- Design Act
Design Act
(Act No. 125 of April 13, 1959)
Chapter I General Provision
(Purpose)
Article 1 The purpose of this Act is, through promoting the protection and the utilization of designs, to encourage creation of designs, and thereby to contribute to the development of industry.
(Definition, etc.)
Article 2 (1) "Design" in this Act shall mean the shape, patterns or colors, or any combination thereof, of an article (including a part of an article, the same shall apply hereinafter except in Article 8), which creates an aesthetic impression through the eye.
(2) The shape, patterns or colors, or any combination thereof, of a part of an article as used in the preceding paragraph shall include those in a graphic image on a screen that is provided for use in the operation of the article (limited to the operations carried out in order to enable the article to perform its functions) and is displayed on the article itself or another article that is used with the article in an integrated manner.
(3) "Use" of a design in this Act shall mean the manufacturing, using, assigning, leasing, exporting or importing, or offering for assignment or lease (including displaying for the purpose of assignment or lease, the same shall apply hereinafter) of an article to the design.
(4) "Registered design" in this Act shall mean a design for which a design registration has been granted.
Chapter II Design Registrations and Applications for Design Registration
(Conditions for Design Registration)
Article 3 (1) A creator of a design that is industrially applicable may be entitled to obtain a design registration for the said design, except for the following:
(i) Designs that were publicly known in Japan or a foreign country, prior to the filing of the application for design registration;
(ii) Designs that were described in a distributed publication, or designs that were made publicly available through an electric telecommunication line in Japan or a foreign country, prior to the filing of the application for design registration; or
(iii) Designs similar to those prescribed in the preceding two items.
(2) Where, prior to the filing of the application for design registration, a person ordinarily skilled in the art of the design would have been able to easily create the design based on shape, patterns or colors, or any combination thereof that were publicly known in Japan or a foreign country, a design registration shall not be granted for such a design (except for designs prescribed in any of the items of the preceding paragraph), notwithstanding the preceding paragraph.
Article 3-2 Where a design in an application for design registration is identical with or similar to part of a design described in the statement in the application and drawing, photograph, model or specimen attached to the application of another application for design registration which has been filed prior to the date of filing of the said application and published after the filing of the said application in the design bulletin under Article 20(3) or Article 66(3) (hereinafter referred to in this Article as the "earlier application"), a design registration shall not be granted for such a design, notwithstanding paragraph (1) of the preceding Article; provided, however, that this shall not apply where the applicant of the said application and the applicant of the earlier application are the same person and the said application was filed before the date when the design bulletin in which the earlier application was published under Article 20(3) (except for a design bulletin in which the matters listed in Article 20(3)(iv) were published under Article 20(4)) was issued.
(Exception to lack of novelty of design)
Article 4 (1) In the case of a design which has fallen under item (i) or (ii) of Article 3(1) against the will of the person having the right to obtain a design registration, such a design shall be deemed not to have fallen under item (i) or (ii) of Article 3(1) for the purposes of Article 3(1) and (2) for any design in an application for design registration which has been filed by the said person within six months from the date on which the design first fell under either of those items.
(2) In the case of a design which has fallen under item (i) or (ii) of Article 3(1) as a result of an act of the person having the right to obtain a design registration, the preceding paragraph shall also apply for the purposes of Article 3(1) and (2) to any design in an application for design registration which has been filed by the said person within six months from the date on which the design first fell under either of those items.
(3) Any person seeking the application of the preceding paragraph shall submit to the Commissioner of the Patent Office, at the time of filing of the application for design registration, a document stating thereof and, within thirty days from the date of filing of the application for design registration, a document proving the fact that the design which has otherwise fallen under item (i) or (ii) of Article 3(1) is a design to which the preceding paragraph may be applicable.
(Unregistrable designs)
Article 5 Notwithstanding Article 3, the following designs shall not be registered.
(i) a design which is liable to injure public order or morality;
(ii) a design which is liable to create confusion with an article pertaining to another person's business; or
(iii) a design solely consisting of a shape that is indispensable for securing functions of the article.
(Application for design registration)
Article 6 (1) A person requesting a design registration shall submit to the Commissioner of the Patent Office an application stating the following matters and drawing depicting the design for which registration is requested:
(i) the name, and domicile or residence of the applicant for the design registration;
(ii) the name and domicile or residence of the creator of the design; and
(iii) the article to the design.
(2) Where so provided by an Ordinance of the Ministry of Economy, Trade and Industry, the applicant may submit photograph, model or specimen representing the design for which the registration is requested, in lieu of the drawing in the preceding paragraph. In such case, the applicant shall indicate in the application which among photograph, model and specimen is submitted.
(3) When neither the statement of the article to the design required under item (iii) of paragraph (1), nor the drawing, photograph or model attached to the application would enable a person ordinarily skilled in the art to which the design pertains to understand the material or size of the article, and by this reason such a person would not be able to recognize the design, the material or size of the article to the design shall be specified in the application.
(4) Where the shape, patterns or colors of the article to the design is changeable based on the function possessed by the article, if the applicant intends to request a design registration of the shapes, patterns or colors, or a combination thereof as it appears before, during and after the said change, he/she shall state such an intention and include an explanation of said function of the article in the application.
(5) Where colors of the design are applied to the drawing, photograph or model to be submitted under paragraph (1) or (2), the applicant may omit to apply either black or white to them.
(6) When the applicant omits to apply black or white under the preceding paragraph, the applicant shall state thereof in the application.
(7) Where the applicant submits the drawing depicting the design under paragraph (1) or the photograph or model representing the design under paragraph (2), if the whole or part of the article to the design is transparent, the applicant shall state thereof in the application.
(One application per design)
Article 7 An application for design registration 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.
(Design for a set of articles)
Article 8 Where two or more articles are used together and are specifically designated by an Ordinance of the Ministry of Economy, Trade and Industry (hereinafter referred to as a "Set of Articles"), if the Set of Articles is coordinated as a whole, an application for design registration may be filed as for one design, and the applicant may obtain a design registration, for designs for the articles that constitute the Set of Articles.
(Prior application)
Article 9 (1) Where two or more applications for design registration have been filed for identical or similar designs on different dates, only the applicant who filed the application for design registration on the earliest date shall be entitled to obtain a design registration for the design.
(2) Where two or more applications for design registration have been filed for identical or similar designs on the same date, only one applicant, who was selected by consultations between the applicants who filed the said applications, shall be entitled to obtain a design registration for the design. Where no agreement is reached by consultations or consultations are unable to be held, none of the applicants shall be entitled to obtain a design registration for the design.
(3) Where an application for design registration has been waived, withdrawn or dismissed, or where the examiner's decision or trial decision to the effect that an application for design registration is to be refused has become final and binding, the application for design registration shall, for the purpose of the preceding two paragraphs, be deemed never to have been filed; provided, however, that this shall not apply to the case where the examiner's decision or trial decision to the effect that the application for design registration is to be refused has become final and binding on the basis that the latter sentence of the preceding paragraph is applicable to said application for design registration.
(4) An application for design registration filed by a person who neither has created a design nor is the successor in title to the right to obtain a design registration shall, for the purpose of application of paragraphs (1) and (2), be deemed never to be an application for design registration.
(5) The Commissioner of the Patent Office shall, in the case of paragraph (2), order the applicants to hold consultations as specified under paragraph (2) and to report the result thereof, designating an adequate time limit.
(6) Where no report under the preceding paragraph is submitted within the time limit designated under said paragraph, the Commissioner of the Patent Office may deem that no agreement under paragraph (2) has been reached.
(Amendment of statement in the application or the drawing, etc., and change of gist)
Article 9-2 Where, after the registration establishing a design right, it is found that an amendment made to any statement in the application (excluding the statements listed in items (i) and (ii) of Article 6(1) and the statement made under Article 6(2), the same shall apply to Article 17-2(1) and Article 24(1).) or to the drawing, photograph model or specimen attached to the application has changed the gist thereof, the application for design registration shall be deemed to have been filed at the time of submission of the written amendment of proceedings therefor.
(Related designs)
Article 10 (1) Notwithstanding Article 9(1) or (2), an applicant for design registration may obtain design registration of a design that is similar to another design selected from the applicant's own designs either for which an application for design registration has been filed or for which design registration has been granted (hereinafter the selected design is referred to as the "Principal Design" and a design similar to it is referred to as a "Related Design"), if the filing date of the application for design registration of the Related Design (or when the application for design registration of the Related Design contains a priority claim under Article 43(1), 43-2(1) or 43-2(2) of the Patent Act (Act No. 121 of 1959) as applied mutatis mutandis under Article 15 of this Act, the filing date of the earliest application, the filing date of an application that is deemed to be the earliest application under Article 4.C(4) of the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, or the filing date of an application that is recognized as the earliest application under Article 4.(A)2 of the Paris Convention, hereinafter the same shall apply in this paragraph) is on or after the filing date of the application for design registration of the Principal Design and before the date when the design bulletin in which the application for design registration of the Principal Design is published under Article 20(3) (except for a design bulletin in which the matters listed in Article 20(3)(iv) were published under Article 20(4)) is issued.
(2) Where an exclusive license has been established for the design right of the Principal Design, a design registration shall not be granted to its Related Designs, notwithstanding the preceding paragraph.
(3) A design registration shall not be granted to a design that is similar only to a Related Design to be registered under paragraph (1).
(4) Where applications for design registration are filed for two or more Related Designs pertaining to the Principal Design, Article 9(1) or (2) shall not apply to these Related Designs.
(Division of applications for design registration)
Article 10-2 (1) An applicant for design registration may extract one or more new applications for design registration out of a single application for design registration containing two or more designs only while examination, trial or retrial of the application for design registration is pending.
(2) Where an application for design registration is divided under the preceding paragraph, the new application(s) for design registration shall be deemed to have been filed at the time of the filing of the original application; provided, however, that this shall not apply for the purposes of applications of Article 4(3) of this Act and Articles 43(1) and (2) of the Patent Act as applied mutatis mutandis under Article 15 of this Act (including the cases where they are applied mutatis mutandis pursuant to Article 43-2(3) of the Patent Act as applied mutatis mutandis pursuant to Article 15(1) of this Act).
(3) Where a new application for design registration is filed under paragraph (1), any statements or documents which have been submitted in relation to the original application for design registration and are required to be submitted in relation to the new application under Article 4(3) of this Act and Articles 43(1) and (2) of the Patent Act as applied mutatis mutandis under Article 15 of this Act (including the cases where they are applied mutatis mutandis pursuant to Article 43-2(3) of the Patent Act as applied mutatis mutandis pursuant to Article 15(1) of this Act) shall be deemed to have been submitted to the Commissioner of the Patent Office along with the new application for design registration.
Article 11 Deleted
Article 12 Deleted
(Conversion of application)
Article 13 (1) An applicant of a patent may convert the patent application into an application for design registration; provided, however, that this shall not apply after the expiration of 30 days from the date the certified copy of the examiner's initial decision to the effect that the patent application is to be refused has been served (including the case where it is deemed that service of such a certified copy is made under the provision of the Act on Special Provisions to the Procedure, etc. Relating to an Industrial Property Right (Act No.30 of 1990)).
(2) An applicant of a utility model registration may convert the application for a utility model registration into an application for design registration
(3) Where the period as provided in Article 121(1) of the Patent Act is extended under Article 4 of said Act, the period as provided in the proviso to paragraph (1) shall be deemed to have been extended only for that period as extended.
(4) Where an application is converted under paragraph (1) or (2), the original application shall be deemed to have been withdrawn.
(5) Articles 10-2(2) and (3) shall apply mutatis mutandis to the case of conversion of an application under paragraph (1) or (2).
(Special provisions on conversion of application concerning international applications under the Patent Cooperation Treaty)
Article 13-2 (1) An international application that has been deemed to be a patent application under Article 184-3(1) or 184-20(4) of the Patent Act may be converted to an application for design registration, only after the fees payable under Article 195(2) of said Act have been paid (or, in the case of an international application that is deemed to be a patent application under Article 184-20(4) of said Act, after the ruling as provided in 184-20(4) has been rendered), and, in the case of a Patent Application in Japanese Language under Article 184-6(2) of said Act, the procedures under Article 184-5(1) of said Act have been completed, or, in the case of a Patent Application in Foreign Language under Article 184-4(1) of said Act, the procedures under Articles 184-4(1) and 184-5(1) of said Act have been completed.
(2) An international application that has been deemed to be an application for utility model registration under Article 48-3(1) or 48-16(4) of the Utility Model Act (Act No. 123 of 1959) may be converted to an application for design registration, only after the fees payable under Article 54(2) of said Act have been paid (or, in the case of an international application that is deemed to be an application for utility model registration under Article 48-16(4) of said Act, after the ruling as provided in Article 48-16(4) has been rendered), and, in the case of a Utility Model Application in Japanese under Article 48-5(4) of said Act, the procedures under Article 48-5(1) of said Act have been completed, or, in the case of a Utility Model Application in Foreign Language under 48-4(1) of said Act, the procedures under Articles 48-4(1) and 48-5(1) of said Act have been completed.
(Secret design)
Article 14 (1) An applicant for design registration may request that the design be kept in secret for a period that shall be designated in the request and shall be no more than three years from the date of the registration establishing the design right.
(2) A person filing a request prescribed in the preceding paragraph shall submit to the Commissioner of the Patent Office, at the time of filing of the application for design registration or payment of registration fee for the first year under Article 42(1), a document stating the following:
(i) the name and domicile or residence of the applicant for design registration; and
(ii) the period for which the secrecy is requested.
(3) The applicant for design registration or the holder of design right may request extension or reduction of the period for which the secrecy is requested under paragraph (1).
(4) The Commissioner of the Patent Office shall disclose the design for which the secrecy is requested under paragraph (1) to persons other than the holder of the design right, when:
(i) consent of the holder of the design right to do so has been obtained;
(ii) so requested by a party or an intervenor of examination, trial, retrial or litigation relating to the design or a design identical with or similar to the design;
(iii) so requested by a court; or
(iv) so requested by an interested person who has submitted a document stating the name of the holder of the design right and the registration number and other documents required by an Ordinance of the Ministry of Economy, Trade and Industry.
(Application mutatis mutandis of provisions of the Patent Act)
Article 15 (1) Articles 38 (joint applications), 43(1) to (4) (procedures for a priority claim under the Paris Convention) and 43-2 (priority claims recognized under the Paris Convention) of the Patent Act shall apply mutatis mutandis to applications for design registration. In this case, the term "within one year and four months from the earliest of the following dates:" in Article 43(2) of said Act shall be deemed to be replaced with "within three months from the date of filing of the application for design registration."
(2) Article 33 and Article 34(1), (2) and (4) to (7) of the Patent Act (right to obtain patent) shall apply mutatis mutandis to the right to obtain the design registration.
(3) Article 35 (inventions by employees) of the Patent Act shall apply mutatis mutandis to creation of a design by an employee, an officer of a juridical person, or a national or local government employee.
Chapter III Examination
(Examination by examiner)
Article 16 The Commissioner of the Patent Office shall direct the examination of applications for design registration by an examiner.
(Examiner's decision of refusal)
Article 17 The examiner shall render an examiner's decision to the effect that an application for design registration is to be refused where the application for design registration falls under any of the following:
(i) the design in the application for design registration is not registrable under Article 3, 3-2, 5, 8, 9(1) or (2), 10(1) to (3) of this Act, Article 38 of the Patent Act as applied under Article 15(1) of this Act, or Article 25 of the Patent Act as applied under Article 68(3) of this Act;
(ii) the design in the application for design registration is not registrable under the provisions of any relevant treaty;
(iii) the application for design registration does not comply with the requirements under Article 7; and
(iv) where the applicant for design registration is not the creator of a design, the applicant has not succeeded to the right to obtain a design registration for the said design.