5

Method of the Design System to Promote Diversifying Design
Creation Activities

The use of design is said to be an important element for strengthening a company’s competitiveness.
The Japan Patent Office has been facilitating a review of the design system as needed in order to promote
design creation activities and to protect them appropriately, and is also continuously exchanging opinionswith industry and designers, etc. This research study was conducted to create the base materials to review
the method of a design system that protects and promotes the increasing diversity of design creation
activities.

Ⅰ Introduction
1

Background of this research study

Attractive designs enable products todifferentiate themselves from other companies’
products and to add high values. Using designs is
said to be an important element for strengthening
a company’s competitiveness. The Japan Patent
Office has been reviewing the design system as
needed in response to changes in social situations
in order to protect appropriately the increasing
diversity of design creation activities. It has also
been exchanging opinions with industry anddesigners, etc. in order to promote further
creative activities and to engage in improvements
to the methods of the design system and its
convenience. Based on the results of thisexchange of opinions, this research study was
conducted in order to research and analyze theneeds for protection pertaining to design creation
activities and the standpoint of international
harmony, etc. through a survey of the actual
conditions for the development and protection ofdesign in Japan and overseas, and to create basematerials for reviewing the method for the design
system to protect and promote design creation
activities and their diversity.
2(2) Questionnaire survey in Japan
Relatedquestionnaire
surveys
were
conducted with approximately 1,200 users of thedesign system, such as companies, organizations,patent offices, designers, etc. in Japan.
(3) Oral interviews in Japan
Based on the responses to the questionnaire
surveys, face-to-face interviews were conductedwith 20 companies, patent offices, design offices,and design related organizations in Japan.
(4) Overseas interviews
Face to face interviews were conducted with
Patent Offices, law firms, and design relatedorganizations in foreign countries in order toobtain information on related systems, theiroperation, and the awareness that users have ofthem in their countries.
(5) Document investigation in Japan andoverseas
Relative information in Japan and overseas
was collected and used as base material andreference for examining issues in the Committee.

Ⅱ Further Adjustment of Screen
Design Protection
1

Method of this research study(1) Establishment of the Committee
A research study committee composed of
persons with relevant knowledge and experience,
attorneys, patent attorneys, and industry experts,
has been established and the committee met for
four times in total in order to obtain its reviews,
analyses, and advice for this research study fromthe perspective of specialists.

(1) Overview of activities for design
protection of screen designs
In the past, figures, etc. that appear on ascreen were not included in the subjects ofprotection under the Design Act since they were
not considered to be patterns which arecomponents of a design. However, since 1986,
those that fulfill certain requirements, such as
being essential for the completion of an article,● 1 ●IIP Bulletin 2010

Expansion of protection of screen
designs for which configurations change

etc., are regarded as elements composing adesign as prescribed in Article 2, paragraph (1) of
the Design Act.
After multiple investigations, the definition
set forth in Article 2, paragraph (2) of the Design
Act was newly provided for by the Design Act
amendment in 2006 and screen designs that areprovided for use in the operation of an article are
newly protected by the Design Act as images thatcompose a configuration of a part of the article. In
response to the amendment, the Design
Examination Guidelines were developed andpublished.
(2) Issues
Under the current Design Examination
Guidelines, one design has one image in principle.
In cases of a design including multiple images,
the Guidelines do not have room to interpret it asa single design to a limited extent. However, it
has been indicated that the changes andmovement of displayed images are one of theimportant points for the creation of screen
designs; screen designs are therefore notsufficiently protected under the operations basedon the current Design Examination Guidelines.
(3) Perspectives for examination(i) Possibility of responses by reviewing the
DesignExamination
Guidelines(responses under the current Design Act)
[Issue 1] Range and configuration changes thatcan be considered as a single design(a) Preconditions to be regarded as components
of a design(b) Range that can be considered as a single
design(c) Approval as a design and approval ordisapproval of configurational relevance[Issue 2] Method of specifying
configurations(a) Specifying method(b) Treatment of reference drawing

changing[Issue 3] Evaluation of movements in thechanging images(a) Appropriateness of attempts to obtain design
registration only for forms of movement(b) Approvals for the design(c) Judgments of similarity(d) Judgments on the difficulty of creating thedesign(ii) Possibility of responses by amendment of
the Design Act (example of countermeasuresthat exceed the framework of the current
Design Act)(a) Introduction of the system of one application
for multiple designs into screen designs(b) Protection of screen designs, for which theconfiguration changes, as a design for a set ofarticles(4) Summary of examinations
When considering the actual conditions ofscreen design creation at companies and othercircumstances, there is a significant need among
design system users to protect screen designs,
for which the configuration changes, as single
design.
Responding to this need may lead to limiting
the scope of the effectiveness of design rights as
the number of images composing single design
increases, while it enables claiming rights
including the characteristics of configuration
changes. Therefore, it is considered to havesignificance to the extent that it provides
applicants flexibility to choose the means to
obtain a right.
This research study assumed maintaining
the definition of Article 2, paragraph (2) of thecurrent Design Act and primarily investigatedpossible
response
measureswithintheframework of the current Design Act byreviewing the Design Examination Guidelines.
Based on the interpretation of the provisionsof the Design Act, there is room for a more
flexibleinterpretationthanthecurrent
examination guidelines, which assume a single
still image to be a single design. If theinterpretation is eased to a reasonable extent, it
is possible to proceed to the protection of screen
designs with configuration changes to someextent under the current Design Act.
On the other hand, in cases of attempting toconsider screen designs with configuration
changes as a single design, it is pointed out that itis necessary for justifying this perspective todevelop the relationship between the definition ofdesign set forth in Article 2 of the Design Act andmovable design set forth in Article 6, paragraph(4) of the same Act.
In the future, it may be necessary to proceed
to specific countermeasures in consideration of
possible responses by revising the examination
guidelines and responses by amendment of the
Design Act.

● 2 ●IIP Bulletin 2010

(i)Possibility of responses by revision of the
Design Examination Guidelines
In the examination of this Committee, thefollowing ideas and opinions were indicated as
possible responses by revision of the design
Examination Guidelines based on the provisionsof the current Design Act.
[Issue 1] Range and configuration changes thatcan be considered as a single design(a) Even if part of the multiple images does
not fulfill the requirements for operation
images by itself, it is allowable if themultiple images are regarded as animage provided for use in the operationof the article as a whole; provided
however, that the content is excluded.
(b) In light of the provisions of Article 2,paragraph (2) of the Design Act, it isconsidered to be appropriate to set a single
operation as the base of range of a single
design. Based on the provisions of Article 6,paragraph (4) of the Design Act, it isconsidered to be possible to regard unlimited
and arbitrary configuration changes as asingle design; if so, it cannot be denied thatmultiple images that are uncoordinated as adesign creation may compose a single design.
Therefore, it is necessary to establish certain
restrictionson
configurations,etc.
Consequently, as to the range of images thatcan be considered as a single design, thefollowing two ideas are assumed:[Proposal 1] Arbitrary configuration changes shallbe regarded as a single design for up to one
operation.
[Proposal 2] Configuration changes within acertain range shall be regarded as a single design
up to operation.
(c) According to the results of the questionnaire
survey, it is desired to consider the range inwhich a “visual consistency” is found as a setof design creations. As a result of theexamination of the Committee, based onunity of design creation and the convenienceof applicants, the range that is considered to
be a single design is considered to be in the
direction based on the idea in [Proposal 2]
above.
[Issue 2] Method of specifying changing
configurations(a) It may be appropriate to indicate drawings ofmultiple images that show the form ofconfiguration changes, for which an applicant
requires to obtain patents, in the order ofsaid changes, and to specify the form ofspecific configuration changes by stating an
explanation of said changes in theapplication.
(b) As to the treatment of reference drawings, it
may be appropriate to retain the use ofdrawings that can help in understanding thedesign as reference drawings, as they are
currently treated.
[Issue 3] Evaluation of movement in changing
images(a) It may be appropriate not to allow design
registration to be granted only for the form ofconceptual changes (or movement) bychanging the form, position, size, and range ofdrawings, etc. that are shown by dashed lines.
(b) It may be appropriate to regard an overalldesign that is presented by means ofmultiple images as a single design that may
change or move.
(c) It may be appropriate to judge that, in cases
where each drawing has novelty, they are
regarded to have novelty as a whole, and that,in cases where each drawing does not havenovelty, if the forms of the specificconfiguration changes have original andsignificant characteristics, they are judged
not to be similar to prior designs.
(d) If individual drawings are publicly known andthe form of the configuration changes is also
publicly known, it may be appropriate toreject it as a design that can be createdeasily.
(ii) Possibility of response by amendment of
the Design Act
In cases of responding by amendment of the
Design Act, it is necessary to note the following
points:- In cases of screen designs that are
positioned as the form of part of articles, it isalso considered that the screen design may
include configuration changes without
restriction or extension according to theprovisions of Article 6, paragraph (4) of the
Design Act. Therefore, it is considered as aproposal to impose some restrictions on said
provisions in cases of configuration changesof a screen design.
- With regard to the application of adesign for a set of articles, it is necessary
to examine further the relationship with● 3 ●IIP Bulletin 2010

the fact that it has no concept of thecontinuityofchangesandthearrangement of the current Act.
- The system of one application for
multiple designs cannot respond to
applicants’ needs since it does not allow
applicants to claim rights based on thecharacteristics of the form of theconfiguration changes.
2

Simplifying
requirements
submission of drawings

for

the

(1) Issues
With regard to “a graphic image that isdisplayed on the article that is used with thearticle in an integrated manner,” which has
become subject to protection by the newly
established definition set forth in Article 2,paragraph (2) of the Design Act, it is different
from a normal partial design and cannot be
evaluated in terms of the location, size, and rangeof the part for which a design registration isrequested in comparison with other designs.
Therefore, there is an indication that it is notnecessary to require submission of a set of 6
drawings of the design of an article even forimages with said characteristics.
(2) Perspectives for examination(i) In cases of a “graphic image that is displayedon the article that is used with the article in an
integrated manner,” it may be permitted to omit
the submission of drawings other than “images”
arbitrarily by stating the explanation for theomission of drawings.
(ii) Is it appropriate to allow the arbitraryomission of the submission of drawings otherthan the “front view” of articles on which thegraphic image is displayed, in cases of a “graphic
image that is displayed on the article”?
(3) Summary of examinations(i) In cases of a “graphic image that is displayedon the article that is used with the article in an
integrated manner,” it is appropriate to permit thearbitrary omission of submitting drawings otherthan “images,” by stating explanation that thedrawings of articles are omitted, in addition to the
explanation of functions and operation of thearticles pertaining to the image.
(ii) In cases of a “graphic image that is displayedon the article,” since the judgment of similarity ofpartial design requires an evaluation of thelocation, size, and range of the part for which thedesign registration is requested, it may beappropriate to examine for other drawings in the
direction that the arbitrary omission of drawings
is allowed, while disclosing at the applicant’s own
risk the necessary and sufficient drawings for
specification of the position, size, and range of thepart of the images to be displayed for which theapproval for the articles pertaining to the designand design registration is requested.
With regard to the method of omitting
drawings in the case of these screen designs, it ispreferable to facilitate responses in futurecomprehensive examinations pertaining to thesimplification of requirements for the submissionof drawings as well.
3

Arrangement of the relationship ofimages that are approved under Article
2, paragraph (1) and (2)(1) Issues
Subject images that are seen to be a designcomponent and the requirements for them are
different under Article 2, paragraph (1) and (2) ofthe Design Act. On the other hand, with regard toimages considered as a component of a design
pursuant to the provisions of Article 2, paragraph(1), their treatment is not clearly indicated in thecurrent
DesignExamination
Guidelines.
Therefore, there is a possible lack of clarity when
judging whether a general design, including its
images, corresponds to Article 2, paragraph (1) or(2).
(2) Summary of examinations(i) As to the treatment of a design, including its
images, it may be preferable to state clearly in the
Design Examination Guidelines about thetreatment of images based on the definition of
Article 2, paragraph (1) that has been considered
as a component of a design, in addition tooperational images based on the definition of
Article 2, paragraph (2) of the Design Act.
(ii) Considering the understandability for
applicants and the convenience of examinations at
the Patent Office, it is possible to arrange for
Article 2, paragraph (2) of the Design Act to apply
to all “images on a screen provided for use in theoperation of the article,” including the initial
menu display, etc. of composite articles that havebeen considered to compose a design, and for
Article 2, paragraph (1) to apply only to “essential● 4 ●IIP Bulletin 2010

display images in light of the completion ofarticles.”(iii) With regard to certain display images that do
not correspond to operational images as definedin Article 2, paragraph (2) of the Design Act, but
are inherent to articles of design, and fulfill thefunctions required by its display, it may beappropriate to clarify that they become subject todesign protection as “essential display images inlight of the completion of articles,” which isconsidered to be a component of a design under
the definition of Article 2, paragraph (1).
(iv) As to restrictions on configuration changes incases of images subject to Article 2, paragraph (1),a proposal may be considered to set requirements
concerning configurations, etc. set forth in 1., (4),(i), [Issue 1], (b), [Proposal 2] in cases of theabovementioned
operational
imagesasrequirements to be recognized as a single design.

Ⅲ Use of the right to obtain design
registration at an early stage
1

Revision of provisions on pledges(1) Issues
Today, in order to facilitate further promotionof the use of patents, it has been examined
whether to lift pledges for the right to obtainpatents. The establishment of a system toregister and publish changes in rights pertaining
to rights to obtain patents under application is
also examined.
Consequently, it should be considered
whether it enables the lifting of pledges for theright to obtain a design registration along with thelifting of pledges for the right to obtain a patent.
(2) Summary of examinations
If the establishment of pledges for the rightto obtain a patent is lifted, while theestablishment of pledges for the right to obtain adesign registration remains impossible as is thecase now, it is estimated that the system will be
hard to use due to its imbalance. Although theright to obtain a patent and the right to obtain adesign registration originally have similar
characteristics as property rights, if the right toobtain a patent and the right to obtain a design
registration are treated differently, such aswhether pledges can be established or not, itcannot be denied that some detriment may becaused to applicants due to mistakes, etc.

For this reason, in cases where the systemthat enables the establishment of pledges for theright to obtain a patent is reformed, theestablishment of pledges for the right to obtain adesign registration should also be made possible.
2(1) Issues
In cases of licensing work on a product toanother person, it is conducted in the form of acontract to license patent rights and design rights
related to the work of the productcomprehensively in a business transaction. Whena creation is protected by both a patent right and adesign right, if the existence of protection differs
due to the difference of systems, using thesystem can remain difficult. Therefore, there is anindication that the same system as the one used
for patents should be introduced.
Under the condition that the unilateral
licensing of a design right is not so active,
including at the stage of application, whether thedesign system should also take the samemeasures as the patent system should be
examined from the perspective of convenience ofusers based on the conditions of amendment of
the Patent Act, etc.
(2) Summary of examinations
Based on the fact that there were no
indications on the inconvenience that arises fromthe absence of a provisional exclusive license andprovisional non-exclusive license system with thedesign system as a result of the questionnaire
survey, it is found that the need to introduce aprovisional exclusive license and provisional
non-exclusive license system is not high at thismoment.
In the examination pertaining to the patent
system, such as the current patent system study
meeting, etc., the need to review the automatic
perfection of licenses has been recommended. If anatural perfection is found with the license for theright to obtain a patent, it is considered that thenecessityforregistering
provisional
non-exclusive licenses decreases comparatively.
Therefore, it is found that the necessity of
introducing the system is not so high at thismoment. It is appropriate to review the
introduction again as needed in the future basedon the usage conditions of the system under thepatent system.

● 5 ●IIP Bulletin 2010

Introduction of the provisional exclusive
license and provisional non-exclusive
license system

Ⅳ Reviewing Exemptions to Lackof Novelty
1

Whether later submission of certification
pertaining to application of exemption
to lack of novelty is allowed(1) Issues
Along with the globalization of economic
activities, the number of cases where an overseas
subsidiary company releases a new product prior
to its release in Japan has increased recently. The
exemption to lack of novelty requires certificationby the third party. There is an indication that this
imposes burden on business.
Therefore, the adoption of more flexible
choices as to the time of submission of the
documents certifying the fact of lack of novelty is
indicated.
(2) Summary of examinations
If declaration at the application andsubmission of certification within the prescribedperiod from the application are not required, it may
provide a certain benefit to applicants, while it may
be detrimental to the third party. This is likely todamage promptness of overall design examination
during the examination of the Patent Office.
In addition, the operational burden of
applicants, etc. will not be reduced nor will it
become difficult to provide sufficient certification
when responding to notification of grounds forrefusal as time elapses from publication.
Therefore, as a result, it is also considered thatthe possibility that a right cannot be obtained forthe design will increase. Consequently, it isconsidered that there is little need to change thecurrent system based on these points.
2

The period subject to the exemption tolack of novelty(1) Issues
The Design Act establishes provisions ofrelated designs in Article 10 and enables theregistration of similar designs within a certain
period by the same applicant. However, thisrelated design system is an exemption fromdouble patents (prior and later applications),
while it does not constitute an exemption torequirements of novelty. Therefore, in cases
where an article, for which a design of priorapplication for design registration is worked, ispublished before filing a later application, its
improved design lacks novelty due to the

published article and, therefore, the period to
obtain additional protection as a related design
becomes limited.
In response to this situation, expanding theperiod to which the exemption to lack of novelty
applies is indicated.
(2) Summary of examinations
Expansion of the period to which exemption
to lack of novelty applies is considered to havecertain effects, such as that applicants will betterenjoy the period allowable for later submission ofa related design, etc. However, in addition to thefact that the expansion of the period may increase
the risk of rejection based on work of a similar
design by the third person after publication, it will
require a long time, more than one year after
publication of the prior design, when the later
improved design may be rejected due to an own
prior design. Therefore, it is presumed that an
application for design registration that canactually enjoy the expansion of the period toapproximately one year is limited. In order toimprove the design system so it is convenient for
more applicants, it may be necessary to facilitate
the comprehensive revision of provisions
concerning treatment of own prior designs, suchas requirements for application of novelty andrelated design systems, etc.

Ⅴ Ideal Design System (Proposal)
There were many opinions and requests
related to the design system in this researchstudy. These indications are seen as guidelines
for considering the ideal design system.
Therefore, based on these indications, proposals
for the ideal design system are summarized asfollows in consideration of various issues, such as
the strengthening of company competitiveness,promoting the use of valuable designs for brandstrategies, and promoting international harmony.
1

Method of the design system to promote
the strategic use of designs(1) Method to protect a design in later
applications that are similar to one’s
own prior design
It may be necessary to facilitate
comprehensive revision of the treatment of adesign in a later application that is similar to an
own prior design in order to support a company’s
long-term brand strategy by using designs.

● 6 ●IIP Bulletin 2010

(i) Is it appropriate to consider the introduction ofa system to extend the period in which a design ina later application is treated as an exemption tolack of novelty only in cases where the prior
design is the applicant’s own registered design ora design pertaining to the application for design
registration?
(ii) Is it appropriate to consider a later application
for a related design in the direction of further
easing time requirements?
(iii) If it is checked whether a design in a later
application is similar to the applicant’s own prior
design and convenient means are provided tomake some public notice, is it possible to respondto certain needs of the applicants?
(2) Method to extend the use of the partial
design system(i) With regard to the amendment to expand (tochange dashed lines to solid lines in thedrawings) the part for which a design registrationis requested, can the examination be started toallow the adjustment of changing them to a solidline only in cases where it is disclosed (with thedashed lines, etc.) from the beginning of theapplication? Along with this examination, can an
examination begin as to whether the amendmentfrom partial design to full design is allowed?
(ii) With respect to the amendment to reduce (tochange solid lines to dashed lines in thedrawings) the part for which a design registrationis requested, since it limits the characteristics ofthe part that was indicated at the beginning of theapplication and for which a design registration isrequested, a wider range of rights may beconsidered to be involved. Therefore, it may benecessary to respond to those cases carefully.
(3) Promoting clarification of design rights
by provision of peripheral informationof applied designs(i) Can an examination be started to determine
indices for leveling the standards of publication ofreference document information as publicly
known designs that exist peripheral to registered
designs?
(ii) Can an examination be started in order to
respond also to peripheral information other thanreference document information that has been
published in the Design Gazette as soon as anenvironment, such as a system, etc., is developedin the future?
(4) Method to define designs for screen
designs
The appropriateness of the introduction
should be examined constantly and carefully
based on the current status of protection, effects
from the introduction of the system and theawareness of design system users in Japan.
2(1) Examination of the diversification of
application procedures
Can an examination be started on the
introduction of a system to secure application
dates promptly by easy and inexpensive
procedures, or a system under which a design
strategy to obtain a right within a certain period
can be considered, such as having the application
date secured by filing preliminary applications for
multiple design proposals so that the design forwhich the right is requested can be selected
subsequently?
(2) Mitigation of requirements for submissionof drawings(i) Can an examination be started to allow theomission of drawings attached to the application
at applicant’s judgment only in cases where asingle design can be clearly identified? In thatcase, it may be necessary to organize issues fromthe perspective of international harmony.
(ii) Can an examination be started as to therequirements for the submission of drawings ofpartial designs concerning whether the extent towhich the “location, size, and range” of articles
pertaining to the design and the part for which adesign registration is requested is sufficient
disclosure?
(3) Introducing a one application system
for multiple designs
Can we examine allowing statements ofmultiple articles pertaining to a design in an
application in cases where the same configuration
is used with multiple articles?
3

Other

In cases where the introduction of the rightlicensing system and development of relief
measures for misappropriated applications are● 7 ●IIP Bulletin 2010

Method for the design system to allow
diversified methods to obtain a rightexamined under the patent system, it may beappropriate to examine them under the design
system at the same time.
(Senior Resacher: Nobuhide HAYAKAWA)● 8 ●

IIP Bulletin 2010