Domestic design system

Steps to registering a design

Steps to registering a design

In order to register a design and obtain design rights, it is necessary to file a design registration application with the Japan Patent Office.
We will explain the process for design registration.

Prior Design Search

It is not mandatory to conduct a prior design search before filing a design application.
However, if an identical or similar design has already been published, you will not be able to obtain a design registration even if you file an application.
In addition, if you implement a design that is identical or similar to another person's registered design without permission, you may be infringing on that design right.
In order to avoid such situations, it is important to conduct a search before filing a design registration application and before implementing the design.

You can conduct a prior design search yourself by searching for prior designs using the "Patent Information Platform" (free of charge) website, but you may make a mistake in the search method. It may also be difficult to determine whether your design is similar to a prior design. Therefore, we recommend that you ask a patent attorney specializing in designs to conduct the search, even though it will cost you money.
Please note that the cost of a design search varies depending on the type of search and the product field to be searched, so please contact us individually. Of course, estimates are free of charge.

[Reference] Information required for searching designs
The information required to search for designs is summarized below for your reference.

・'We explain the information required for searching designs."

 

Application deadline

As a general rule, in order to obtain a design registration, you must pay attention to the following points:

① The design must be new and not yet seen, so it must be filed before it is made public.
②Since it is a first-to-file system, you should file your application as early as possible to avoid being overtaken by others.

Regarding ①, the publication of a new design does not immediately mean that it will no longer be possible to register the design; there are exceptions to this rule, as outlined below.

Exceptions to lack of novelty (Article 4 of the Design Act)

Application deadline: One year from first publication
If a design is disclosed before filing, the design application must be filed within one year from the date of first disclosure. In that case, a procedure to apply for the "Exceptions to Lack of Novelty" is required at the time of filing.
Please note that if an application is filed after one year from the date of first publication, in principle, a design registration will not be granted, even if the design is the person who created it.
In addition, please note that even if the disclosure is made within one year from the date of first publication, if the disclosure is made by being published in a gazette for an invention, utility model, design or trademark, the exceptions to loss of novelty are not applicable.

In addition, if you file your first application abroad, you can file a design registration application in Japan claiming priority as described below. This will ensure that your Japanese application will not be rejected for any reason, even if a new design is made public or another person files an application between the date of your first application and the date of your application in Japan.

priority claim

Application deadline: 6 months from the first application
If you file your first application abroad and then file a design registration application in Japan within six months of the filing date of that first application, you can claim the priority of the first application and file your design registration application in Japan.
If priority is claimed, the Japanese application will not be rejected on the grounds of acts that occurred between the date of the first filing and the date of filing in Japan, such as other filings, publication or working of a design (Article 4B of the Paris Convention).

Therefore, please first pay attention to the above points ① and ②, and then, if you fall under the above-mentioned exceptions to loss of novelty or priority claim, please pay attention to the application deadlines for those applications.

 

Flow from application to registration

(1) Application

An application and drawings, etc. are submitted to the Japan Patent Office.

Examples of items to be included in the application form (please check the form for details)
- Information about the applicant and creator
- Name of the item
- Description of the design and description of the article (if necessary)
- In the case of related designs, the main design shall be indicated
etc.

The application and drawings are very important for design registration. In order to avoid unnecessary amendments or refusals, we recommend that you hire a patent attorney specializing in designs.

(2) Formal examination

The application documents submitted to the Patent Office are examined to see if they meet formal requirements.

If the requirements are not met, you may be ordered to make corrections or your application may be rejected.

(3) Substantive examination

The application will be examined to see whether it meets the substantive requirements for registration (novelty, lack of ease of creation, etc.).
If the requirements are not met, a rejection letter will be sent.
For example, if the requirements for registration are not met, such as "if the design is deemed not specific, if an identical or similar prior design is found, or if it is deemed that the design could easily be created based on a design that is known to the public," then the design will be refused.

If you meet the requirements, you will receive a registration assessment.

(4) Notice of reasons for refusal

If the examiner finds reasons for refusal, a notice of refusal will be sent.

(5) Submission of written opinion/amendment

In response to a notice of refusal, it may be possible to resolve the reason for refusal by submitting a statement of argument or amendment.

[Reference] Examples of reasons for refusal and responses
Example of reason for refusal: The design cannot be registered because it is similar to a prior publicly known design (Article 3, Paragraph 1, Item 3 of the Design Act)
Example of response: Submit a statement of opinion, assert that the design is not similar to the prior publicly known design, and refute the claim.

* There are no official fees for submitting a written argument or amendment. Generally, there is a fee if you hire a patent attorney.

(6) Registration assessment

If the examiner finds no reason for refusal, a decision to grant the application will be sent. A decision to grant the application will also be sent if the reason for refusal is resolved by a written argument or amendment.
The receipt of a design registration assessment does not necessarily mean that the design is registered; registration fees must still be paid.

[Reference] The average period from application to the issuance of the first examination result (mainly a notice of refusal or a decision to grant) (first action period)
Approximately 6 to 7 months *As of 2021

(7) Decision of refusal

If you do not respond to the notice of refusal, or if you submit arguments or amendments but the reasons for refusal remain unresolved, a decision of refusal will be issued.

(8) Appeal against decision of refusal

If you are dissatisfied with the decision of refusal, you may file an appeal against the decision of refusal within three months from the date of service of the decision of refusal.
If you do not file an appeal against the decision of refusal, the decision of refusal will become final and binding, and the design will not be registered.

(9) Registration trial decision

If the reasons for refusal are found to have been resolved in the appeal against the decision of refusal, a decision on grant will be issued.

(10) Rejection decision

If it is determined that the reasons for refusal have not yet been resolved in the appeal against the decision of refusal, a decision on refusal will be issued.

(11) Intellectual Property High Court (appeal against rejection decision)

If you are dissatisfied with the decision of refusal in the appeal against decision of refusal, you may file an appeal against the decision of refusal with the Intellectual Property High Court.

(12) Registration fee payment

The registration fee must be paid within 30 days from the date of service of the registration decision or decision.
Please note that if the registration fee is not paid, the design will not be registered.

(13) Setting registration

Once the applicant has paid the registration fee, the design will be registered in the Design Register and a design right will be established.

[Reference] Fees for maintaining design rights
The duration of a design right is a maximum of 25 years from the filing date.
In order to maintain a design right, it is necessary to pay an annual fee (design registration fee) to the Japan Patent Office.
8,500st to XNUMXrd years: XNUMX yen per year (stamp fee)
From the 16,900th year onwards: XNUMX yen per year (stamp fee)
*A separate fee will be charged for payment by the agent. (It is also possible to pay directly to the Patent Office without going through an agent.)

(14) Issuance of registration certificate

After the design right is established and registered, a design registration certificate will be issued.

(15) Publication of design gazette

A design gazette that describes the rights is published to notify the public that a design right has been established.

[Reference] Costs from application to registration
Please refer to the information below regarding the costs involved from application to registration.

・'Costs related to design registration (official fees, etc.)"

 

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.

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