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Designs

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1. From client's request to filing

2. Applications from a foreign country to Japan: after filing, examination and decision of design registration

(1) Notification of reasons for refusal/Decision of refusal

(2) Decision of design registration

3. Others (Design)

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1. From client's request to filing

QWhat is necessary information when requesting the procedures to file a design application?
A
  1. Name of the article related to the design
  2. Drawings to identify the design (in principle, front, rear, left side, right side, plan and bottom views are required. If necessary to identify the design, perspective and/or cross-sectional views are also required.)
  3. Name and address of the creator of the design, and name and address of the applicant for the design registration
  4. "Name of Country", "Application No." and "Application Date" of the basic application if the priority right recognized under the Paris Convention is claimed.

We can prepare the above drawings and photos for our clients. The format of the drawings and photos suitable for design registration application in Japan might be different from that in a foreign country. We can prepare most suitable drawings and photos if the article itself or the sample thereof is provided by our clients. If the drawings are provided, we support preparation of appropriate drawings for filing a design registration application while advising whether or not the drawings are acceptable in Japan.

QIs there any way to appropriately file an application, in the case that the design was made public prior to filing an application by, for example, having sold the product consisting of the design according to the application?
AIn this case, in principle, the application is rejected due to the fact that the design was made public prior to filing (lack of novelty), thereby failing to obtain the design right. However, in the Japanese Design Act, even if the design was made public prior to filing, the fact that the design was made public can be exempted from rejection or invalidation in the case of applications subject to certain conditions. Such system is called the "exception to lack of novelty of design," which can be applied if the following conditions are satisfied:
  1. The application is filed within six months from the time when the design is made public.
  2. The form by which the design was made public satisfies certain conditions.
  3. The procedures required at the time of filing of an application are carried out.
For the detailed conditions for applying this system, please provide us with the information about the time and circumstances in which the design was made public for consultation with us.

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QIs there any system to be utilized when the characteristic point, which is different from the prior design, is limited to a specific part of the whole design?
AThere is a system called a Partial Design System. In the Japanese design practice, design rights are effective in not only the design for which an application was filed but also the design similar to the filed design. Particularly, we consider the Partial Design System should be utilized when the characteristic point that is different from the prior design is limited to the specific part of the whole design. If you consult with us, we can make a proposal on the concrete approach. Furthermore, we not only assist you in obtaining the right concerning the whole shape of an article to which the design is applied, but also eliminate partial copying of the design by a third party. We can make a proposal for the design registration application utilizing the Partial Design System for the purpose of acquisition and utilization of stronger rights.
QIs there any system to be utilized when a plurality of designs which are similar to each other are applied to one article?
AThere is a system called a Related Design System. If a regular design application is filed with respect to each of a plurality of designs which are similar to each other and applied to one article, some of the filed applications may be rejected depending on the order of filing among the plurality of applications. Use of the Related Design System allows exemption from the rejection. Filing of a plurality of design applications utilizing the Related Design System can broaden the effect of the design right to similar designs. Particularly, we consider this system should be utilized when filing a plurality of similar designs. If you consult with us, we can make a proposal on the concrete approach. Furthermore, we can assist you to acquire a wider range of rights by proposing designs similar to your design so as to enable filing a plurality of design applications utilizing the Related Design System.

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2. Applications from a foreign country to Japan: after filing, examination and decision of design registration

(1) Notification of reasons for refusal/Decision of refusal

QWhen should the notification of reasons for refusal and the decision of refusal be responded?
AWith respect to the notification of reasons for refusal issued to an application from a foreign country to Japan, a written argument and an amendment can be submitted within three months from the mailing date of such notification. (The period for responding to the notification of reasons for refusal can be extended up to one month by filing a request for extension of time with the JPO within the period for response to the notification.) In response to the decision of refusal in an application from a foreign country to Japan, an amendment can be filed together with a request for appeal against decision of refusal within four months from the mailing date of the decision. However, the summary (the concrete content of the design directly drawn from the description and drawings of the application form based on the common knowledge in the field the design belongs to) cannot be changed by the amendment.

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(2) Decision of design registration

QIs there any matter to be noted when the decision of design registration is issued?
AUpon issuance of the decision, the registration fee for the first year has to be paid within 30 days from the mailing date of the decision. (If such payment fails, the application for design registration is dismissed. Late payment of the registration fee is not acceptable.) Once the registration fee has been paid and the design has been registered, the design registration is announced in the design gazette.

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3. Others (Design)

QWhen should a Power of Attorney be submitted?
ASubmission of a Power of Attorney is not required at the time of filing of the application. However, if it is required by the JPO, it has to be submitted. For example, if a Power of Attorney is not submitted when the agent is entrusted with the disadvantageous action stipulated in the Japanese Patent Act Article 9, the JPO will order the submission of a Power of Attorney later. If the Power of Attorney is not submitted in response to the order, the registration procedure is dismissed in principle.
QPlease explain about official fees.
APlease refer to the information described in the following link.

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