Design examination in Japan examines novelty, unique creativeness, etc., i.e. the substantive registration requirements for prior and subsequent applications. The United States has its design patent system, and the substantive requirements there are determined in the same way. Europe, in turn, has the community design system and examines novelty and originality as such. We suggest that you consider how… Design registration hurdles in Japan compared to other countries should be considered in Patent matters.
Some people say that “the JPO’s design examinations are of the highest standard in the world.” In our view, and regardless of the factual truth of it, it seems to be the case that the design department of the JPO is conducting comparatively high-level and detailed examinations.
In the past, I was involved in a design infringement case on the defendant’s side, and I tried to invalidate the plaintiff’s design registration. I searched for evidence of invalidation in the database materials of the Japan Patent Office, and when I could not find it there, I searched for private evidence from other sources in Japan. Again, however, I could not find effective evidence. I then asked a patent attorney in Germany – a country renowned for designs in the field of this particular product (scissors) – to search for the registered documents in Germany. Once again though, in the end, I could not find any valid invalidation documents. As a result, the needed quality of the design registration at the JPO was finally proven.
On the other hand, in the United States, designs are part of the patent system and are called the “Design Patent System.” It is necessary to submit the drawings, “the design patent claims” written in words, just like a patent. Similar to a utility patent, there is an examination for novelty and non-obviousness.
In the example of China, such as with utility models, there is no examination system for designs, but there is an evaluation system. With some 800,000 design applications, it is the largest number of design applications in the world.
In Japan, the number of design applications is about 30,000: there are less than 300,000 patent applications and about 180,000 trademark applications. The scope of design rights is narrower than that of patents, so countermeasures and preventive measures against infringement should be examined from the viewpoint of cost-effectiveness. We treat this as a serious factor in our office, and advise our clients accordingly.
Note, however, that if the question of cost can be ignored, it is possible to build a more effective system than patents in order to protect the company’s products. If you want to obtain effective protection using a design in Japan, it is necessary to ask a patent attorney who has experience in dispute cases.
At Kimura & Partners, we focus on supporting domestic and foreign companies, especially SMEs, register and defend their IP in what we call the IP battleground. We feel that is is important to… Design registration hurdles in Japan compared to other countries should be considered in Patent matters.
