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Design Law
(Law No. 125 of April 13, 1959, as amended)"
-CONTENTS-
Chapter I
Chapter II
Chapter III
Chapter IV
Part 1
Part 2
Part 3
Chapter V
Chapter VI
Chapter VII
Chapter VIII
General Provisions (Sections 1 and 2) .
Design Registration and Applications
Therefor (Sections 3 to 15) .
The Examination (Sections 16 to 19) .
The Design Right
The Design Right (Sections 20 to 36) .
Infringement (Sections 37 to 41) .
Annual Fees (Sections 42 to 45) .
Trial (Sections 46 to 52) .
Retrial and Litigation (Sections 53 to 60 bis) .
Miscellaneous Provisions {Sections 60ter to 68) .
Penal Provisions (Sections 69 to 77) .
Supplementary Provisions .
Attached Table .
* By Law No. 140 of 1962, Law No. 161 of 1962, Law No. 148·of 1964, Law No. 91 of 1970, Law No. 96 of 1971, Law No. 46 of 1975, Law No. 27 of 1978, Law No. 30 of 1978, Law No. 45 of 1981, Law No. 23 of 1984, Law No..24 of 1984, Law No. 41 of 1985, Law No. 27 of 1987, Law No. 30 of 1990, Law No. 26 of 1993, Law No. 89 of 1993, Law No. 116 of 1994, Law No. 68 of 1996, Law No. 51 of 1998, Law No.41 of 1999, Law No. 43 of 1999, Law No. 160 of 1999, Law No. 220 of 1999, Law No. 24 of2002 and Law No. 47 of2003.
[ENTRY INTO FORCE: January 1,2004]
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Design Law
Chapter I - General Provisions
(Purpose)
1. - The purpose of this Law shall be to encourage the creation of designs by promoting their protection and utilization so as to contribute to the development of industry.
(Definitions)
2. - (1) "Design" in this-Law means a shape, pattern. or color or any combination thereof in an article (including part of an article - hereinafter the same except in Section· 8) which produces an aesthetic impression on the sense of sight.
(2) "Registered design" in this Law means a design for which a design registration has been effected.
(3) "Working" ofa design in this Law means any act of manufacturing, using.iassigning, leasing, importing or offering for assignment or lease (including displaying, for the purpose of assignment or lease - hereinafter the same) of articles to which the design has been applied.
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Chapter II - Design Registration and Applications Therefor
(Registrability of designs)
3. - (1) Any person who has created a design capable of being used in industrial manufac- turemay obtain a.design registration therefor, except in the case of the followingdesigns:
(i) designs which were publicly known in Japan or elsewhere prior to the filing of the de- sign application;
(ii) d.esigns which were described in a publication distributed or made a vailable to the public through electric telecommunication lines in Japan or elsewhere prior to the filing of the design application;
(iii) designs which are similar to those referred to in the preceding two paragraphs.
(2) Where a design could easily have been created, prior to the filing of the design appli- cation, by a person with ordinary skill in the art to which the design pertains, on the basis of a shape, pattern or color or any combination thereof publicly known in Japan or overseas (other than a design referred to in any of the paragraphs of the preceding subsection), a design regis- tration shall not be effected for such a design, notwithstanding the preceding subsection.
3b iS(3-2). - Where a design in an application for design registration is identical with or similar to part of a design stated in the request or represented in a drawing, photograph, model or sample attached to the request of another application for design registration which was filed prior to the filing date of the design .application and· for which the publication in the Design Gazette under Section 20(3) or 66(3) was made after the date of filing of the said application, a design registration shall not be effected for such a design, notwithstanding Section 3( 1).
(Exceptions to lack of novelty of design)
4. - (1) In the case of a design which has fallen under Section 3(1)(i) or (ii) 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 of Section 3(1)(i) or (ii) in the application of Section 3(1) and (2) to the design claimed in the application for design registration which has been filed by that person within six months from the dateon which the design first fell under those paragraphs.
(2) In the case of a design which has fallen under Section 3(l)(i) or (ii) due to an act on the part of the person having the right to obtain a design registration, the same shall also apply to the application of Section 3(1) and (2) to the design claimed in the application for design registration which has been filed by such person within six months from the date on which the design first fell under those paragraphs.
(3) Any person who desires the a pplication of the preceding su bsection s hall submit a written statement to that effect to the Commissioner of the Patent Office simultaneously with the application for design registration and also submit to the Commissioner of the Patent Office a document proving that the design which has fallen under Section 3(1)(i) or (ii) is a design to which the preceding subsection may be applied, within 14 days of the filing of the application for design registration.
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(Unregistrable designs)
5. - A design registration shall not be effected for the following designs, notwithstanding Section 3:
(i) designs liable to contravene public order or morality; (ii) designs liable to give rise to confusion with respect to articles connected with any
other person's business; (iii) designs composed of only shapes indispensable to secure the functions of an article.
(Applications for design registration)
6~ - (1) Any person desiring a design registration shall submit a request to the Commis- sioner of the Patent Office, together with a drawing of the design for which registration is sought, stating the following:
(i) the name and the domicile or residence of the applicant for design registration; (ii) the name and the domicile or residence of the creator of the design; (iii) the article or articles to which the design is applied.
(2) Whenever an ordinance of the Ministry of Economy, Trade and Industry so prescribes, a photograph, model or sample of the design for which registration is sought may be submitted instead of the drawing referred to in the preceding: subsection. In such a case, the fact that a photograph, model or sample has been submitted shall be noted in the request.
(3) Where the statement referredto in subsection 1(iii) concerning the article or articles to which the design is applied, or of which' the drawing, photograph or model is attached to the request, is not such as to enable a person with ordinary skill in the art to which the design pertains to visualize the material or dimensions of the article or articles to which the design is applied, so that such a person is unable to recognize the design, t he material or dimensions referred to shall be stated in the request.
(4) Where the shape, pattern or color of an article to which the design is applied varies ac- cording to the function that the article possesses and where registration is sought for the shape, pattern 0 r color 0 rae ombination t hereof a s it appears before, during a nd after t he variation referred to, the request shall contain a statement to that effect as well as an explanation concern- ing the said function of the article.
(5) When the colors of the design are applied on the drawing, photograph or model sub- mitted under subsection (1) or (2), any parts that ·are white or black need not be colored.
(6) Where parts are not colored, in accordance with the preceding subsection, the request shall contain a statement to that effect.
(7) In the case of the drawing of a design submitted under subsection (1) or the photo- graph or model submitted under subsection (2); where the whole or part of the article to which the design has been applied is transparent, the request shall contain a statement to that effect.
(Unity of design)
7. - An application for design registration shall relate to a single design corresponding to
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an a rticle in the c lasses of articles prescribed by an ordinance of the Ministry of Economy, Trade and Industry.
(Design of a set of articles)
8. - In the case of a design of two or more articles that are used together as a set of arti- cles, forming the articles prescribed by an ordinance of the Ministry of Economy, Trade and Industry (hereinafter referred to as a "set of articles"), an application for design registration may be made as for one design, provided that the set of articles is coordinated as a whole.
(First-to-fiJe rule)
9. - (1) Where two or more design applications relating to the same or a similar design are filed on different dates, only the first applicant may obtain a design registration for the design.
(2) Where two or more design applications relating to the same or a similar design are filed on the same date, only one such applicant, agreed upon after mutual consultation among all the applicants, may obtain a design registration for the design. Ifno agreement is reached or no consultation is possible, none of the applicants shall obtain a design registration for the design.
(3) Where a design application is abandoned, withdrawn or dismissed or where an exam- iner's decision or trial decision that a design application is to be refused has become' final and conclusive, such application shall, for the purpose of subsections (2) and (3), be deemed' never to have been made. However, this provision shaIl not apply where an examiner's decision or a. trial decision that the design application is to be refused under the last sentence of subsection (2) becomes final and conclusive.
(4) A design application filed by a person who is neither the creator of the design nor the successor in title to the right to obtain a design registration shall, for the purposes of subsections (1) and (2), be deemed not to be a design application.
(5) The Commissioner of the Patent Office shall, in the case of subsection (2), order the applicants to hold consultations for an agreement under that subsection and to report the result thereof, within an adequate time limit,
(6) Where the report under the preceding subsection .is not made within the time limit des- ignated in accordance with that subsection, the Commissioner of the Patent Office may deem that no agreement under subsection (2) has been reached.
(Amendment of statement in a request or of drawings, etc., and change of gist)
9b iS(9-2). - Where, after registration of the establishment of the design right, it is found that an amendment of the statement in the request (excluding matters listed in Section 6(l)(i) and (ii) and matters described under Section 6(2) - the same in Sections 17bis(17-2)(1) and 24) or of drawings, photographs, models or samples attached to the request has changed the gist thereof, the design application shall be deemed to have been filed atthe time when the amend- ment in writing was submitted.
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(Related' designs)
10. - (1) Notwithstanding Section 9(2), an applicant for design registration may obtain registration of a design which is similar to a principal design (meaning one design selected from designs in his own design applications} (hereinafter referred to as a "related design"), provided that the filing date of the application for the principal design [in the case of a design application containing a priority claim under Section 43(1) or Section 43bis(43-2)(1) or (2) of the Patent Law (Law No. 121 of 1959) as applied under Section 15 of this Law, the filing date of the first application or the application considered to be the first application in accordance with Article 4 C(4) or A(2) of the Paris' Convention (meaning the Paris Convention for the Protection of Industrial Property of March 20,1883, as revised at Brussels on December 14, 1900, at Wash- ington 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 an application recognized as the first application in accordance with Article A(2) of the Paris Convention (hereinafter the same in this subsection)] is the same as. the filing date of the application for the registration of that related design.
(2) A design registration shall not be effected for a design that is similar only to a related design to be registered under the preceding subsection.
(3) Where t here are two 0 r more design applications for r elated' designs r elating to the principal design, Section 9(2) shall not apply to these related designs.
(Division of design applications)
1ObiS(l 0-2). - (1 )·A n a pplicant for design registration may divide a design application comprising two or more designs' into 0 ne or more new design' a pplications, a nly during the pendency of the application inexamination, trial or retrial.
(2) Where a design application has been divided under the preceding subsection, the new design application shall be deemed to have been filed at the time of filing.of the original appli- cation. However, this provision shall not apply for the purposes of Section 4(3) of this Law and Section 43(1) and (2) of the Patent Law as applied under Section 15.(1) of this Law (including' its application under Section 43bis(43-2)(3) of the Patent Law as appliedunder Section 15(1) of this Law). -
(3) Where the new.application for design registration under subsection (1) is filed, any statements or documents which have been submitted with respect to the· original application for design registration and which shall be submitted with respect to the new application for design registration in accordance with Section 4(3) of this Law or Section 43(1) and (2) of the Patent Law as applied under Section 15(1) of this Law (including its application under 43bis(43-2)(3) of the Patent Law as applied under Section 15(1) of this Law), shall be deemed to have been submitted to the Commissioner of the Patent Office simultaneously with the said new applica- tion for design registration.
11. - Deleted
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12. - Deleted
(Conversion of applications)
13. - (1) An applicant for patent may convert his application into a design application. However, this provision shall not apply after 30 days from, the transmittal of the examiner's first, decision [including the transmittal thereof deemed to have been made under the Law on Special Provisions for Procedures, etc. relating to Industrial Property (Law No. 300f 1990)] that the patent application-is to be refused.
(2) An applicant for utility model registration may convert his application into a design application.
(3) The period prescribed in the proviso to subsection (1) shall, when the time limit pre- scribed in Section 121(1) of the Patent Law has been extended in accordance with Section 4 of that Law, be deemed to have been extended only for that period as extended.
(4) Where the conversion of an application- is made under subsection (1) or (2), the origi- nal application shall be deemed to have bean withdrawn.
(5) Section 10bis(IO-2)(2) and (3) shall apply mutatis mutandis to the conversion ofan application under subsection (1) or (2).
(Special provisions concerning conversion of applications under the Patent Coopera- tion Treaty)
13bis(13-2). - (1) Conversion of an international application having been deemed a patent application under Section 184ter(184-3)(I) or 184vicies(184-20)(4) of the Patent Law into a design application may not be made until, in respect ofa Japanese language patent application referred to in Section 184sexies( 184-6)(2) of the Patent Law, after the proceeding under Section 184quinquies(184-5)(1) of the Patent Law- has been taken, and in respect of a foreign language patent application referred to in Section 184quater(184_-4)(I) of the Patent Law, after the pro- ceedings under the .said subsection and Section 184quinquies( 184-5)(1) of the Patent Law have been taken and, further, after the fee to be-paid under Section 195(2) of the Patent Law has been paid (or - in respect of an international application having been deemed- a patent application under Section 184vicies(184-20)(4) of the Patent Law - after the decision referred to in the said subsection has been made).
(2) Conversion of an -international application having been deemed a utility model appli- cation under Section 48ter(48-3)(l) or 48sedecies(48-16)(4) of the Utility Model Law (Law No. 123 of 1959) into a design application may not be made until, in respect of a Japanese language utility model application referred to in Section 4Squinquies(48-5)(4) of the UtilityModel Law, after the proceeding under Section 48quinquies(48-5)(1) of the Utility Model Law has been taken, and in respect of a foreign language utility model application referred to in Section 48quater(48- 4)(1) 0 ft he Utility Model Law, a fief t he proceedings under t he said subsection and Section 48quinquies(48-5)(I) of the Utility Model Law have been taken and, further, after the fee to be paid under Section 54(2) of the Utility Model Law has been paid (or - in respect of an interna- tional application having been deemed a utility model application under Section 48sedecies(48-
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16)(4) of the Utility Model Law - after the decision referred to in the said subsection has been made).
(Secret designs)
14. - (1) An applicant for design registration may' demand that the design be kept secret for a period which shall be designated in the demand and shall not exceed three years from the date on which the establishment of the design right was registered.
(2) A person who desires to make that demand under the preceding subsection shall, at the time of filing the design application, submit to the Commissioner of the Patent Office a docu- ment stating the following:
(i) the name and the domicile or residence of the applicant for design registration; (ii) the period for which secrecy is demanded.
'(3) An applicant for design registration or the owner ofa design right may extend' or re- duce the period for which secrecy is demanded under subsection (1).
(4) In any of the following cases, the Commissioner of the Patent Office shall allow per- sons other than the owner of the design right to have access to a design for which secrecy has been demanded under subsection (1):
(i) when the consent of the owner of the design right has been obtained; (ii) when so requested by a party or an intervenor in the examination, trial, retrial or litiga-
tion relating to the design or any identical or similar design; (iii) when so requested by a court; (iv) when so requested by an interested person submitting to the Commissioner of the Pat-
ent Office a document. stating the name of the owner of the design right and the registration number and other documents prescribed by an ordinance of the Ministry of Economy, Trade and Industry.
(Application mutatis mutandis of Patent Law)
15. - (1) Sections 38, 43(1) to (4) and 43 bis(43-2) of the Patent Law shall apply mutatis mutandis to design applications. In ·such a case, "within one year and four months from the earliest date among the dates given in each of the following paragraphs" in Section 43(2) of the Patent Law shall read "within three months from the filing dateofthe design application".
(2) Sections 33 and 34(1), (2) and (4) to (7) of the Patent Law shall apply mutatis mutan- dis to the right to obtain a design registration.
(3) Section 35 of the Patent Law shall apply mutatis mutandis to the creation of a design by an employee, an executive officer of a legal entity or a national or local public official.
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Chapter III - The Examination
(Examination by examiner)
16. - The Commissioner of the Patent Office shall have an application for design registra- tion examined by an examiner.
(Examiner's decision of refusal)
17. - The examiner shall make a decision that a design application is to be refused where it falls under any of the following paragraphs: -,
(i) the design in the design application is not registrable in accordance with Section 3, 3bis(3-2), 5, 8,9(1) or (2) or 10(1) or (2) of this Law, Section 38 of the Patent Law - as applied under Section 15(1) of this Law - or Section 25 of the Patent Law as applied under Section 68(3) of this Law;
(ii) the design in the design application is not registrable in accordance with a treaty; (iii) the design application does not comply with Section 7; (iv) the applicant for design registration who is not the creator of the design has not suc-
ceeded to the right to obtain registration for the design concerned.
(Declining of amendments)
17bis(17-2). - (1) Where an amendment of the statement in the request or of the drawings, the photographs, models or samples attached to the request would change the gist thereof, the examiner shall decline the amendment by a ruling.
(2) The ruling to decline an amendment under the preceding subsection shall be in writing and state the reasons therefor.
(3) Where a ruling to decline an amendment under subsection (1) has been rendered, the examiner's decision with respect to the design application shall not be rendered before the expiration of 30 days from the transmittal of that ruling.
(4) Where an applicant has demanded an appeal trial against a ruling to decline an amendment under subsection (1), the examiner shall suspend the examination of the design application until the trial decision has become final and conclusive.
(New application for design as amended)
17ter(17-3). - (.1) Where an applicant for design registration has filed a new design appli- cation for the design as amended within 30 days from the transmittal of a ruling to decline an amendment under Section 17bis(17-2)(l), the design application shall be deemed to have been filed at the time of submission of that amendment.
(2) Where a new design application referred to in the preceding subsection has been filed, the original design application shall be deemed withdrawn.
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(3) The preceding two subsections shall be applicable only where the applicant has sub- mitted, at the same time as the new design application, a statement to the Commissioner of the Patent Office indicating his desire for the application of subsection (1) to the new design appli- cation referred to in that subsection.
17quater(17-4). - (1) The Commissioner of the Patent Office may, for the benefit of a per- son residing in a place that is remote or difficult of access, extend upon request or ex officio the period prescribed in Section 17ter(17-3)(I).
(2) The trial examiner-in-chief may, for the benefit of a person residing in a place that is remote or difficult of access, extend upon request or ex officio the period prescribed in Section 17ter(17-3)(1) as applied under Section 50(1) (including its application under Section 57(1».
(Decision to register design)
18. - Where the examiner finds no reason.for refusing a design application, he shall make a decision that the design is to be registered.
(Application mutatis mutandis of Patent Law).
19. - Sections 47(2), 48,50,52 and 54 of the Patent Law shall apply mutatis mutandis to the examination of design applications.
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Chapter IV - The Design Right
1. The Design-Right
(Registration of establishment of design right)
20. - (1) A design right shall come into force upon registration of its establishment.
(2) The establishment of a design right shall be registered when the annual fee for the first year under Section 42(1)(i) has been paid.
(3) When registration under the preceding subsection has been effected, the following shall be published in the Design Gazette (Isho Koho};
(i) the name and the domicile or residence of the owner of the design right; (ii) the number and the date ofthe design application; (iii) the registration number and the date of registration of the establishment; (iv) the contents of the request and the drawing, photograph, model or sample attached to
the request; (v) necessary matters other than those listed in the preceding paragraphs.
(4) In the case of a design for which secrecy has been demanded under Section 14( 1), the matters referred to in paragraph (iv) of the preceding subsection shall, notwithstanding Section 14(1), be published immediately after the period designated- under Section 14(1) has expired.
(Term of design right)
21. - (1)- The term of a design right (excluding a right of a related design) shall be 15 years from the date of registration of its establishment,
(2) The term ofa right of a-related design shall be 15 years. from the date of registration of the principal design right.
(Effects of design rights)
22. - (1) Rights of a principal design and a related design relating thereto may not be transferred independently.
(2) Where a principal design right is extinguished under Section 44(4), is surrendered, or a trial decision to invalidate has become final and conclusive, the right of the related design relating to the principal design may not be transferred independently.
(Effects of design right)
23. - The owner of a design right shall have an exclusive right to commercially work the registered design and designs similar thereto. However, where the design right is the subject of an exclusive license, this provision shall not apply to the extent that-the exclusive licensee has an exclusive right to 'work the registered design and designs similar thereto.
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(Scope of registered design)
24. - The scope of a registered design shall be decided on the basis of the statement in the request and the design represented in the drawing attached to the request or shown in the photo- graph, model or sample attached to the request.
25. - (1) A request for interpretation may be made to the Patent Office with respect to the scope of a registered design and designs similar thereto.
(2) Where such a request is made, the Commissioner of the Patent Office shall designate three trial examiners to give the requested interpretation.
(3) Section 71(3) and (4) of the Patent Law shall apply mutatis mutandis to the interpreta- tion under subsection (1).
25biS(25-2). - ( 1) W here the Commissioner 0 f the Patent 0 ffice is commissioned by a court tog ive a n expert a pinion with respect to the sc ope 0 far egistered design and designs similar thereto, he shall appoint three trial examiners to give the opinion.
(2) Section 71bis(71-2)(2) of the Patent Law shall apply mutatis mutandis to the commis- sion therefor under the preceding subsection.
(Relationship with another's registered design, etc.)
26. - (1) When a registered design would utilize another person's registered design or de- sign similar thereto, patented invention 0 r registered utility model under a n application filed prior to the filing date of the design application concerned, or when the part of a design right relating to the registered design conflicts with another person's patent, utility model or trade- mark right under an application filed prior to the filing date of the design application concerned, or conflicts with another person's copyright taking effect prior to that date, the owner of the design right, exclusive licensee or non-exclusive licensee shall not commercially work the registered design.
(2) When a design similar to a registered design would utilize another person's registered design or design similar thereto, patented invention or registered utility model under an applica- tion filed prior to the filing date of the design application .concerned, or when the part of a design right relating to designs similar to the registered design conflicts with another person's design, patent, utility model or trademark right under an application filed prior to the filing date of the design application concerned, or conflicts with another person's copyright taking effect prior to that date, the owner of the design right, exclusive licensee or non-exclusive licensee shall not commercially work the design similar to the registered design.
(Exclusive licenses)
27. - (1) The owner of a design right may grant an exclusive license on the design right. The exclusive license on a right of a principal design or rights of related designs may be granted
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only where the exclusive license on the right of the principaldesign and the rights of all related designs relating thereto is granted simultaneously to the same party.
(2) An exclusive licensee shall have an exclusive right to commercially work the regis- tered design and designs similar thereto to the.extent laid down in the license contract.
(3) Where the design right of a principal design is extinguished under Section 44(4), is surrendered, or a trial decision to invalidate becomes final and conclusive, the exclusive license on the rights of related designs may be granted only where the exclusive license on the rights of all related designs is granted simultaneously to the same party.
(4) Sections 77(3) to (5),97(2) and 98(1)(ii) and (2) of the Patent Lawshall apply mutatis mutandis to exclusive licenses.
(Non-exclusive licenses)
28. - (1) The owner ofa design right may grant a non-exclusive. license on such right.
(2) A non-exclusive licensee shall have the right to commercially work the registered de- sign and designs similar thereto to the extent prescribed in this Law or laid down in the license contract.
(3) Sections 73(1), 97(3) and 99 of the Patent Law shall apply mutatis mutandis to non- exclusive licenses. In such a case "Section 79" in subsection (2) of the same section shall read "Section 29 or 29bis(29-2) of the Design Law".
(Non-exclusive license by virtue of prior use)
29. - Where, without knowledge of a design in a design application, a person has created the design or a design similar thereto by himself or, without knowledge of the design in the design application, has learnt the design from another person who has created the design or the design si milar thereto, and has been commercially working the design or t he design similar thereto or has been making preparations therefor in Japan at the time of filing of the design application or at the time offiling of the original design application or ofsubmission ofan amendment when the design application is deemed to have been filed at the time of submission of the amendment in accordance with Section 9bis(9-2) of this Law or in accordance with Sec- tion 17ter(17-3)(1) (including its application under Section 50(1) (including its application under Section 57(1) of this Law)), such person shall have a non-exclusive licens.e on the design right under the design application limited, to the extent of the design which is being worked or for which preparations for working are being made and to the purpose of such working or the preparations therefor.
(Non-exclusive license by virtue of preceding application)
29bis(29-2). - Where, without knowledge of a design in a design application, a person has created the design or a design similar thereto by himself or has learnt the design from another person who has created the design or the design similar thereto, without knowledge of the design in the design application and has been commercially workingthe design or the design
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siinilar thereto or has been making preparations therefor in Japan at the time of registration of the establishment of the design right under the design application, su ch person "( excluding a person falling under Section 29) shall have a non-exclusive license on the design right limited to the extent of the design which is being worked or for which preparations for working are being made and to the purpose of such working provided that each of the following is satisfied:
(i) that the person has filed, prior to the filing date of the design application, a design ap- plication with respect to his own design or the design similar thereto and has been commercially working the design or making preparations therefor; and
(ii) that the person has received; with respect to his own design application referred to in the preceding paragraph, an examiner's decision or a trial decision to the effect that the design in the design application falls under any of the paragraphs of Section 3(1) and the application is to be refused, and such decision has become final and conclusive.
(Non-exclusive license due to working prior to registration of demand for invalida- tion trial)
30. - (1) When a person who falls under any of the following paragraphs and has been commercially working a design or design similar thereto in Japan or has been making prepara- tions therefor, prior to the registration of a demand for a design invalidation trial, without knowing that the design registration falls under any of the paragraphs of Section 48(1), such person shall have a non-exclusive license on the design right or the exclusive license existing at the time when the design registration was invalidated, such non-exclusive license being limited to the design which is being worked or for which preparations for working are being made and to the purpose of such working or the preparations therefor;
(i) the original owner of the design right where one of two or more design registrations granted for the same or a similar design has been invalidated;
(ii) the original owner of the design right, where. his design registration has been invali- dated and a design registration for the same or a similar design has been granted to the person entitled;
(iii) in the case referred to in the, preceding two paragraphs, a person who, at the time of registration of the demand for a design invalidation trial, has an exclusive license on the design right that has been invalidated or a non-exclusive license which is effective, under Section 99(1) of the Patent Law as applied under Section 28(3) of this Law, against the design right or the exclusive license.
(2) The owner of the design right or the exclusive licensee shall have a right to a reasonable remuneration as consideration for the non-exclusive license under the preceding subsection.
(Non-exclusive license after expiration of design right, etc.)
31. - (1) Where one design application was filed prior to or on the filing date of another design application and part of the design right (relating to designs similar to the registered design concerned) under the first-mentioned application conflicts with the design right under the other application and the term of the first-mentioned design right has expired, the owner of the original design right shall, to the extent of such right, have a non-exclusive license on the
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other design right or the exclusive license existing at the time when his design right has expired.
(2) Where a patent right' or a utility model right under an application filed prior to or on the filing date of a design application conflicts with the design right under that application, the preceding subsection shall apply mutatis mutandis wherethe term of the patent right or utility model right has expired.
32. - (1) Where one design. application was filed prior to or on the filing date of another design application 'and part of the design right (relating to designs similar to the registered design concerned) under the first-mentioned application conflicts with the design right under the other application and the term. of the first-mentioned design right has expired, a person who, at the time of expiration, has an exclusive license on the expired design right or a non-exclusive license which is effective under Section 99(1) of the Patent Law, as applied under Section 28(~) of this Law, against the expired design right or the exclusive license, shall, to the extent of the expired right, have a non-exclusive license on the other design right or on the exclusivelicense existing at the time when the first-mentioned design right has expired.
(2) Where a patent right or a utility model right under an application" filed prior to or on the filing date of a design application conflicts with the design right under that application, the preceding subsection shall apply mutatis mutandis where the term of the patent right or utility model right has' expired.
(3) The owner of the design right or the exclusive licensee shall have a right to a reason- able remuneration as consideration for the non-exclusive license under the preceding two subsections.
(Arbitration decision on grant of non-exclusive license)
33. - (1).Where a registered design or design similar thereto falls under any of the cases provided for in Section 26, the owner of the design right or the exclusive licensee may r.equest the other person referred to in that section to hold consultations on the grant of a non-exclusive license to work the registered design or the design similar thereto or of a non-exclusive license on the patent right or the' utility modelright.
(2) The other person referred to in Section 26 who has been requested tohold the consul- tations under the preceding subsection may request the owner of the design right or the exclu- sive 1icensee having requested the consultations to hold consultations ant he grant 0 f a non- exclusive license within the scope of the registered design which the owner of the design right or the exclusive licensee desires to work by obtaining the non-exclusivelicense on the design right, the patent right or the utility model right through the consultations requested by the owner of the design right or the exclusive licensee.
(3) If no agreement i s reached or n 0 consultation i s possible under su bsection (1), the owner of the design right or the exclusive licensee may request the Commissioner of the Patent Office for an arbitration decision.
(4) If no agreement is reached or no consultation is possible under subsection (2) and an arbitration under the preceding subsection is requested, the other person referred to in Section
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26 may request the Commissioner of the Patent Office for an arbitration decision only within the time limit which the Commissioner of the Patent Office designates as the time limit for the other person to submit a written reply in accordance with Section 84 of the.. Patent Law as applied under subsection (7).
(5) If, in the case of subsection (3) or the preceding subsection, the grant of a non- exclusive license would unduly injure the interests of the other person referred to in Section 26 or the owner of the design right or the exclusive licensee, the Commissioner of the Patent Office shall not render an arbitration decision ordering a non-exclusive license to be granted.
(6) In the case ofsubsection (4) in addition to the case provided for in the preceding sub- section, the Commissioner of the Patent Office shall not render an arbitration decision ordering a non-exclusive license to be granted if an arbitration decision ordering a non-exclusive license to be granted is not rendered with respect to the request for the arbitration decision under sub- section (3).
(7) Sections 84, 85(1) and 86 to 91bis(91-2) of the Patent Law shall apply mutatismutan- dis to arbitration under subsection j(3) or (4).
(Transfer, etc. of non-exclusive license)
34. - (1) A non-exclusive license, with the exception of one which results from an arbitra- tion under Section 33(3) or (4) of this Law, Section 92(3) of the Patent Law or Section 22(3) of the Utility Model Law, may be transferred, but only together with the business in which it is worked or only with the consent of the owner of the design right (or the owner and the exclu- sive licensee in the case of a non-exclusive license on an exclusive license) or in the case of inheritance or other general succession.
(2) A non-exclusive licensee may, except in the case of a non-exc.lusive license resulting from an arbitration under Section 33(3) OT"(4) of this Law, Section 92(3) of the Patent Law· or Section 22(3) of the Utility Model Law, establish a pledge on the non-exclusive licensebut only with the consent of the owner of the design right (or the owner and the exclusive licensee in the case of a non-exclusive license on an exclusive license).
(3) A non-exclusive license resulting from an arbitration under Section 33(3) of thisLaw, Section 92.(3) of the Patent Law or Section 22(3) of the Utility Model Law shall be transferred together with the design, patent 0 r utility model right to which t he non-exclusive 1icensee is entitled and which is transferred together with the business in which. it is worked and shall be extinguished at the time when such design, patent or utility model right has been transferred separately from the business in which it is worked or has been extinguished.
(4) A non-exclusive license resulting from an arbitration under Section 33(4) of this Law shall bet ransferred together with the design, patent 0 r utility model right to which the n on- exclusive licensee is entitled, and shall be extinguished at the time when such design, patent or utility model right has been extinguished.
(Pledges)
35. - (I) Where a design right or an exclusive or 'non-exclusive license is the subject of a
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pledge, the pledgee may not work the registered design or designs si milar t hereto except as otherwise provided by contract.
(2) Section 96 of the Patent Law shall apply mutatis mutandis to pledges on a design right, exclusive license or non-exclusive license.
(3) Section 98(1)(iii) and (2) of the Patent Law shall apply mutatis mutandis to pledges on a design right or exclusive license.
(4) Section 99(3) of the Patent Law shall apply mutatis mutandis to pledges on a non- exclusive license.
(Application mutatis mutandis of Patent Law)
36. - Sections 69(1) and (2), 73, 76, 97(1) and 98(1)(i) and (2) of the Patent Law shall ap- ply mutatis mutandis to design rights.
2. Infringement
(Injunctions)
37. - (1) The owner of a design right or exclusive licensee may require a per~on who is infringing or is likely to infringe the design right or exclusive license to discontinue or' refrain from such infringement.
(2) The owner of a design right or exclusive licensee who is acting under the preceding subsection may demandt he destruction 0 f t he articles by which t he act 0 f infringement was committed (including programs, etc. (meaning the programs, etc. as provided for in Section 2(4) of the Patent Law - hereinafter referred to as "programs, etc." in Section 38 of this Law); hereinafter the same), the removal 0 f t he facilities used for the act 0 f i nfiingement, 0 r 0 ther measures necessary to prevent the infringement.
(3) In the case of a design for which secrecy has been demanded under Section 14(1), the owner of the design right or exclusive licensee may not takethe action provided for in subsec- tion (I) until he has given a warning in the form of a document which states the matters referred to in each paragraph of Section 20(3) and which has been certified by the Commissioner of the Patent Office.
(Acts deemed to be infringement)
38. - Acts of manufacturing, assigning; etc. (meaning assigning and leasing; and includ- ing providing programs, etc. through electric telecommunication lines - hereinafter referred to as "assignment, etc."), or importing or offering for.assignment, etc. (including displaying for the purpose of assignment, etc. - hereinafter the same) of, in the course of trade, things to be used exclusively for the manufacture of the article to which the registered design or a design similar thereto has been applied shall be deemed to be an infringement of the design right or exclusive license.
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(Presumption, etc. of amount of damage)
39. - (1) Where the owner of a design right or exclusive licensee claims, from a person who has intentionally or negligently infringed the. design right or exclusive license, compensa- tion for damage caused to him by the infringement, and the person's act is the assignment of articles by which the act of the infringement was committed,. the· sum of money with the unit price of such articles multiplied by the number of articles (hereinafter referred to in this para- graph as the "number of assigned articles") which the owner of the design right or exclusive licensee could have sold in the absence of the infringement may be estimated as the amount of damage suffered by the owner of the design right or exclusive licensee within a limit not ex- ceeding an amount attainable depending on working capability of the owner of the design right or exclusive licensee. Where there is any circumstance that prevents the owner of the design right or exclusive licensee from selling part or the whole of the number of assigned articles, a sum equivalent to the number of assigned articles subject to that circumstance shall be deducted.
(2) Where the owner of a design right or exclusive licensee claims, from a person who has intentionally or negligently infringed the design right 0 r exclusive 1icense, compensation for damage caused to him by the infringement, the profits gained by the infringer through the infringement shall be presumed to be the amount of damage suffered by the owner or exclusive licensee.
(3) The owner of a design right or exclusive licensee may claim, from a person who has intentionally or negligently infringed the design right or exclusive license, an amount of money which he would be entitled to receive for the. working of the registered design or designs similar thereto, as the amount of damage suffered by him .
.(4) The preceding subsection shall not-preclude a claim to damages exceeding the amount referred to therein. In such a case, where there has been neither willfulness nor gross negli- gence on the part of the person who has infringed the design right or the exclusive license, the court may take this into consideration when awarding damages.
(Presumption of negligence)
40.. - A person who has infringed a design right or exclusive license of another person shall be presumed to have been negligent as far as the act of infringement is concerned. How- ever, this provision shall not apply with respect to the infringement of a design right or exclu- sive license relating to a design for which secrecy has been demanded under Section 14(1).
(Application mutatis mutandis of Patent Law)
41. - Sections l04bis(104-2) to 106 (obligation to clarify relevant act in concrete manner, production of documents, etc., expert opinion for proof of damage, award of reasonable dam- ages and measures for recovery of reputation) of the Patent Law shall apply mutatis mutandis to the infringement of a design or an exclusive license.
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3. Annual Fees
(Annual fees)
42. - (1) A person who obtains registration ofa design right or the owner ofa design right shall pay, as annual fees, the amount specified below, for each case and for each year until the expiration of the design right under Section 21:
(i) first to third year: 8,500 yen per annum; (ii) ·fourth to tenth year: 16,900 yen per annum; (iii) eleventh to fifteenth year: 33,800 yen per annum.
(2) The preceding subsection shall not apply to design right belonging to the State.
(3) Where the State or the person(s) other than the State jointly own a design right and there is an agreement with respect to their shares of the right, the annual fees under subsection (1), notwithstanding said subsection, shall be the sum multiplied by the ratios of their shares to the sum of annual fees under said subsection, and such sum shall be paid by the person(s) other than the State.
(4) Where the amount of the fees calculated in accordance with the preceding subsection has a fractional figure less than 10 yen, that fractional figure shall be discarded.
(5) The payment of the fees under subsection (1) shall be made by patent revenue stamps as prescribed by an ordinance of the Ministry of Economy, Trade and Industry. However, wherever so prescribed by an ordinance of the Ministry of Economy, Trade and Industry, such payment may be made in cash.
(Time limit for payment of annual fees)
43. - (1) The annual fee for the first year' under Section 42( 1)(i) shall be paid within 30 days from the transmittal of the examiner's decision or trial decision that the design registration is to be effected.
(2) The annual fees for the second and subsequent years under 'Section 42(1) shall be paid during the preceding year or prior thereto.
(3) Upon the request of a person liable to pay an annual or registration fee, the Commis- sioner of the Patent Office may extend the period prescribed in subsection (1) by a period not exceeding 30 days.
(Late payment of annual fees)
44. - (1) Where the owner of adesign right is unable to pay an annual fee within the time limit prescribed in Section 43(2), he may pay the annual fee belatedly within six months from the expiration of that time limit.
(2) In the case of late payment of an annual fee in accordance with the preceding subsec- tion, the owner of the design right shall, in addition to the annual fee provided for in Section 42(1), pay a surcharge of the same amount as the annual fee.
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(3) The payment of the fee under the preceding subsection shall be made by patent reve- nues tamps as prescribed by an ordinance of the Ministry of Economy, Trade and Industry. However, wherever so prescribed by an ordinance of the Ministry of Economy, Trade and Industry, such payment maybe made in cash.
(4) Where the owner of a design· right fails to pay an annual fee and the surcharge under the preceding subsection within the time limit for late payment under subsection (2), the design right shall be deemed to have been extinguished retroactively from the moment that the time limit prescribed in Section 43(2) expired.
(Restoration of design right by late payment. of annual fees)
44bis(44-2). - (1)' Where the original owner of the design right which is deemed to have been extinguished under Section 44(4) is unable to. pay an annual fee and the surcharge pre- scribed in Section 4 4(~) within t he time limit within which he may pay the annual fee and surcharge belatedly under Section 44(1) due to reasons outside his control, he may pay the annual fee and surcharge belatedly but only within 14 days (where he is a resident abroad, within two months) and within six months after the expiration of the time limit.
(2) Where the annual feeand surcharge prescribed in subsection (1) are paid, such design right shall be deemed to have been maintained retroactively from' the time of the expiration of the time limit prescribed in Section 43(2).
(Restriction on effects of design right restored)
44ter(44-3). - (1) Where a design right has been restored under Section 44bis(44-2)(2), the effects of the design right shall not extend to a ny articles to which the registered design or design similar thereto has been applied and which was imported into, manufactured or acquired in Japan after the expiration of the time limit within which he may pay an annual fee belatedly under Section 44( 1) but before the registration of the restoration of the design right.
(2) The effects of a design right which has been restored under Section 4 4bis(44-2)(2) shall not extend to the following acts after the expiration of the time limit within which he may pay an annual fee belatedly under Section 44( I) but before the registration of the design:
(i) the working ofthe design or design similar thereto; (ii) acts of manufacturing, assigning, etc., importing or offering for assignment, etc. of,
things to be used exclusively for the manufacture of an article to which the registered design or design similar thereto has been applied.
(Application mutatis mutandis of Patent Law)
45. - Section 110 (payment of annual fees by' an interested person) and Section 111(1) [excluding (iii)] and (2) (refund of annual fees) of the Patent Law shall apply mutatis mutandis to the annual fees under this Law.
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Chapter V - Trial
(Appeal trial against examiner's refusal)
46. - (1) A person who has received the examiner's decision that his application is to be refused and is dissatisfied may demand an appeal trial against examiner's refusal within 30 days from the transmittal of the examiner's decision.
(2) Where, due to reasons outside his control, a person is unable to.demand an appeal trial against examiner's refusal within the time limit prescribed therein, he may, notwithstanding that subsection, make the demand within 14days (where he is a resident abroad, within two months) from the date when the reasons ceased to be applicable but not later than six months following the expiration of the said.time limit.
(Appeal trial against ruling to decline amendment)
47. - (1) A person who has received a ruling to decline an amendment under Section 17bis( 17-2)( I) 0 f this Law and is dissatisfied may demand a n appeal t rial a gainst a ruling' to decline an amendment within 30 days from the transmittal of the ruling. However, this provi- sion shall not apply when a new application for design registration has been filed under Section 17ter( 17-3)(1).
(2) Section 46(2) shall apply mutatis mutandis to the demand for an appeal trial against a ruling to decline an amendment.
(Design invalidation trial)
·48. - (1) Where a design registration falls under the requirements of any of the following paragraphs, a design invalidation trial may be demanded. for the invalidation of the design:
(i) where the registration has been effected contrary to Section 3, 3bis(2-2), 5, 9(1) or (2) or 10(2) or to Section 38 of the Patent Law. as applied under Section 15(1) of this Law or to Section 25 ofthe Patent Law as applied under Section 68(3) of this Law;
(ii) where the registration has been effected contrary to the provisions of a treaty; (iii) where the registration has been effected in respect of a design application filed by a
person who is not the creator of the designand has not succeeded to the right to obtain a design registration for the design concerned;
(iv) where, after the registration, the owner of the design right has become a person who can no longer enjoy such right under Section 25 of the Patent Law as applied under Section 68(3) of this Law or the registration no longer complies with a treaty.
(2) Any person may demand a design invalidation trial. However, a demand for the trial on the ground that a design registration falls under the preceding subsection (i) (limited to a design registration effected contrary to Section 38 of the Patent Law as applied under Section 15(1) of this Law) or said subsection (iii) may be demanded only by an interested person.
(3) Even after the extinguishment of a design right, a design invalidation trial may be de- manded.
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(4) Where a design invalidation trial has been demanded, the trial examiner-in-chief shall notify the exclusive licensee with respect to the design right and other persons who have any registered rights relating to the design registration.
49. - Where a trial decision that a design registration is to be invalidated has become final and conclusive, the design right s hall be deemed never to have existed. However, where a design registration fell under Section 48(1)(iv) and a trial decision that the registration is to be invalidated has become final and conclusive, the design right shall be deemed not to have existed from the time when the registration first fell under that paragraph.
(Application mutatis mutandis of provisions concerning examination)
50. - (1) Sections 17bis(17-2) and 17ter(17-3) shall apply mutatis mutandis to an appeal trial against examiner's refusal. In such a case, "has demanded an appeal trial against a ruling to decline an amendment" in Section 17bis(17-2)(4) shall read "has instituted an action under Section 59(1)".
(2) Section 18 shall apply mutatis mutandis where a demand for an appeal trial against examiner's refusal is considered acceptable. However, this provision shall not apply where a trial decision is rendered ordering a further examination in accordance with Section 160(1) of the Patent Law as applied under Section 52 of this Law.
(3) Section 50 of the Patent Law shall apply mutatis mutandis where a reason for refusal not contained in the examiner's decision is found in an appeal trial against examiner's refusal.
(Special provisions for appeal trial against ruling to decline amendment)
51. - The adjudication in the case of a trial decision after an appeal trial against a ruling to decline an amendment to the effect that the ruling shall be cancelled shall be binding on the examiner with respect to the case concerned.
(Application mutatis mutandis of Patent Law)
52. - Sections 131(1) and (2), 131bis( 131-2) (excluding subsection (2)(i)) to 134, 135 to 154, 155(1) and (2),156 to 158, 160(1) andfz), 161 as well·as Sections 167 to 170 of the Patent Law shall apply mutatis mutandis tot rials under this Law. In su ch a case, "an appeal trial against examiner's refusal" in Section 161 and "an appeal trial against examiner's refusal and a correction trial" in Section 169(3) of the Patent Law shall read "an appeal trial against exam- iner's refusal and an appeal trial against a ruling to decline an amendment".
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Chapter VI - Retrial and Litigation
(Demand for retrial)
53. - (1) Against a final and conclusive trial decision, The party concerned or an interven- tionaly demand a retrial.
(2) Sections 338(1) and (2) and 339 (grounds for retrial) of the Code of Civil Procedure (Law'No. 109 of 1996) shall apply mutatis mutandis to demands for a retrial under the preced- ing subsection.
54. - (1) Where the demandant and the defendant in a trial have in collusion caused a trial decision to be rendered, with the purpose of injuring the rights or interests of a third person, such person may demand a retrial against the final and conclusive trial decision.
(2) In such a retrial, the demandant and the defendant shall be made joint defendants.
(Restriction on effects of design rights restored by retrial)
55. - (1) Where a design right relating to an invalidated design registration has been re- stored through a retrial, the effects of the design right shall not extend to any article to which the registered design or a design similar thereto has been applied and which was imported into, manufactured or acquired in Japan, in good faith after the time when the trial decision 'became final and conclusive but before the demand for a retrial was 'registered~
(2) Where a design right relating to an invalidated design registration has been restored through a retrial, the effects of the design right shall not extend, after the trial decision became final and conclusive but before the registration of the demand for a retrial, to the following acts:
(i) the working of the design or designs similar thereto in good faith; (ii) acts of manufacturing, assigning, etc., importing or offering for assignment, etc. of, in
good faith, things to. be used exclusively for the manufacture of an article to which the regis- tereddesign or a design similar thereto has been applied.
56. - Where a design right relating to an invalidated design registration has been restored through a retrial or where the establishment of a design right under a design application which was refused by a trial decision has been registered through a retrial, and where a person has, in good faith, been commercially working the design or a design similar thereto in Japan or has, in good faith, been making preparations therefor, after the trial decision became final and conclu- sive but before the registration of the demand for a retrial, such person shall have a non- exclusive license on the design right, to the extent of the design being worked or preparations being made for its commercial working.
(Application mutatis mutandis of provisions on trial)
57. - (1) Sections 50(1) and (3) shall apply mutatis mutandis to a retrial against a final and conclusive trialdecision on an appeal trial for examiner's refusal.
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(2) Section 51 shall apply mutatis mutandis to a retrial against a final and conclusive trial decision on an appeal trial against a ruling to decline an amendment.
(Application mutatis mutandis of Patent Law)
58. - (1) Sections 173 and 174(4) of the Patent Law shall apply mutatis mutandis to retrials under this Law. -
"(2) Sections 131(1), the principal sentence of 131bis(131-2)(1), 132(3) and (4), 133, 133bis(133-2), 134(4), 135 to 147, 150 to 152, 155(1), 156 to 158,160,168, 169(3) to (6) and 170 shall apply mutatis mutandis to a retrial against a final and conclusive trial decision in an appeal trial for examiner's· refusal. In such a case, "an appeal trial for examiner's refusal and a correction trial" in Section 169(3) of the Patent Law shall read "an appeal trial for examiner's refusal".
.(3) Sections 131(1), the principal sentence of 131bis(131-2)(I), 132(3) and (4), 133, 133bis(133-2), 134(4), 135 to 147, 150 to 152, 155(1), 156, 157, 168, 169(3) to (6) and 170 shall apply mutatis mutandis to a retrial against a final and conclusive trial decision in a trial against a ruling to decline an amendment. In such a case, "an appeal trial against examiner's refusal and a correction trial" in Section 169(3) of the Patent Law shall read "an appeal trial against a ruling to decline an amendment".
(4) Section 174(2) shall apply mutatis mutandis to a retrial against a final and conclusive trial decision under Section 48(1).
(Actions against trial decisions, etc.)
59. - (1) An action against a trial decision or a ruling to decline an amendment under Sec- tion 17bis(17-2)(1) as applied under Section 50(1) (including its application under Section 57( 1) or an action against a ruling' of dismissal of a demand for a trial or retrial shall come under the exclusive jurisdiction of the Tokyo High Court.
(2) Sections 178(2) to (6),. 179 to 180bis(180-2), 181(1) and (5) and 182 of the Patent Law shall apply mutatis mutandis to actions under the preceding subsection.
(Actions on amount of remuneration)
60. - (1) Where a person who is concerned in an arbitration decision under Section 33(3) or (4) is dissatisfied with the amount of remuneration fixed in the-decision, he may institute an action for the increase or decrease of the remuneration.,
(2) Sections 183(2) and .184 of the Patent Law shall apply mutatis mutandis to actions un- der the preceding subsection.
(Relationship between administrative appeal and litigation)
60bis(60-2). - Section 184bis( 184-2) of the Patent Law shall apply mutatis mutandis to ac- tions for the annulment of measures (with the exception of measures under Section 68(7) taken under this Law or an order or ordinance thereunder.
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Chapter VII - Miscellaneous Provisions
(Amendment)
60 ter(60-3). - With respect to a.procedure relating to a design application, a demand or other procedure relating to design registration, the person carrying on such procedure may make an amendment only during the pendency of the case in the examination, trial or retrial.
(Registration· in Design Register)
61. - (I) The following matters shall be registered in the Design Register kept in the Patent Office:
(i) the establishment, transfer, extinguishment, restoration or restriction on disposal of a des ign right;
(ii) the establishment, maintenance, transfer, modification, extinguishment 0 r restriction on disposal of an exclusive or non-exclusive license;
(iii) the establishment, transfer, modification, extinguishment or restriction on disposal of rights in a pledge upon a design right or an exclusive or non-exclusive license.
(2) The Design Register, either in whole or in .part, may be prepared by means of mag- netic tapes (including other materials on which matters can be accurately recorded by an equivalent method - hereinafter referred to as "magnetic tapes").
(3) Other matters relating to registration that are not provided for in this Law shall be pre- scribed by Cabinet Order.
(Issuance of design registration certificate)
62. - (1) When the establishment of a design right has ·been registered, the Commissioner of the Patent Office shall issue a design registration certificate to the owner of the registered design.
(2) Re-issuance of the certificate shall be prescribed by an ordinance of the Ministry of Economy, Trade and Industry.
(Request for certification, etc.)
63. - (1) Anyone may request the Commissioner of the Patent Office to· issue a certificate, a copy or an extract of documents, to allow the inspection or copying of documents, models or samples or to issue documents whose contents are recorded in the part of the Design Register prepared by magnetic tapes, where such documents, models or.samples relate to design registra- tions. However, this provision shall not apply in the case of the following documents, models or samples if the Commissioner of the Patent Office considers it necessary to keep them secret:
(i) a request, a drawing, photograph, model or sample attached thereto or documents con- cerning the examination of a design application, where the design registration concerned has not been effected;
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(ii) a document, model 0 r sample, w here the secrecy 0 f t he design concerned has been demanded under Section 14(1);
(iii) documents concerning an appeal trial against examiner's refusal or an appeal trial against a ruling to decline an amendment, where a design registration has not been effected with respect to the design application pending in the trial case;
(iv) documents concerning a design invalidation trial or a retrial of the final and conclusive trial decision, with respect to which the parties or intervenors concerned have given a notice that there has been described a trade secret (meaning the trade secret as referred to in Section 2(4) of the Law for the Repression of Unfair Competition (Law No. 47 of 1993)) owned by the parties or intervenors concerned;
(v) matters liable to damage the reputation or peaceful existence of an individual; (vi) documents liable to contravene public order or morality.
(2) Where a demand made with respect for documents, models or samples as prescribed in the paragraphs (i) to (v) of the preceding subsection is accepted, the Commissioner of the Patent Office shall notify a person, who h as submitted such documents, models 0 r samples, tot hat effect with a reason therefor.
(3) The Law Concerning Access to Information held by Administrative Organs (Law No. 42 of 1999) shall not apply to the documents concerning design registrations and the part of the Design Register, which have been prepared by magnetic tapes.
(Indication of existence of design registration)
64. - The owner of a design right or an exclusive or non-exclusive" licensee shall take steps, as prescribed in an ordinance of the Ministry of-Economy, Trade and Industry, to mark articles to which a registered design Of" a design similar thereto has been applied or the packag- ing of such articles, with a statement to the effect that the articles are covered by a registered design or a design similar thereto (hereinafter referred to as "indication of a design registra- tion"). -
(Prohibition of false marking)
65. - The following acts shall be unlawful: (i) the marking of an article to which a registered design or a design similar thereto has
not been applied" or the packaging of such article, with an indication of a design registration or confusingly similar indication;
(ii) the assignment, lease or display for the purpose of assignment or lease of an article to which a registered design or design similar thereto has not been applied, where such article or its packaging is marked with an indication of a design registration or a confusingly similar indication;
(iii) the "inclusion in an advertisement of an indication that an article is covered by a regis- tered design or a design similar thereto or of a confusingly similar indication, for the purpose of causing 0 thers to produce 0 r use the article 0 r 0 fa ssigning 0 r 1easing i t, w here a registered design or a design similar thereto has not been applied to the article.
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(Design Gazette)
66. - (1) The Patent Office shall publish the Design Gazette (Isho Koho).
(2) In addition to those provided for in this Law, the Design Gazette shall contain the fol- lowing matters:
(i) the extinguishment (with the exception of extinguishment due to expiration of tenn and extinguishment under Section 44(4) or the restoration (limited to that under Section 44bis(44-2)(2») of a design right;
(ii) demands for a trial or retrial or withdrawals thereof and final and conclusive decisions of a trial or retrial (limited where the establishment of a design right is registered);
(iii) requests for an arbitration decision or withdrawals thereof and arbitration decisions; (iv) final judgments in an action under Section 59(1) (limited where the establishment of a
design right is registered).
(3) Where an examiner's decision or a trial decision that a design application is to be re- fused under the last sentence of Section 9(2) has become final and conclusive, the under- mentioned matters relating to the design. application shall be published in the Design Gazette in addition to those mentioned in the paragraphs of the preceding subsection. In the case where such design application is one in which secrecy has been demanded under Section 14(1), all the matters prescribed in paragraph (iii) shall be published without delay after the expiration of a period designated under the same subsection (where there are two or more design applications in which secrecy is demanded, whichever the demanded .secrecy period is longer) following the date when an examiner's decision or a trial decision that the design application is to be refused has become final and conclusive:
(i) the name and the domicile or residence of an applicant for design application; (ii) the application number and filing date of the application; (iii) the request and the contents of drawings, photographs, models or samples attached
thereto; (iv) necessary matters other than those listed in the preceding three paragraphs.
(Fees)
67 ..- (1) The person specified hereunder shall pay the fee the amount of which shall be prescribed by Cabinet Order with the actual costs taken into consideration:
(i) person requesting access to design in accordance with Section 14(4); (ii) person making notification of succession in accordance with Section 34(4) of the Pat-
ent Law as applied under Section 15(2); (iii) person requesting extension of time limit under Sections 4 and 5( 1) of the Patent Law
as applied under Sections 17quater(17-4), 43(3) or 68(1), or change of date under Section 5(2) of the Patent Law as applied under Section 68(1) of this Law;
(iv) person requesting re-issuance of design registration certificate; (v) person requesting issuance of certificate in accordance with Section 63(1); (vi) person requesting issuance of copy or extract of documents in accordance with Section
63(1);
IPIN/l/JPN/D/3 Page 29
(vii) person' requesting inspection or copying of documents, models or samples in accor- dance with Section 63(1);
(viii) person requesting issuance of documents containing matters recorded in that part of the Design Register as prepared on magnetic tapes, in accordance with Section 63(1).
(2) The persons specified in the left-hand column of the attached table shall pay the fee the amount of which shall be prescribed by Cabinet Order within the limit of the amounts specified in the right-hand column of the table.
(3) The preceding two subsections shall not apply where the person to pay the fee in ac- cordance with these subsections is the State.
(4) Where the State and the person(s) other than the State jointly own a design right or a right to obtain a design registration and there is an agreement with respect to their shares of the right, the annual fees to be paid, by the State and the person(s) other than the State under subsec- tion (1) or (2) (limited to the fees prescribed by Cabinet Order) shall be a sum with prescribed fees under these subsections multiplied by the ratios of the shares of the person(s) other than the State, and' the person(s) other than the State shall pay such sum, notwithstanding the provisions of these subsections.
(5) Where the amount of the fees calculated in accordance with the preceding subsection has a fractional figure less than 10 yen, that fractional figure .shall be discarded.
(6) The. payment of the fee under subsection (1) or (2) shall be made by patent revenue stamps as prescribed by an. ordinance of the Ministry. of Economy, Trade and Industry, How- ever, wherever so prescribed by an ordinance of the Ministry of Economy, Trade and Industry, such payment may be made in·cash.
(7) A fee paid by mistake or in excess shall be refunded upon the request of the person making the payment.
(8) No request for a refund of a fee 'under the preceding subsection may be made after one year from the date ofpayment.
(Application mutatis mutandis of Patent Law)
68. - (1) Sections 3 to 5 of the Patent Law shall apply mutatis mutandis. to the time limits and dates prescribed in this Law. In such a case, "Section 121 (1)" in Section 4 of the Patent Law shall read "Section 46(1) or 47(1) of the Design Law".
(2) Sections 6to 9, 11 to 16, 17(3) and (4) and 18 to 24 as well as Section 194 of the Pat- ent Law shall apply mutatis mutandis to design applications, demands and any other proceed- ings relating to design registrations. In such a case, "an appeal trial against examiner's refusal" in Section 9 of the Patent law shall read "an appeal trial against examiner's refusal or an appeal trial against a ruling to decline an amendment", and "an appeal trial against examiner's refusal" in Section 14 of the Patent Law shall read "an appeal trial against examiner's refusal or an appeal trial against a ruling to decline an amendment".
(3) Section 25 of the Patent Law shall apply mutatis mutandis to design rights and other rights relating to design registrations.
(4) Section 26 of the Patent Law shall apply mutatis mutandis to design registrations.
(5) Sections 189 to 192 of the Patent Law shall apply mutatis mutandis to transmittal un-
der this Law.
(6) Section 195ter(195-3) of the Patent Law shall apply mutatis mutandis to measures un-
der this Law or an order or ordinance thereunder.
(7) Section 19Squater(195-4) of the Patent Law shall apply mutatis mutandis to rulings to decline an amendment, examiners' decisions, trial decisions and rulings of dismissal of a de- mand for trial or retrial under this Law as well as to measures from which no appeal lies under this Law.
IPIN/l/JPNID/3 Page 30
- Chapter VIII - Penal Provisions
(Offense of infringement)
69. - Any person who has infringed a design right or an exclusive license shall be liable to imprisonment with labor not exceeding three years or to a fine not exceeding 3,000,000 yen.
(Offense of fraud)
70. - Any person who has obtained a design. registration or a trial decision by means of a fraudulent act shall be liable to imprisonment with labor not exceeding one year or to a fine not exceeding 1,000,000 yen.
(Offense of false marking)
71. - Any. person infringing Section 65 shall be liable to imprisonment with labor not ex- ceeding one year or to a fine not exceeding 1,000,000 yen.
(Offense of perjury, etc.)
72. - (1) A witness, expert witness or interpreter who, having taken an oath under this Law, has made a false statement or has given a false expert opinion or has interpreted falsely before the Patent Office or a court commissioned thereby shall be liable to imprisonment with labor for atenn of not less than three months nor more than ten years.
(2) Where a person committing the offense in the preceding subsection has made a volun- tary confession before, concerning the· case, the' certified copy of the interpretation is transmit- ted or the examiner's decision or trial decision has become final and conclusive, his sentence may be reduced or suppressed.
(Offense of divulging secrets)
73. - Where any present or former official of the Patent Office has divulged or made sur- reptitious use of the secrets relating to a design in a design application to which.he had access in the course of his duties, he shall be liable to imprisonment with labor not exceeding one year or to a fine not exceeding 500,000 yen.
(Dual liability)
74. - Where an officer representing a legal entity or a representative, employee or any other worker of a legal entity or of a natural person has committed an act in violation of any of the provisions prescribed in the following paragraphs with regard to the business of the legal entity or such natural person, the legal entity shall, in addition to the offender, be liable to the fine prescribed in the following paragraphs, and such natural person shall, in addition to the offender, be liable to the fine prescribed in the Sections referred to in the following paragraphs:
(i) Section 69, a fine not exceeding 1GOmillion yen;
IPIN/1/JPN/D/3 Page 31
(ii) Section 70 or 71, a fine not exceeding 30;000,000 yen.
(Administrative penalties)
75. - Where a person who has taken an oath under Section 207(1) of the Code of Civil Procedure as applied under Section 151 of the Patent Law - as applied under Section 71(3) of the Patent Law as appliedunder Section 25(3) of this Law or under Section 52 of this Law or under Section 58(2) or (3) of this Law or under 174(2) of the Patent Law as applied Section 58(4) of this Law, respectively - has made a false statement before the Patent Office or a court commissioned thereby, he shall be liable to an administrative penalty not exceeding 100,000 yen.
76. - Where a person who has been summoned by the Patent Office or a court commis- sioned thereby in accordance. with this Law has failed to appear or has refused to take an oath, to make a statement, to testify, to give an expert opinion or to interpret, without a legitimate reason, he shall be liable to an administrative penalty not exceeding 100,000 yen.
77. - Where a person who has been ordered by the Patent Office or a court commissioned thereby to produce or show documents or other evidence in accordance with this Law relating to the examination or preservation of evidence has failed to comply with the order, without a legitimate reason, he shall be liable to an administrative penalty not exceeding 100,000 yen.
Supplementary Provision (Law No. 125 of 1959)
The entry into force of this Law shall be established by another law.
Supplementary Provisions (Extract from Law No. 91 of 1970)
(Entry into force)
1. - This Law shall enter into force on January 1., 1971.
(Transitory measures incident to revision of Design Law)
7. - Sections 2, 3 and 5 of these Supplementary Provisions shall apply mutatis mutandis to the transitory measures that are incident to the revision of the Design Law under Section 3.
IPIN/l/JPN/D/3 Page 32
(Delegation to Cabinet Order)
9. - In addition to those provided for in the preceding sections, the transitory measures necessary for the implementation of this Law shall be prescribed by Cabinet Order.
Supplementary Provisions (Extract from Law No. 46 of 1975)
(Entry into force)
1. - This Law shall enter into force on January 1, 1976, with the following exceptions: (i) amended Section 42(1) and (2) and the amended table attached to the DesignLaw
shall enter into force 'on the day of promulgation of this Law;
(Transitory measures incident to revision of Patent Law)
2. - (2)An annual fee which has been paid or should have been paid before the day of promulgation of this Law shall be as heretofore, notwithstanding Section 107(1) of the Patent Law after its revision.
(Transitory measures incident to revision of Design Law)
4. - Section 2(2) of these Supplementary Provisions shall apply mutatis, mutandis to an annual or registration fee which has been paid before the day of promulgation of this Law.
Supplementary Provisions (Extract from Law No. 45 of 1981)
(Entry into force)
1. - This Law shall enter into force from the day of promulgation.... However, ... the amended provisions of Section 107(1) of the Patent Law, the amended provisions of Section '31(1) of the Utility Model Law, the amended provisions of Section 42( 1) and (2) of the Design Law, the amended provisions of Section 40( 1) and (2) of the Trademark Law ... shall enter into force on June 1, 1981.
(Transitory measures)
2. - The following fees shall be as heretofore:
(iii) An annual fee which has been paid or should have been paid before the entry into for- ce of the amended provisions of Section 42(1) and (2) of the Design Law.
IP/N/l/JPN/D/3 Page 33
Supplementary Provisions (Extract from Law No. 41 of 1985)
(Entry into force)
1. - This Law shall enter into force on the day to be set by a cabinet order within six months from the day ofpromulgation....
Supplementary Provisions (Extract from Law' No. 27 of 1987)
(Entry into force)
I , - This Law shall enter into force on January 1, 1988.
However, the following provisions shall enter into force on June 1, 1987:
.... Section 42 and "Attached Table" (Related to Section 67).
Supplementary Provisions (Extract from Law No. 30. of 1990)
(Entry into force)
1. - This Law shall enter into force on.December 1, 1990.
Supplementary Provisions (Extract from Law No. 26 of 1993)
(Entry into force)
1. - This Law shall come into force as of a day to be determined by Cabinet Order within a period not exceeding one year counting from the day of promulgation.
Supplementary Provisions (Extract from Law No. 116 of 1994)
(Entry into force)
1. - This Law shall enter into force on July 1, 1995. However, the provisions indicated in the fallowing paragraphs shall enter into force 0 n t he date specified respectively i n t he said
IPIN/l/JPN/D/3 Page 34
paragraphs: {i) The amended provisions of Section 30(3) of the Patent Law prescribed in Section 1;
the provisions prescribed inS ection 5 (excluding t he a mended provisions 0 f Sections 10(3), 13(1), 44(2) and 63bis of the Trademark Law); and the provisions prescribed- in Section 9: - July 1, 1995 or the day on which the Marrakesh Agreement Establishing the World Trade Organization becomes effective in Japan ... whichever is later.
(ii) The provisions prescribed in Section 2; the amended provisions of Sections 3 bis( 1) (limited to the part amending "publication of application" into "publication of the Patent Ga- zette containing the matters referred to in each paragraph thereof'), 10(5) and (6), 14(4) and 39(3), the amended provisions of Section 45 (excluding the part adding a subsection to this section), the amended provisions of Section 50bis (limited to the part amending "Section 174(2)" .into "Section- 173(3)" and "Section 193(2)(v)" into "Section 193(2)(iv)"), the amended provisions of Section 53(2) and the amended provisions of Section 62 of the Utility Model Law; the amended provisions of Sections 13(3),_19,58,68(1) and 75 of the Design Law; the provi- sions prescribed in Section 6; the amended provisions of the Patent Attorney Law prescribed in Section 7; and the provisions of Sections 8, 9, 10(2), 17 and 19: - January 1, 1996.
Supplementary Provisions (Extract from Law No. 68 of 1996)
(Entry into force)
1. - This Law shall enter into force on April 1, 1997.
Supplementary Provisions (Extract from Law No. 51 of 1998)
(Entry into force)
1. - This Law shall enter into-force on January 1, 1999.
Supplementary Provisions (Extract from Law No. 41 of 1999)
(Entry into force)
1. - This Law shall enter into force on January 1,2000.
Supplementary Provisions (Extract from Law No. 43 of 1999)
(Entry into force)
1. - This Law shall enter into force on April 1, 2001.
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Supplementary Provisions (Extract from Law No. 160 of 1999)
(Entry into force)
1. - This Law shall enter into force on January 6, 2001.
Supplementary Provisions (Extract from Law No. 220 of 1999)
(Entry into force)
1. - This Law shall enter into force.on January 6., 2001.
Supplementary) Provisions (Extract from Law No. 24 of 2002)
(Entry into force)
1. - This Law shall enter into force on September 1, 2002.
Supplementary Provisions (Extract from Law No. 47 of2003)
(Entry into force)
1. - This Law shall enter into force on January 1, 2004. However, the provisions indi- cated ·in the following paragraphs shall enter into force on the dates specified respectively in the said paragraphs:
(ii) the amended provisions of Section 42 and 67 of the Design Law - April 1, 2004.
IP/N/l/JPN/D/3 Page 36
Attached Table (Related to Section 67)
1.
2.
3.
4.
5.
6.
7.
Person liable to pay
Person filing design. application
Person demanding secrecy of design in accordance with Section 14(1)
Person requesting interpretation in accordance with Section 25( 1)
Person requesting arbitration design
Person requesting cancellation of arbitration decision
Person demanding trial or retrial
Person demanding intervention in trial or retrial
Amounts
¥ 16,000.per case
¥5,100 per case
¥40;OOO per case
¥S5,OOO per case
¥27,500 per case
¥55,OOO per case
¥55,OOO per case