1) Design Search

Only registered designs are published in the Design Gazette. In other words, as pending design applications and refused design applications are not made public, you cannot know them by conducting the pre-filing search. In this sense, a pre-filing design search is very limited and is seldom used in practice.

The Japanese Patent Office (JPO) provides a design database available on the internet for free which is called as “Japan Platform for Patent Information (J-PlatPat).” On this database you can search for only design registrations already published, etc., at the following link:

https://www.j-platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage

 

2) The registration process

 2-1 The information necessary for filing a design application

We need the following information and documents for filing a design application in Japan.

– A common name of article under design

– Formal drawings or photos consisting of 6 views (front, rear, top, bottom, right side and left side views)

– The applicant’s formal name, address and nationality

– The designer’s formal name, address and nationality

> Priority Claim

It is possible to claim a priority right under the Paris Convention. If you wish to claim the priority right, please inform us of the filing date and the country name of the first application. A certified copy of the first application as filed has to be submitted within 3 months from the filing date of the Japanese application.

> Power of Attorney

Please be advised that, when filing a design application, no Power of Attorney is required.

 

2-2 Registrable designs

The following designs are registrable:

• Shape, patterns or colors, or any combination thereof, of an article (including a part of an article), which creates an aesthetic impression through the eye.

 

> Partial Design

A part of the shape, etc. of the article can also be protectable as a Partial Design.

> Related Design

If the applicant files plural similar design applications simultaneously, one design can be registered as a Principal Design and other designs can also be registered as a Related Design to that Principal Design.

 

2-3 Classification of article

A design application shall be filed for each design in accordance with a classification of articles as provided by an Ordinance of the Ministry of Economy, Trade and Industry.

A multi-design application cannot still be allowable. A single application covers only one design of one article, except where a specific set of plural articles such as a set of “tea cups and dishes” is allowable.

 

2-4 Filing Fee (Application Fees)

One design application: 16,000 yen

Note that the above amounts are official fees only and do not include our service fees.

 

3) Examination

> Formality Check

An application document submitted to the JPO will be checked to see whether it fulfills the necessary procedural and formal requirements. An invitation to correct will be made if necessary documents are missing or required sections have not been filled in.

 

> Substantive Examination

The JPO examines whether an application fulfills the following requirements et al:

1. The design should be a shape, patterns or colors, or any combination thereof, of an article, which creates an aesthetic impression through the eye.
2. The design should be utilized industrially.
3. The design should have novelty.
4. The design should be innovative.
5. The design should not be liable to injure public order or morality.
6. The design should not be liable to create confusion with an article pertaining to another person’s business.
7. The design should not consist solely of a shape that is indispensable for securing functions of the article.
8. The design should not be identical with or similar to the prior filed design of another person.

 

> Office Action

When the JPO examiner finds any reason for refusal of registration, the examiner issues a preliminary notice of refusal. The initial term for responding to this notification is 3 months from the date of the issuance of the notification. Under the current practice, only a 1 month extension of this deadline is available.

 

> Argument and/or Amendment

An applicant may submit either an argument against a preliminary notice of refusal or an amendment that would nullify the reasons for refusal.

 

4) Registration

If the JPO examiner finds no reason for refusal of registration, the examiner issues a decision of grant of the design application. The applicant must pay the registration fee within 30 days from the issuance of the grant decision. Otherwise, the application will be dismissed. The registration fee, namely, the 1^st to 3^rd year annuities in a lump is 25,500 yen, which covers only the official fees.

The duration of a design registration (excluding a Related Design registration) is 20 years from the registration date, but the duration of a Related Design registration has the same duration as the Principal Design registration.

 

5) Appeal

If the design application is eventually refused by the examiner, regardless of submitted argument and/or amendment, the applicant can file an appeal before the Trial and Appeal Board of the JPO within 3 months from the issuance of the final refusal decision. The appeal deadline is NOT extendable.

 

6) Publication of Design Gazette

After registration, the design is published in the Design Gazette to inform the public of the establishment of the design right, but except for the design which the applicant requested that it be kept in secret for a period of less than 3 years from the registration date. There is NO opposition system under the current Japanese Design Law.

 

7) Invalidation trial

An invalidation trial is available to attempt to have a design registration cancelled. As a rule, any person can file an invalidation trial against the design registration based on a non-industrial utilization, lack of novelty, non-innovativeness, etc. An invalidation trial can be filed at any time after registration.

 

8) Annuity payment

4^th and subsequent year annuities must be paid by each payment due date. Even if no payment is made in time, late payment is still possible within a grace period of 6 months by paying a surcharge of double the amount of the usual annuity.

The annuity is 16,900 yen for each year from 4^th to 20^th year, which covers only the official fee.

 

9) Registered Design Notice

It is not compulsory to put a registered design symbol after the registered design. The use of registration design symbol will not give you any additional legal protection. Under the Japanese Design Law, a notice of design registration is done by displaying the phrase “Registered Design” and its registration number.

The circled capital letter “R” is not an official design registration notice in Japan, but it is commonly used in the marketplace.

 

10) Hague Agreement – The International Design System

Japan joined the Hague Agreement in May 2015. Accordingly, you can file an international application designating Japan to register a design.