Design: Filing Requirements

Japanese Design Patent: Filing Requirements

Basic Filing Requirements

There are only two formal requirements in filing a design application, namely:
(1) the request for design registration which should indicate the name of the applicant and designer, and their respective nationalities and addresses; and
(2) drawings showing the front, back, left, right, top and bottom views of the article.

About drawings, furthermore please note the following.

-An applicant can omit a drawing which is symmetrical or identical to any other drawing to be filed at the same time.
-The each of the drawings should be; 150 mm wide x 113 mm long.
-Since the Japanese Patent Office (JPO) takes a firm attitude that a “Design” means the complete shape of an article, the drawings should, in principle, include six side views as the following. (In a partial design application, that is the same. We describe that later.)

How to make the Drawings

One Design Per Application Rule

A design application shall pertain to the design only of a single article. Multiple designs are not permitted in a single application.

As the exceptions of the above, we can suggest as the followings.
-If the shape of an article to which the design is applied varies according to the function of the article, the applicant can file a single application for the each important design applied to shapes which appear before, during and after the above-mentioned variation. (About some graphic symbols shown to the article, it is possible to be applicable to this case.)
-A single application may cover several articles as a set, provided the set is of a type listed under the Design Act Enforcement Rule 8, and each article may be said to contribute to the design as a whole and is registrable as a design.

Priority Claim

To obtain a grant of a priority claim, the applicant must file the application within six (6) months from the filing date of the first filed design application and submit a certified copy thereof within three (3) months from the filing date of the Japanese application. This period is likewise non-extendible.

Please note that the requirement to submit drawings showing the six (6) above views is absolute. Then, if the drawings pertaining to the first field application merely show the front view of the article and do not demonstrate the back, left, right, top and bottom views thereof, and if in Japanese application the applicant submits drawings showing all side views, in principle, the priority claim will be denied. In that case, we can suggest as the followings.
-If the applicant draws the back, left, right, top and bottom views by a broken line and files the partial design application, maybe the priority claim will be permitted. The article may be drawn simply since the design right as well as the claim for priority right will not pertain to the article itself.
-If the design or similar one (includes designed by the third party) has been not opened to the public during the first filing date and the Japanese filing date, the applicant can file the application without claiming the priority.
-However, even if in Japanese application the applicant newly adds the drawing of any view which can naturally lead from the other views indicated in drawings in the first application, the priority claim will be not denied.

Partial Design Application

An applicant can file an application for partial design. In that case, the applicant can use the broken lines, owing to disclose the environment related to the claimed design and to define the bounds of the claim.

Especially in Japan, please note the following.
-It is necessary to indicate the position, extent, and size of the partial design in the whole article. Namely, except for the claimed part, the applicant must make drawings showing the front, back, left, right, top and bottom view sides of the article by the broken lines. But, the applicant has only to draw the outline of the six sides thereof.

Term

Under the revised Design Act, the duration of a design right has been extended to twenty-five (25) years from the date of filing, from the previous duration of twenty (20) years from the date of registration.

Secret Design

The applicant may ask that the design be kept secret for a period designated in the written demand, which should not exceed three (3) years from the date of establishment of registration of the design right.

Filing Authority Requirements

A power of attorney (POA) is not required for filing a design application. However, the name of our firm is indicated as an attorney in the request for design registration, the JPO regards our firm as authorized by the applicant.
On the other side, the POA will be actually required by the JPO when certain records affecting the application or the ensuing design registration have to be made, i.e. change of name or address of the applicant/registrant, or assignment. Neither legalization nor notarization f the power of attorney is required.