DESIGN:SOEI Patent & Law Firm

1: What is a “Registrable Design” in Japan?

“Design” is any shape, pattern, or color or any combination thereof in an article which produces an aesthetic impression on the sense of sight. An “Article” is limited to a tangible object under the Design Law, and therefore a motif per se is not registrable. A part of an article, which produces an aesthetic impression on the sense of sight, may also be registered.

 

2: Can designs displayed on computer screens be registered?

Yes, display screen designs can be registered. The Revisions of Japanese Design Law in 2006 expanded the range of registrable designs to include display screen designs.

 

3: What is included in a registrable display screen design?

Display screen designs that satisfy either of the following two requirements can be registered:

1. necessary for the function of the article, such as the initial screen of a mobile phone, a screen that displays the time on a digital clock, etc.
   
2. Designs for display screens that are used for operations that contribute to the function of the article, such as the operation screen of a mobile phone, the operation screen for setting up a game device, etc.
   

For example, a software- generated display screen that appears on a computer monitor when an information processing function has been completed is not registrable.

 

4: Can I obtain both a trademark registration and a design registration for the same subject?

Yes, if the subject satisfies the requirements for registration under both the Trademark Law and the Design Law. Because novelty is required for design registration, a design application should be filed before the trademark application.

 

5: How do I obtain design protection?

Designs are protected only after they are registered at the Patent Office. Therefore, you must file an application for a design registration at the Patent Office. The application request must identify the article, together with a depiction of the design in the drawings or the photographs. Japan has a substantive examination system for design registration. Therefore, if a design application does not satisfy the requirements for registrability (for example, lacks novelty or does not satisfy the first-to-file rule) the application will not be registered.

 

6: Can a design that has lost novelty at the time the application is filed be registered?

Yes, the applicant can request an exception to loss of novelty. The range of design applications that can enjoy the exception to loss of novelty is broader than that of patent applications. For example, a design that was disclosed, distributed, or presented to a third party in press releases and exhibitions can enjoy an Exception to Loss of Novelty under the Design Law, but not under the Patent Law.

Please note the Exception applies only to novelty.  It does not change the Japanese filing date and does not result in the application being deemed to have been filed on the date novelty was lost.

 

7 : Can applicants file an application containing more than one design?

No. Each application must contain only one design.

 

8 : What information or documents do applicants need to file together with the application?

The name(s) and address(es) of the applicant and the person who created the design, the name of the article which contains the design, drawings, and a certified copy of the priority application (if priority is claimed) must be submitted together with the application.

 

9 : How many drawings are required?

For 3-dimentional designs, six drawings consisting of a front view, a rear view, a right side view, a left side view, a plan view, and a bottom view, must be submitted. For surface designs, a surface view and a back view must be submitted.

If a Japanese application claims priority to an application filed in another country and priority application does not provide all six drawings, the missing drawings must be prepared for the Japanese application.

 

10 : In case all six drawings were not filed at the time of filing the application, can the applicant make amendment to supply the missing drawings?

If the content of the missing drawings could have been naturally be inferred by a person skilled in the art, the applicant can file amendments to supply the missing drawings. If the content of the missing drawings could not have been naturally inferred by a person skilled in the art, the missing drawings will be deemed necessary to clarify a key point of a design that was unclear at the time the application was filed, and the amendment to supply the missing drawings will be rejected.