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Design Prosecution in Japan

1. Information We Need for filing

Names and addresses of the design creator(s) and applicant
Electronic data of drawings
Concise (10 to 40 words) description of the product
Application number and filing date of priority application, if any
A power of attorney is not required unless the case is appealed.

2. Time Schedule

(1) Filing: Few days, if drawings look acceptable to JPO
Otherwise, we will suggest modifications by handwriting memos on drawings.
(2) Examination: Four to eight months to receive the first office action

3. Fee Schedule

(1) Filing an Application
Basic fee : 89,000  (including priority claim)
Office fee : 16,000
Total   : 105,000
Basic fee is 69,000 for additional designs filed together for the same applicant.

(2) After the Filing
Late filing priority document : 0
Responding to an Office Action : 25,000  + 30,000 per hour
Paying an Issue Fee : 23,000  + Office Fee (8,500)

4. Differences of Design Prosecution in Japan

A. Six Drawing Requirements

The application must accompany six drawings of front, rear, right, left, top and bottom sides. The exact same drawing, however, can be omitted. They must be in the same scale and consistent with each other.

If holes and/or recesses cannot be understood from the six drawings, one or more perspective, cross-sectional, or dotted (stippled) drawings must be submitted to help understand the design. Lines showing surface curvature are sometimes rejected by JPO, if it is not clear as to whether the lines show curvature or are actually written on the product.

Centerlines of circular holes must not be drawn. Transparent or movable portion must be identified in the application.

B. Single Design per Application

Each application may include only a single design of single shape. Multiple applications can be filed by claiming priorities from the single priority application that includes multiple designs.

C. Associated Designs

Plural varieties of designs created under one design concept can be registered as "associated designs".

One of the designs must be specified as the principal design, while the others become the associated designs. The associated designs must be similar to the principal design. A design that is similar to another associated design, but dissimilar to the principal design is unregisterable. In this respect, careful consideration must be made to determine which is to become the principal design. A poor selection may lead to failure of registration of the associated designs,

Registered associated designs have their own scope of protection, in the same way as a regular design, and have a right independent of the principal design. This independent right means that the associated design right will not lapse, even if the principal design right is subsequently nullified or abandoned.
Please note, however, the associated design rights expire together with the principal design right (20 years from the registration date of the principal design), and transfer of the associated design rights, pledge, and exclusive licenses should be handled with the principal design right, not be handled separately.

The associated designs can be filed until the principal design registration is published.

D. Acceptable Subjects

(1) Screen images can be protected, if they indicate functions that are necessary for operating the article, or it is used for putting the article into a state that fulfills its functions.

(2) Parts that are not seen by customers in normal use, can be registered. For example, brake systems for trains are registerable.

(3) Subject matter must be a mass-producible product. Paintings, sculptures, logos, typefaces, and characters are not allowable.

E. Partial Designs

Design of a portion of a product can be filed, even when the portion is not detachable. Non-similarity requirements are strict in Japan. If only a portion of a new product differs from a known design, we suggest filing a portion design application, in which only the new portion is depicted using solid lines. Boundaries of the portion are drawn by lines having a dot and short line alternately, and the other portions are drawn by broken lines.

F. Design for set of articles

Sets of two or more articles that are designed to be used together and have similar design elements can be registered as "design of set of articles".

Similar design elements mean that every article must have an identically shaped part or pattern. 56 sets of articles applicable for registration are specified by the Japan Patent Office.

G. Priority Can Be Denied

Drawings of foreign originated applications must be often modified before the filing in Japan. Consequently, priority claim is denied. If the design is already published by a foreign PTO, Japanese design application is rejected based on the publication. We, therefore, suggest including the drawings mentioned in A in a priority application and deferring the publication of the priority application.

If the six drawings were not included in the priority application and a design of only portion of a product is understood, the portion design application can be filed with priority claim.

H. Exceptions for Loss of Novelty

If a design was publicly known due to applicant's acts, such as sales and advertisement within the last six months, exception for loss of novelty or grace period can be requested at the time of filing the application. A document, which proves that the design was publicly known, must be submitted within 30 days from the filing.

I. Substantive Examination

Design applications are substantively examined as to whether it is 1) not similar to publicly known designs and 2) not easily created. There is no opposition procedure.

J. Registration and Publication

Design is protected for 20 years from the registration. Publication of design can be deferred up to three years from the registration.

Should you have any questions, please feel free to contact us.