Japanese Design FAQs
Partial Design Protection System
Q.What are the differences in the requirements of application forms between partial designs and whole designs?
For partial design applications, the following descriptions are necessary:
- Indication of “partial design”;
- In the item “article to which the design is applied,” describe the title of the whole article of which the subject matter is a part;
- In the item “explanation of design,” explain how the subject matter of the partial design and the rest of the design are identified in the drawings, photographs, models or specimens.
Q.How should a partial design be identified in the drawings?
- Distinguish the part for which design protection is sought from the part for which design protection is not sought;
- Draw solid lines to include the part for which the design protection is sought and draw broken lines to indicate the rest;
- If the border separating the subject matter of the design and the rest is not clearly shown by the use of solid lines and broken lines only, dot-dashed lines on the border, and describe in the item “explanation of the design” how such border is identified.
- It is possible to apply lines or dots to the part for which design protection is sought in order to identify patterns, colors or shapes
Q.How should a partial design be identified in case of models or specimens?
The part for which no design protection is sought should be painted out in black or gray ink. In the item “explanation of design,” describe, for example, that “the black or gray inked portion is the part for which no design protection is sought.”
Q.How should a design be identified in case of photographs?
Use photographs of the article that are painted out in the same manner as explained above. In the item “explanation of design,” you may add a description similar to that above.
Q.Is it possible to obtain a design registration for patterns as a partial design?
Although it is not possible to obtain a design registration for a pattern per se, it is possible to do so as long as the pattern is applied to a part of an article having a distinctive shape. In this case, the shape of the part of the article to which the pattern is applied should be shown in solid lines as well as the patterns.
Q.Is it possible to obtain a design registration for parts that are physically separated?
Basically, if a design application is made of two or more partial designs that are physically separated, such designs are deemed to be multiple designs, which are not allowed to be registered using a single application. However, if such designs can be regarded as one in terms of shape or function, a design registration may be granted.
Q.Is it possible to file related design applications for partial designs?
Yes, it is possible to obtain related design registrations for partial designs as long as the requirements for related design are satisfied.
Q.Is it possible to file related design applications between a partial design and a whole design?
No. This is because partial designs and whole designs are considered to be different subject matter and the methods of obtaining registrations are also different.
Q.How will the provision of Exceptional Treatment of Lack of Novelty (Art. 4) be applied to partial designs?
It is possible to make use of this provision if the applied-for design is identical with the partial design disclosed in the prior art (publication, sales, use etc.) in terms of the following elements:
- Article to which the design is applied;
- Function and use of the part for which a design registration is sought;
- Location, size and scope of the part for which a design registration is sought within the whole article; and
- Shape of the part for which a design registration is sought.
Q.In what cases will priority based on Paris Convention be accepted for partial design applications?
A priority claim may be accepted if the design is identical between the original partial design application and the priority-claiming Japanese partial design application. Therefore, a priority claim may not be accepted in the following cases:
- When the original application relates to a whole design and the Japanese application relates to a part of the whole design;
- When the original application relates to a partial design and the Japanese application relates to the partial design with additional elements that are not disclosed in the original design; and
- When the original application relates to plural design registrations for partial designs and the Japanese application relates to a combination of such designs.
Q.When a whole design is disclosed in a drawing of a patent application, is it possible to convert the patent application to a design application directed to a part of the whole design that is disclosed in the patent application?
As in the case of foreign priority claiming applications, it is not possible to do so unless the original patent application includes a drawing disclosing the part itself.