Japanese Design Law

The information found or referenced herein is not intended to be legal advice or a substitute for obtaining legal advice from a licensed attorney.

Table of Contents

I. Who may apply for a design patent

II. Ownership rights

III. Representation

IV. Novelty, creativity and registerability

V. Partial design

VI. Set of articles

VII. Associated design

VIII. Application procedures

IX. Examination

X. Term of registration

XI. Assignment

XII. Infringement

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I. Who may apply for a design patent 6, 68(3)

A creator or his assignee may apply for a design patent in Japan. In the event that an assignee is the applicant, the application must include the name and the domicile or residence of the inventor, as well as the name of a person entitled to represent the assignee (if the assignee is a legal entity). A person who has neither a domicile nor residence in Japan may apply for and obtain a design patent if the country in which he has a domicile or residence grants reciprocal privileges to Japanese nationals, or if a treaty specifically grants such privileges.

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II. Ownership rights 20(1), 38

The owner of a design patent has the right to exclude others from manufacturing, assigning, leasing, or displaying for the purpose of assigning or leasing his design.

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III. Representation 6, 68(2), The Benrishi Law 22.2

An applicant who has his domicile or residence in Japan may represent himself before the Patent Office, or may be represented by a patent attorney ("benrishi"). Applicants who do not have a domicile or residence in Japan must appoint a patent administrator who has his domicile or residence in Japan and be represented by him. If a registrant does not have a domicile or residence in Japan, the domicile or residence of the patent administrator representing a registrant will be considered as a venue of the registrant when a patent litigation is filed.

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IV. Novelty, creativity and registerability. 3, 3.2, 4

A design which is known by the public or described in a publication in Japan or foreign countries or is similar to these designs can not obtain protection by design patent. The new law of 1998 sets higher standard concerning creativity than the old law. Under the new law, if the design can be easily created by a person skilled in the art based on shapes, patterns, or colors, either individually or in combinations thereof, which are widely known in Japan or abroad, such design is not eligible to design patent. As for registerability, designs which can not be registered include those which based solely upon the functions of an article or which might affect public order or morals .

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V. Partial design 2

The old law assumed that a design was inseparably related to an article. Thus, the old law did not give a patent to a partial design - a design for a part of an article. The new law of 1998 provides a partial design system which allows the registration of design of a part of an article.

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VI. Set of articles 8

Sets had been defined very restrictively under the old law, but the new law of 1998 lightened the restrictions. A table of the Design Patent Rule lists the categories of sets. A set should consist of two or more items which are used together. An example of a set is a tea set.

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VII. Associated design 10

Under the old law, an applicant might register a design (similar design) which resembles his own main registered design (principal design) at any time. The new law of 1998 changed this system. Associated designs which are similar to the principal design and applied for by the same applicant as the principal design may be registered if they are applied for on the same day as the main design is applied for. Whether the day of the applications is the same is decided by the first application dates if the priority based on the Paris convention is claimed.

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VIII. Application procedures 5, 6, 7, 10, Design Patent Rule

A separate application must be filed for each applicable class. Each application may have only one design. Only if the application relates to a set of items may more than one design be included. If an examiner determines that an application has two or more designs it may be divided. The filing date of the original application is preserved in properly filed divisional applications. On each application the date of submission, the names of the applicant and inventor, if different from applicant, must be stated along with his/her/their address(es). The applicant may submit a statement of the characteristics of his design if he wishes. Three sets of drawings on A4 paper depicting a front, rear, top plan, bottom plan, and both side views must be included in the application. All views should be on the same scale. The new law allows an applicant to submit drawings using Cabinet view and Cavalier view. If an applicant uses these newly admitted methods, the number of drawings may be reduced, but explanation regarding the drawings is required in the application. In lieu of drawings, color or black and white photographs may be submitted. If color photographs are submitted, it will be assumed that the colors shown are relevant to the design, thus in some cases limiting the scope of claims. If a representative has been retained, his/her name and address must also be stated [ along with a power of attorney]. If priority is being claimed, an officially certified copy of the application on which priority is claimed must also be submitted. Depending on the case, a certificate of nationality and a deed of assignment may also be required.

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IX. Examination

The Examination considers novelty, creativity and registerability. An accelerated examination can be obtained if: the applicant shows that he, or a licensee, has already utilized the design or prepared to utilize the design considerably; another party intends to use the design without his permission or has asked the applicant's permission to use the design; or another party has given the applicant warning of infringement which would be caused by the applicant's design.

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X. Term of Registration 21

The term of registration is fifteen years from the date of issuance.

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XI. Assignment

Assignment for design patents is the same as for utility patents. If the design has been assigned before filing and the Director-General requires it, only a Deed of assignment is required to be submitted. If the design is assigned during examination, a power of attorney from the assignee, a Deed of assignment with the assignor's signature, and a certificate of nationality from the assignee may be required to be submitted. If the design is assigned after the granting of a design patent, a Deed of assignment signed by the assignor, powers of attorney, and certificates of nationality from both the assignee and assignor are required to be submitted. A certificate or certificates of judicial person are required if either or both the assignee and the assignor are corporations.

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XII. Infringement 24, 38

When a party without authorization, manufactures, assigns, leases, displays for the purpose of assignment or lease, or imports, in the course of trade, the components to be used exclusively for the manufacture of an article to which a registered design has been applied for, or a design similar to the registered design, he has infringed. The scope of protection is determined based on the drawings or photographs of the design.