Basic Information about Japanese Design Applications
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Filing a New Design Application
Applicants need to submit an application form and drawings showing the design of an article of manufacture to the JPO. Applicants may submit photographs, a model, or a sample of the design in place of the drawings. In the application form, it is necessary to identify the article of manufacture associated with the design. In some cases, it is also necessary to add the description of the article of manufacture and the description of the design.
Basically, the drawings should have six views (front view, back view, plan view, bottom view, left-side view, and right-side view). In addition, a perspective view, enlarged view, cross-sectional view, reference view, etc. can be added in the drawings. According to the current Examination Guidelines of the Design Law, six views are not necessarily required as long as the number of drawings is sufficient to clearly represent the design.
Applicants may file a design application for an entire design of an article or for a partial design of a part of an article. For example, if the design is expected to be dead-copied by others, Applicants may consider filing a design application for an entire design. In the meanwhile, if the design is characterized by a part of the article, they may consider filing a design application for a partial design covering the characterized part of the article.
In addition to the conventional design of an article, the design of an image, architectural structure, and interior decoration can also be protected under the current Design Law.
According to the Status Report 2022 issued by the JPO, a first action (FA) pendency for accelerated examination is 2.3 months, and the FA pendency for normal examination is 6.3 months. The FA pendency means the average number of months from the filing date to the dispatch date of the first examination result (a first office action or notice of allowance).
Even if the design has already been disclosed by an applicant prior to filing the design application, the exception to lack of novelty of the design can be claimed at the time of filing the design application if the design application is filed within one year from the disclosure.
If you wish to protect multiple variations of a design, you may also consider using the related design system. In this case, one of the multiple variations should be specified as an original design and the remaining variations should be specified as related designs related to the original design.
According to a related design application, it is necessary to identify a design application for its original design upon filing. Under the current Design Law, a design that is similar only to a related design may also be filed as a related design application.
When an applicant receives an office action indicating reasons for refusal from the JPO, they are given an opportunity to submit a written opinion and/or amendment within 3 months (40 days for domestic clients) from the receipt date of the office action. The response due date may be extended up to 2 months.
Failure to respond to the office action will result in a decision of rejection. With respect to amendments to the drawings, they are unlikely to be admitted under the current practice.
Decision of Rejection
An examiner’s decision of rejection is issued when the reasons for refusal remain unresolved after a response to the office action with arguments and/or amendments. In response to the decision of rejection, Applicants may file an appeal against the decision.
A request for appeal must be filed within 3 months after the receipt date of the decision. No extension of the due date is allowed.
Furthermore, a power of attorney (no signature required) is required for filing a request for appeal against the decision. Applicants may also apply for a request to accelerate the appeal.
Appeal proceedings are conducted by the panel of appeal examiners.
When Applicants receive an appeal decision of registration, the design right is registered through the payment of registration fees.
On the other hand, when Applicants receive an appeal decision of rejection, they are given an opportunity to challenge the illegality of the appeal decision by filing a lawsuit for cancellation of the appeal decision with the Intellectual Property (IP) High Court (located at the Business Court in Nakameguro). The statutory deadline for filing the lawsuit is 120 days from the receipt date of the appeal decision (30 days from the receipt day for domestic clients).
Notice of Allowance
If a design application is allowed, the design right will be registered by paying the registration fees within 30 days from the receipt date of the notice of allowance. The design gazette is then published.
The design right is effective for 25 years from the filing date.
The applicant may also request that the design be kept secret not more than three years from the date of registration. The request for non-disclosure of the design can be filed at the time of filing the application or at the time of payment of the registration fee.
For more information on the latest trends in IPR filings in Japan, please refer to this article.
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