The United States Design System

Major application countries and foreign design systems (US)

1. Subject of protection, duration and examination period

(1) "Design Patent"

There is no independent design law, and designs are stipulated as "Design Patents" in the Patent Act. With some exceptions, the provisions of the Patent Act apply as is.

In the application documents, "claims" (single claim) are written like in a patent, and if there are similar designs, they are described as "embodiments."

(2) Definition of “design”

It is defined as "a new, original and decorative design for an article of manufacture." Fonts, icons, etc. are also protected, and the concept of "design" is somewhat broader than in Japan. In addition to novelty and non-obviousness, decorativeness is also a requirement for registration.

(3) Term of existence

The design is protected for 15 years from the date of registration.

(4) Review period

Average 8 to 12 months

2. Novelty, Nonobviousness, and Grace Period

(1) Novelty

If the overall impression of a design that an average viewer has is the same as that of a publicly known design prior to the effective filing date (actual filing date or priority date), the design cannot be registered as it lacks novelty. The fields of the products do not need to be similar.

(2) Non-obviousness

This provision is equivalent to the Japanese standard of "non-creativity." It determines whether the difference between the application design and the prior design is obvious to a person with ordinary skill in the art.

(3) Grace Period

This provision is equivalent to the exception to lack of novelty in Japan. Even if the creator himself discloses the design, he or she can file and register the design without taking any special steps for one year from the effective filing date (or the priority date in the case of a priority claim) as a "grace period."

In particular, since it applies from the effective filing date, it also applies to disclosures made within one year prior to the filing date in Japan.

3. Multiple designs, one application

If they are included in one creative concept, multiple designs can be described as examples in one application. If there is a design filed in Japan as a related design, it may be possible to include it as an example in one application. In addition, a whole design and a partial design that is a part of it may be recognized as examples in one application.

The scope of design rights is thought to be narrower than in Japan, so in practice it is important to expand the scope of rights by including many examples.

The criteria for determining which designs can be included in a single design are unclear, and it seems that it depends largely on the examiner's subjectivity. If multiple designs are applied for in a single application and it is determined that the requirements for a single creative concept are not met, the examiner may request a limitation, and it may be necessary to limit and divide the applied design. On the other hand, if similar designs are applied for separately, an office action may be issued for non-obviousness. In this case, it is not possible to amend the application to a single application, so a terminal disclaimer (making the expiration date of the later application the same as that of the earlier application) may be required.

4. Overall design and partial design

The United States also has a partial design system, but unlike Japan, it is possible to amend a full design to a partial design after filing. It is also possible to amend the part of a partial design that is to be registered.

If an office action is issued because the shape of part of a design is unclear, it may be possible to resolve the reason for refusal by making the unclear part a broken line and making it a partial design.

5. Application Form

In the United States, designs are protected by patent law and must be "claimed" (a single claim) just like a patent.

Example of a claim

　　The ornamental design for a camera, as shown and described.

6. Drawings

① Six-sided view and perspective view

A sufficient number of drawings must be submitted to fully disclose the appearance of the design. In principle, a front view, a back view, a left side view, a right side view, a top view and a bottom view should be submitted. In the case of a three-dimensional design, it is recommended that a perspective view be submitted as well.

②Cross-section view

If the unevenness of the exterior can be expressed by a perspective view or shading (described later), submitting a cross-sectional view should be refrained from. This is because cross-sectional views are also subject to interpretation of rights, and adding a cross-sectional view may narrow the scope of rights.

③Shade

The unevenness and transparency of the appearance are expressed by shading. In particular, in the case of a partial design, it is required to shade the relevant part so that the scope for which the design is to be registered is clear.

④Reference diagram

Reference drawings are also subject to rights interpretation, so careful consideration is required when submitting reference drawings.

⑤Photography and CG

In principle, a line drawing is required, but only in special cases where a line drawing is not possible, a photograph or computer graphic may be submitted upon application. If an application is filed using a photograph or computer graphic, the scope of rights may be narrowed, so it is preferable to file using a line drawing if circumstances permit. In particular, if a color photograph is registered, the scope of rights is limited to the color.

Combinations such as drawings and photographs, or drawings and CG, are not permitted.

⑥ Regarding identity judgment

For applications that are planned to be filed in the U.S. from the start, it is desirable to prepare drawings in accordance with U.S. regulations from the time of filing in Japan, but if this is not the case, consideration is required before filing. This is because if the drawings are revised, the identity of the designs may no longer be recognized and priority may not be claimed. You must consider whether you should revise the drawings to comply with U.S. regulations when filing the U.S. application, or whether you should revise the drawings if you receive reasons for rejection. In the U.S., the judgment on the identity of designs is thought to be relatively lenient when making a decision on priority claims, but strict when making amendments, so it is considered better to revise the drawings at the time of filing.

7. IDS (Information Disclosure Statement)

In the United States, inventors and applicants of designs are obligated to submit information about prior designs known to them to the USPTO (information disclosure obligation). Therefore, cited documents, etc., shown in examinations in Japan and other countries must be submitted as IDS. If an applicant is aware of the existence of prior documents, etc. that are considered to have a significant impact on the decision on registrability, but fails to submit them, it may be considered inequitable conduct and the applicant may not be able to enforce the rights even if the design is registered.

There is no fee for an IDS if it is submitted within three months of filing the application, but a fee will be charged thereafter. Since there is a possibility that the submission of an IDS will not be accepted after the first notice of refusal has been issued, it is necessary to constantly monitor the status of examinations in foreign countries and be careful to promptly submit prior design information cited therein.

8. Accession to the Treaty

The status of membership in the main treaties is as follows.