DESIGN:SOEI Patent & Law Firm

1: What is a “Partial Design”?

A part of the article such as a grip for a ballpoint pen, picture or illustration on a T-shirt, or a lens for a camera can be registered as a partial design. However, some designs, such as the silhouette of a vehicle or a portion of an object that is so lacking in features that the nature of the object cannot be inferred from the portion, cannot be registered as a partial design.

 

1-1: Are there any advantages in obtaining a Partial Design Registration?

If a design has been registered as a partial design, a product that includes the partial design would infringe the partial design right. For example, if a lens for camera is registered as a partial design, the manufacture or sale of any camera including a lens that is identical or similar to the registered partial design will constitute infringement regardless of the shape of the rest of the camera.

 

1-2: Can applicants file a partial design application in Japan claiming priority to a partial design application filed in another country?

Yes. However, a partial design that fulfills the requirements for registration in the other country but does not fulfill the requirements for registration in Japan cannot claim priority. Two examples of partial designs that are not registrable in Japan: 1) A partial design for articles such as tire and window of a truck which are physically apart from each other and which do not share the same function or configuration. 2) A partial design that is arbitrarily cut off from the article.

 

1-3: What are the requirements for the drawings when filing a partial design application in Japan claiming priority to a partial design application filed in another country?

First, the drawings must disclose the whole of the article. For example, if a partial design for a T-shirt neckline is claimed in the first country application but the sleeves of the T-shirt were omitted in the drawings, a drawing that discloses whole of the T-shirt must be prepared for the Japanese application.

 

1-4: If the priority application was filed in a country that does not have a partial design system, is it possible to file a partial design application in Japan claiming priority to the design application for the whole of the article?

No.

 

1-5 : If it is not possible to claim priority in the situations set out in Q1-2 and Q1-4, is there any other means to file the partial design application in Japan?

Although the application will not enjoy the benefit of priority. the applicant can request the Exception to Lack of Novelty if the applicant files the Japanese application no later than six months following date on which the novelty was lost(the publication of the first country application,etc.).

 

2 : What is the “Related Designs System”?

A Related Design is a design similar to another design. If there are two or more designs that are similar to each other, they can be registered as related designs. To obtain registration as Related Designs, all the designs need to be filed on and after the filing date of the principal design and at least one day prior to the publication date of the principal design. A design that is registered as a Related Design can be enforced independently of the other designs that are registered as being related to it.

 

2-1 : Can applicants file a related design application in Japan claiming priority to a related design application filed in another country?

Yes, but because the definition of “related design” varies from country to country, the related design application filed in the other country may not fulfill the requirements for a related design application in Japan.

 

2-2 : If the priority application was filed in a country that does not have a related design system, is it possible to file related design applications in Japan claiming priority to the design application which was not filed as a related design application?

Yes, if the designs are similar under the Japanese Design Law.

 

2-3 : What are the requirements for filing a related design application in Japan?

The related design application must have been filed on or after the date on which the main application was filed. The related design application cannot be filed before the main application. Care must be taken when filing several related design applications because the examiner may determine that they are not similar according to the Japanese Design Law.  Thus, if you file applications in the wrong order, a later filed related design application may not be granted registration.  

 

3 : What is a “Set of Articles”?

Designs for combinations of several articles such as modular kitchen systems, stationery sets and personal computer systems are registrable as a Set of Article regardless of the registrability of the individual designs of each of the articles making up the set. However, the Ministry of Economy, Trade, and Industry published a ministerial Ordinance that limits the types of allowable sets to 56 categories.

 

3-1 : Can applicants file a design application for a set of articles in Japan claiming priority to an application filed in another country for a set of articles not included in the 56 categories set out by the ministerial Ordinance of the Ministry of Economy, Trade, and Industry?

No. Applicants cannot claim priority to an application for a set of articles filed in another country.  Instead, they should file separate design applications for each of the articles constituting the set of articles specified in the priority application without a priority claim.

 

4 : Is it possible to prevent the publication of a registered design?

Yes, Japan has a secret design system which postpones the publication of the design for three years at the maximum following the date of registration.

There are two caveats to bear in mind when using this system: 1. The owner cannot obtain an injunction against an infringer until he has sent a warning letter to the alleged infringer. 2. When the owner demands compensation for damages, there will be no presumption of negligence by the third party.