Procedures for Obtaining a Design Right

The whole procedure from filing to registration is shown in the flow chart below.

(1) Application

In order to obtain a design right, an applicant must fill out the forms prescribed in the relevant ordinances and submit them to the Japan Patent Office.

(2) Formality Check

An application document submitted to the JPO will be checked to see whether it fulfills the necessary procedural and formal requirements. An invitation to correct will be made where necessary documents are missing or required sections have not been filled in.

(3) Substantive Examination

The examiner conducts substantive examination as to whether or not a design right should be granted for an application for design registration. The examination procedure is outlined below.

1. Finding of the design in an application for design registration

The examination starts from finding the design in an application for design registration (hereinafter referred to as the “design in the application”). In finding the design, comprehensive determination is made based on the statement in the application and drawings, etc. attached to the application.

2. Prior design search

A prior design search is conducted to find prior designs, etc. which contribute to the determination on the requirements for registration, such as novelty and creative difficulty, with regard to the design in the application.

3. Review with regard to novelty, creative difficulty, etc.

A review is conducted as to whether or not the contents of the prior designs, etc. found in a prior design search constitute a reason for refusal relating to the requirements for registration provided in the Design Act, such as novelty and creative difficulty, the requirements for a prior application and the requirements for a related design with regard to the design in the application.

(4) Notification of Reasons for Refusal

Where a reason for refusal is found as a result of the review, a notice of reasons for refusal is given. In case of an international application for design registration, a notice of reasons for refusal shall be given through the Notification of Refusal to the International Bureau of World Intellectual Property Organization.

(5) Written Argument / Amendment

An applicant may submit either a written argument against a notification of reasons for refusal or an amendment that would nullify the reasons for refusal.

(6) Decision of Registration

Where no reason for refusal is found, a decision of registration is rendered. Where the reason for refusal has been overcome through submission of a written opinion or a written amendment of proceedings, and no other reason for refusal is found, a decision of registration is rendered.

(7) Decision of Refusal

Where the reason for refusal of which notice was given is determined not to have been overcome after reviewing the contents of a written opinion or a written amendment of proceedings, a decision of refusal is rendered.

(8) Appeal against Decision of Refusal

When dissatisfaction is in the decision of refusal of the examiner, the applicant may appeal against the decision of refusal.

(9) Appeal Examination (against Decision of Refusal)

The appeal examination against the decision of refusal is performed by a collegial body of three or five appeal examiners. Decision of the appeal examiners is called an appeal decision.
When it is judged, as a result of appeal examination, that the reasons for refusal was solved, an appeal decision to register a design is performed, and when the appeal examiners judge that the reasons cannot be canceled and the design cannot be registered, an appeal decision of refusal is performed.

(10) Registration (Registration Fee Payment)

When the applicant pays the registration fee subsequent to receipt of the decision to register, the design right shall be established

(11) Publication of Design Gazette

A design gazette shall be published containing the contents of the right of design registration in order to inform the public of its establishment.

(12) Written Argument / Amendment

Even after the design registration has been established, anyone can request for an appeal examination for invalidation to dispute the validity of the right if the design registration has a flaw.

(13) Appeal Examination (Invalidation)

An appeal examination for invalidation will be carried out by a collegial body of three or five appeal examiners. If the appeal examiners judge that there is no flaw in the design registration, they will make a decision to maintain the design registration. If however they judge that the decision to register was flawed, they will make a decision to invalid the design registration.

(14) Intellectual Property High Court

An applicant who is dissatisfied with an appeal decision of refusal of an appeal against decision of refusal, and an interested party who is dissatisfied with an appeal decision of invalidation or maintenance, can appeal to the Intellectual Property High Court.

[Last updated 23 March 2020]

Contact

Policy Planning and Research Section, Design Division, Japan Patent Office Tel: +81-3-3581-1101(Ex.2907) E-mail:PA1530@jpo.go.jp Trial and Appeal Division, Japan Patent Office Tel: +81-3-3581-1101(Ex.3613) E-mail:PA6B01@jpo.go.jp