Differences of Design Prosecution in Japan
Japan Patent Attorney, Certified for IP Litigation
Attorney at law, California, USA
Single design per application
Each application may include only a single design of a single product. Similar designs or embodiments must be separately filed as associated designs.
Selecting designs later?
For deferring the selection from many designs, we suggest tentatively filing them as a utility patent application with complete sets of drawings for all designs. While design applications are examined in three months, the examinations of utility patent applications do not have to be requested for three years. Within this period, the applicant can convert selected designs to design applications maintaining priority. Please note, however, that utility patent applications are published before the registration.
(1) Graphical user interface (GUI)
(2) Interior and exterior designs of buildings
(2) Parts that are unseen by customers in normal use, for example, brake systems for trains
(3) Paintings, sculptures, logos, typefaces, and characters are NOT statutory subjects.
If the applicant publishes the design within a year prior to the filing date in Japan, the applicant can claim the exception to loss of novelty when filing the application. The grace period does not apply to publication of design application or registration.
Six drawings are required
The application must include six drawings of front, rear, right, left, top and bottom sides, although the same or symmetric drawings can be omitted. They must be in the same scale and consistent with each other. Centerlines of circular holes must not be drawn and transparent portion must be identified.
If a priority application does not include the six drawings, missing drawings could be added, provided that they are understood from the drawings of the priority application.
Depths of holes or recesses must be understood
If depths of holes or recesses cannot be understood from the six drawings, one or more perspective, cross-sectional, or dotted (stippled) drawings must be added to help understand the design. Lines showing surface curvature are sometimes rejected by the JPO as being unclear as to whether the lines show curvature or those actually written on a product.
Portion designs are accepted
Design of a portion of a product can be protected. If only a portion of a product is new and overall design could be considered similar with known design, we suggest filing a portion design application. Boundaries of the portion are drawn by lines having a dot and short line alternately, and the disclaimed portions are drawn by broken lines.
If the six drawings were not included in the priority application and a design of only a portion of a product is fully described, a portion design application can be filed with priority claim. Otherwise, a portion design application in Japan cannot enjoy priority from an entire design application.
Substantive examination is carried out
Design applications are substantively examined as to whether it is 1) not similar to publicly known designs and 2) not easily created based on absolute novelty standard. All publications and public use constitute prior art. There is no opposition procedure.
Priority is often denied
Because the requirements for drawings are stricter in Japan than in many foreign countries, we often need to modify or add drawings before filing the application. Consequently, priority claim is denied. If the design has already been published by any patent office, Japanese application is rejected.
We suggest deferring the publication of counterpart foreign applications until the Japanese application is filed, unless the priority application includes drawings sufficient for Japan.
Term of protection
Design is protected for 25 years from the filing date, which is longer than patent protection.
Deferral of Publication
Publication of designs can be deferred up to three years from the registration.
If you have any questions, please feel free to contact us.