Consultation about All Design-Related Matters
Q: I'd like to register the design of my product in Japan. What do I need to do?
- A. The first step in registering a design is filing an application with the Japan Patent Office. In this application, the design to be registered must be specified. Since a design is the aesthetic appearance of an article, it is necessary to specify both the article itself and the form of the article. This is done through the application form and drawings. The relevant article must be clearly specified on the application form as the "Article of Design." This is a crucial part of the application, since the "Article of Design" will define the applicable scope of the design once registered. In the case of an article having a three-dimensional form, said form is generally specified with six drawings: an elevational view, rear view, left side view, right side view, plan view, and bottom plan view. In cases where the form cannot be adequately represented with these six drawings, it becomes necessary to submit other drawings in accordance with the various forms of the design. The "Article of Design" and "Drawings" are the essential parts of the application that define the scope of the design. "HARAKENZO more" offers advice on effectively preparing these two elements of the application.
Q: I applied to register a design, but the Patent Office issued a "Notice of Reasons for Refusal" stating that the submitted drawings were inconsistent and the design was not specific. What should I do?
- A. When a design is not adequately specific, a "Notification of Reasons for Refusal" will be issued as per Article 3(1), main paragraph of the Japan Design Act. Inconsistencies in the drawings will result in the design being deemed as lacking in specificity. In order to overcome such a reason for refusal, it is necessary to submit revised drawings that remedy inconsistency issues. It is important to note, though, that there are certain limits on the extent to which amendments can be made. Amendments that are deemed as changing the original "gist" of the application will be rejected. Determining whether or not a particular amendment will be deemed as changing the gist requires an expert opinion and confirmation with the Examiner. In order to avoid the issuance of a Notification of Reasons for Refusal in the first place, it is essential to ensure that the article and its form are sufficiently specified in the application.
Q: I applied to register a design, but the Patent Office issued a Notification of Reasons for Refusal stating that the design is not similar to the "Principal Design." What should I do?
- A. When filing an application for a design related to a "Principal Design," a Notification of Reasons for Refusal will be issued if the related design is deemed as being dissimilar to the Principal design (see Article 10(1) of the Japan Patent Act). While it is possible to overcome such a rejection by altering the related design application to simply be a normal (un-related) application, doing so would disadvantageously narrow the scope of what is considered to be similar to the design. This means that instead of simply opting to amend the specification, it is necessary to assess whether it would be possible to successfully argue that the related design is indeed similar to the Principal Design. A successful argument would further clarify the scope of what is considered similar, thereby making it easier to exercise your design rights.
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