To allow for an accurate and speedy examination, and to facilitate interpretation of the scope of design registrations, the "Characteristics Description System" is being introduced. The Characteristics Description System allows the applicant to describe any important features of the design. There is no requirement or obligation for the applicant to include such a description. Any such description will be published, along with the design in the Design Gazette. The Patent Office does not examine the statement or description or make a substantial judgement on the propriety of the description. However, the description is provided to allow the Examiner to more readily understand the design and its salient features.
Procedurally, the description is to set forth the characteristics of the applied design on a separate A4 sheet of paper. The Characteristics Description may be filed as part of the application, or anytime during the pendency of the application. The description may also be amended while the application is pending.
Since the Characteristics Description is considered to be a part of the application, the description can be used to define and in some cases, limit the scope of protection. That is, the description estops the owner of the design right from expanding the scope of the design in a manner that conflicts with the description or with amendments and arguments made during the prosecution of the application before the JPO. Accordingly, careful consideration must be given to the decision to include a description and to any description that is included.
In a case where so-called pioneer designs are created, we advise that a Characteristics Description be included in most cases to allow the examiner to clearly understand the characteristics (important features) of the created design, and therefore, to examine the application much more quickly, leading to a faster issuance.
Under the abolished similar design system, applicants attempted to emphasize the important features by filing various similar design applications. In the case of a truly novel design where a wide scope of protection was sought, the important features were in most cases described abstractly, making it very difficult for the examiner to fully understand the characteristics (the important features) by using drawings. Often, examiners mistakenly determined the important characteristics of a design. In such cases, the applicant had to emphasize the characteristics in either an opinion sheet or orally in a meeting with the examiner. By providing a description at the time of filing, such examination delays can be avoided, allowing the application to issue earlier and at a lower cost.
On the other hand, in the case of an application filed for a design in a crowded field, where there is a lot of prior art, it may be more prudent not to use the Characteristics Description System, but to describe and emphasize the characteristics in an opinion sheet during prosecution, as was done in the past.
Notes for characteristic descriptions
(1) Submit a document titled Characteristic Description
(2) This is optional.
(3) It is possible to file a Characteristic Description at the time of filing, during the pendency of examination, appeal or re-examination.
(4) Characteristic descriptions should be described under the item “characteristics of design” simply and clearly, not exceeding 1,000 words.
(5) Under the item “explanatory drawing”, it is possible to place drawings in order to explain the characteristics of the design. It is possible to place plural drawings, but they must be placed within the space (150mm X 113) and no additional pages are allowed.
(6) Amendments of the descriptions in the Characteristic Description, new form must be submitted.
(7) Descriptions under the items “Characteristics of Design” and “Explanatory Drawing” will be published in the design gazette.