a period extension request is two months, and the extension deadline is set two months after the day after the last day of the response period. The JPO fee (patent stamp fee) for requesting an extension is 2 yen if filed within the response period, and 2 yen (*2,100) if filed after the response period has passed.

*1…In the case of a response to a consultation order, the fee is 4,200 yen.

There are no questions asked about the reason for requesting an extension, so even if you accidentally forgot, you can still request an extension.

3. Regarding responses for each reason for refusal

The details of the reasons for refusal are listed under [Reasons] in the notification of reasons for refusal. Based on the reasons, you will need to provide an explanation or counterargument in a written opinion, or amend the details and drawings in the application using a procedural amendment. If the examiner confirms the written opinion and procedural amendment that you have prepared and determines that the reasons for refusal are resolved, you can receive a decision to register.

Points to note regarding amendments to application documents, drawings, etc.

If an amendment changes the design beyond the same scope that can be naturally derived based on common knowledge in the field to which the design belongs, or if it clarifies the gist of the design that was unclear at the time of filing, the design registration may be canceled. If you wish to change the scope of the design, please be aware that the amendment will be rejected as changing the gist of the design.
In the case of amending drawings, etc. at the time of application, there is a high possibility that it falls under the category of changing the gist of the application, so it is very important to consider it before filing.

≪Specific examples of amendments that change the gist≫
・Amendment to add or change descriptions (product name and description) in the application form
・Corrections that add new configurations or delete part of the configuration in drawings
・Amendment to change the solid line part (the part for which design registration is sought) in the drawing of a partial design

≪Specific examples of amendments that do not change the gist≫
・Correction of minor deficiencies (errors, etc.) in the application form
・Some parts of the drawings are missing, and corrections are made to ensure consistency between the drawings.

*The above specific example is just an example, and whether or not it actually constitutes a change to the summary must be determined on a case-by-case basis.

If an application is filed on the same day for the same or similar design,

① In the case of design registration applications filed by the same person
 A notice of reasons for refusal will be notified at the same time as the consultation order.
 If applications for the same or similar designs are filed on the same day, in principle only one of them can be registered, so consultation between the applicants is required. This is because it is considered that there is no need for additional time.
 The reason for refusal can be resolved by registering only one design and abandoning or withdrawing the other designs, or by making one design the main design and amending the design that was the subject of the consultation order to a related design. will be done.
 For example, this issue is issued when an applicant files multiple similar designs as independent designs without using the related design system.

② In the case of a design registration application filed by another person
 Each applicant for design registration will be notified of the consultation order.
 In this case, a period will be set for each applicant to discuss. If a notification of the results of the consultation is not submitted within that period, the consultation will be deemed unsuccessful and a notice of reasons for refusal will be sent to each applicant. It is also possible to apply for an extension of the consultation directive period.

≪Response to consultation directive≫
If there is a consultation directive, in principle, it is necessary to submit a notification of the results of the consultation. Even if procedures for abandoning the application, withdrawing the application, or amending the design application that was the subject of consultation are carried out, it will not be considered that the consultation has been concluded, and the examination will be put on hold until the expiration of the designated period. . By notifying the results of the consultation, the review can proceed quickly.
*①Even if the application for design registration is filed by the same person, notification of the results of the consultation is required.

≪If negotiations are unsuccessful≫
・If the deadline for responding to the notice of reasons for refusal has passed without agreement being reached, it will be determined that registration is not possible and you will receive a decision of refusal. It should be noted that thereafter, the contents of each design registration application that was subject to a consultation directive will be published as a design application bulletin that failed to be negotiated.
・If you do not wish to publish a design for which no agreement has been reached, you will need to take steps to abandon or withdraw the application before receiving a decision of refusal.

Regarding notification of reasons for refusal regarding related designs (Article 10, Paragraph 1 of the Design Act)

You will be notified if the examiner determines that the applied design is not similar to the main design stated in the application. In your written opinion, explain that the requirements for the related design are met, and if this is accepted, the reason for refusal will be resolved. If this is the only reason for refusal, registration is possible by deleting the field indicating the principal design in the application. However, we recommend that you consider whether or not your intention at the time of filing the application as a related design to the main design will be disregarded before responding.

4. About response costs

・There is no need to pay the JPO fee (patent stamp fee) when responding with a written opinion or procedural amendment. When requesting a period extension, the above-mentioned fees will be charged.
- If you request a patent attorney or patent office to handle the response procedure, a response fee will normally be charged.

5. Please contact us for consultation/inquiry

As mentioned above, the response required varies depending on the content of the reason for refusal, and there are many situations in which specialized knowledge and experience are required to explain or argue to the examiner. Depending on the response, it is possible that unexpected adverse effects will be exerted on the scope of rights.

Our experienced patent attorneys and staff specializing in design provide reliable legal services by explaining the content and suggesting appropriate responses.

If you have any questions regarding the content or response of the notice of reasons for refusal, please contactthe Inquiry FormWe would appreciate it if you could contact us at .

Related article

TOP