1‘Feature Statements’ in Applications for Design Registration

This study examined the feature statement system, eight years after its introduction, bycomprehensively surveying and analyzing the actual use of the system by applicants and theirawareness of the system.
An applicant can submit a feature statement on a voluntary basis while the relevant
application is pending. Although the content of a feature statement is published in a designbulletin, it is not deemed to be a basis for determining the scope of a registered design. Therefore, afeature statement does not have any direct influence on the “scope of right.”
In this study, a questionnaire survey and an interview survey were conducted, and thecontents of feature statements published in design bulletins were analyzed. In addition, similarsystems in other countries, which have both common points and various differences with theJapanese feature statement system, were studied.
Moreover, the possibility that the feature statement system could develop into a more
beneficial system in promoting the creation of designs, which are one kind of intellectual property,
was considered, as well as the meaning of the system from a legal perspective.

I

Introduction

The feature statement system wasintroduced when the Design Act was revisedin 1998.
A feature statement can be submitted by
an applicant voluntarily, and its content is
not supposed to be used as a direct ground forfinding a design pertaining to an application
for a design registration, for determining
similarity, or as a reason for refusal in design
examination/trials. However, by seeing thecontent of the statement, it is possible, forexample, to obtain reference information for
determining the correct scope of search in
examination.
Where an application for which a featurestatement has been submitted is registered,
the contents of the “features of the design”
and “explanatory drawings” are published ina design bulletin, and the applicant’s
subjective intention concerning the creationof the registered design can be made known
to third parties. On the other hand, suchcontents do not have any direct influence on
the “scope of right,” since they are not used asa basis for determining the scope of aregistered design prescribed in Article 24 of
the Design Act.
Now that eight years have passed since●

IIP Bulletin 2008

the introduction of the feature statement
system, this study was conducted tounderstand how users have accepted andused the system so far, and to consider adesirable future feature statement systemthat improves service for users. To do this,the study employed (1) a survey on the
introduction and use of the system, (2)questionnaire surveys and interview surveys
with domestic companies, (3) an overseas
survey and (4) discussion by a committee.

II

TrendsSurrounding
Statements

Feature1

Background of Introduction of the
SystemThe feature statement system wasintroduced when the Design Act was revisedin 1998, in order to achieve appropriate andprompt substantive examination and withthe aim of contributing to the interpretationof the scope of right.
Prior to the 1959 Act, the scope of a claim
for design registration was also supposed to
be stated under the design system. However,the statement of said scope was not adopted
in the 1959 Act, because that system had lost
substance, and because the appearance of the
2 ●form of an article is a design and is subject toprotection in its entirety. After that, prior to
the 1998 revision, discussions were held at astudy level on whether the “claim statement
system” or the “feature statement system”
was the effective method of clarifying rights.

2

Use of Feature Statements

The applications for design registration
filed between January 1, 1999 and December
31, 2006 were surveyed, targeting those forwhich a design registration had been granted,
and the total number of feature statements
published in design bulletins by May 20,
2007 was found to be 1,721.
For the top 600 companies that had filed
the most applications for design registration(total number of applications filed: 143,012),
a statistical survey was conducted on the useof feature statements for applications filed
between January 1, 1999 and December 31,
2006 for which a design bulletin had been
published by May 20, 2007. According to thesurvey, in terms of the use (status ofsubmission) of feature statements, there has
been an almost constant decrease from the218 cases (use rate: 1.38%) in the first year
(1999), and the use rate has remained at
almost the same level from 2004 onwards, at
0.2% to 0.3%.

3

Typological
AnalysisofActualFeature Statements Published in
Design Bulletins

The details of example uses of featurestatements actually submitted and publishedin a design bulletin were organized from thefollowing five viewpoints, and subjected totypological analysis.
1. Gist of the claim in statements
2. Disclosure of publicly known prior
designs, etc.
3. Methodofusing
explanatory
drawings
4. Statements peculiar to the related
design system or the partial design
system
5. Changes in the ways of using the●feature statement system
The feature statement system wasintroduced with the aim of enabling
applicants themselves to explain novelty anddifficulty of creation by indicating publicly
known designs. However, the featurestatements that were actually submitted
contained wide-ranging statements, methodsof expression and methods of using
explanatory drawings, beyond what was
intended at the time the system wasintroduced. There were indications of thefeatures of an article, explanations oftechnical features, explanations of parts that
constitute a design, materials, statements
concerning variations or interpretation of aright, colors, intention of creation andsupplementary explanations of drawings, inaddition to distinctive parts and explanations
through comparison with publicly known
designs. Regarding the methods of using
explanatory drawings, in some cases
drawings that explained the design in theapplication concerned in more detail orphotographs were submitted, in addition to
drawings of publicly known designs.
Moreover, with respect to recent uses offeature statements, compared when thesystem was first introduced, fewer applicants
disclose publicly known designs or state
explanation
throughcomparison
withpublicly
known
designs,
while more
applicants explain the design in theapplication concerned.

III Awarenessof
theFeatureStatement System among Users of
the Design Registration System
1

Questionnaire Survey

A questionnaire survey was conducted
targeting companies and agents that have
filed numerous applications for design
registration.
(Recognition of the feature statement systemand the details thereof)
About 80% of respondents are familiar
with the feature statement system, and most
respondents
are
aware
that
feature3 ●IIP Bulletin 2008

statements are not taken into account when
determining the scope of designs (Article 6(2)of the Ordinance for Enforcement of the
Design Act).
(Advantages of using a feature statement)
Many respondents chose the following
three answers: “the applicant can inform theexaminer/trial examiner of the features of thedesign for which the applicant intends toobtain a right” (78.9%), “the applicant can
explain novelty and creativity” (39.9%), and“the applicant can explain in writing featuresthat are difficult to understand fromdrawings alone” (65.3%).
(Disincentives for using a feature statement)
As for disincentives for using a featurestatement, many respondents answered thatthey found no advantages in using featurestatements (55.8%). As reasons for this,many respondents chose the following
answers: “concerns about estoppel” (57.0%),“no influence on the scope of right” (23.8%)
and “no influence on examination” (14.0%).
(Awareness of use of feature statements)
In response to the question of whether
they would use feature statements in the
future,most
respondents
answered“depending on the content of the design
application” (55.5%), while 21.4% of
respondents thought that they would not use
feature statements. There is a difference
between respondents who have experience ofusing feature statements and those who do
not have such experience. For the former,
many intend to continue using featurestatements. Specifically, over 80% of
respondents intend to use feature statementsin the future (“will actively use” [11.9%] and“depending on the content of the design
application” [70.2%]). Only 4.8% think thatthey “will not use” them.
In
addition,
regardingdesiredimprovements in the feature statement
system, respondents were divided between
the following answers: “feature statements
are made subject to examination /interpretation of rights” (31.2%) and “it isguaranteed that feature statements will not
be used in interpreting rights” (31.8%).
(Awareness among respondents who have●

IIP Bulletin 2008

experience of using feature statements)
In response to the question concerning
the circumstances of filing, most respondents
answered that they decided whether to use afeature statement depending on theapplication (58.3%). However, some answeredthat they did not use feature statements atpresent, although they had used them when
the system was first introduced (16.7%).
As for the impressions of using featurestatements, most respondents felt that it wasa convenient system (38.1%). On the other
hand, some respondents found no advantages(13.1%), and others felt that a featurestatement might cause a disadvantage(16.7%).
(Awareness of written information in thedesign system)
A survey was also conducted on items
concerning the way that written informationis perceived in the design system, targeting
not only respondents who were familiar withthe feature statement system but also those
who were not familiar with it.
As a result, more than half of the
respondents (57.8%) were positive about the
supplementary explanation/identification by
written information of a design that is
subject to protection, as indicated in the
result for question 31. Behind this result
seems to be the fact that the respondents
have experienced difficulty in understanding
a design from drawings alone when
confirming the relevant design bulletin(72.2%).

2

Interview Survey
Companies

with

Domestic

Out of the companies that responded tothe aforementioned questionnaire survey,
interview surveys were conducted with ten
companies that had answered that they had
experience of using the feature statement
system or was familiar with it.
All companies with experience of using
the feature statement system submitted afeature statement only with regard to
applications for which the submission had
been considered necessary after careful
4 ●consideration. A number of companies
expressed the opinion that they hoped thatthe feature statement system would continue
to exist as a system that they could use when
they wanted to, even though they did not use
it for all applications. Many companies
expressed the hope that the system would bemade more user-friendly through indicating
examples of statements and uses.
In addition, every company thinks thatthe statements in a feature statement clarify
or limit the scope of the relevant design right.
Companies that want to clarify the scope ofdesign rights are positive about the featurestatement system, and tend to actively
submit feature statements for design
applications for which they consider it betterto submit one. They also expressed the
expectation that the feature statement
system would be developed as a system that
contributes to clarifying the scope of rights
for registered designs.

IV Status of Overseas Systems
Similar to the Feature Statement
System1

United States

Claims are essential matters that must
be stated. 37CFR 1.154(b)(5) provides thatthe specification should include a featuredescription. According to section 1503.01 II of
the MPEP (Manual of Patent Examining
Procedure), “a ‘characteristic features’statement describing a particular feature of
the design that is considered by applicant tobe a feature of novelty or nonobviousness
over the prior art” is permissible in thespecification.
However,characteristicfeatures are seldom stated voluntarily in
actual practice.
The stated description is published in
the Official Gazette, and is also used ininterpreting the scope of protection of therelevant design right. The MPEP states that
there is a court precedent in which astatement
describing
noveltyornonobviousness in the specification wasinterpreted as limiting the claim. For design●

right infringement cases, there were no court
precedents found in which a description of
the design or a feature statement caused a
disadvantageous judgment.

2

Europe (EC, Germany and France)

Under the Community Design Systemand systems in Germany and France,
applications for design registrations are
subject to formality examination, but areregistered without being examined in termsof novelty and originality.
Although it is possible to submit
or state a “description of the design” on a
voluntary basis, under these systems, a“description of the design” is only allowed todescribe the appearance of the designindicated in drawings, and is not allowed tocontain statements concerning novelty,
creativity, disclosure of prior designs or
technical descriptions. In practice, a“description of the design” is rarely stated,
and the content thereof is merely the
direction of drawings of the design and an
explanation of dashed lines, etc.
A “description of the design” is stated forrecording purposes, and it is not used ininterpreting the scope of protection of therelevant design right.
The method of publication in a bulletindiffers among the systems. Under theCommunity Design system, the fact ofsubmission alone is published. In Germany, a“description of the design” is published upon
application by the applicant, while in France
the content of a description of the design ispublished.

3South Korea

There are both a design system in which
a design is registered after going throughsubstantive
examination,andanon-substantive examination system forspecific articles in which a design isregistered without going through substantive
examination. For a written description, a“description of the design” and the “gist of
creation” are essential matters that must be
5 ●IIP Bulletin 2008

stated. The “gist of creation” is a statement
similar to a feature statement in Japan, andis supposed to be stated (i) plainly, simply
and clearly, (ii) through comparison withprior designs if possible, (iii) with a focus on
the originally created content if the design
was created based on a famous motif, and (iv)within 300 words.
The “gist of creation” is an essential
matter that must be stated, but it is not used
in interpreting the scope of protection ofdesign rights. If the “gist of creation” is notstated, a notice of amendment is issued forthe reason of violation of the formality
requirements. However, a change made inthis regard is not treated as a change of thegist.
Prior to a revision in 2001, the “gist of
creation” was an essential matter that must
be stated, and the method of stating it waspredetermined. In addition, the “gist of
creation” was supposed to be used ininterpreting the scope of protection of design
rights. However, since the content statedtherein had already lost substance, after therevision, it has not been taken into accountany more in interpreting the scope ofprotection of design rights, and it has become
possible to state the “gist of creation” in any
form.

V

Consideration of an Ideal Form of
the Feature Statement System

1

An Ideal Form of the FeatureStatement System Seen from theLegal Perspective

Article 6 of the Ordinance for
Enforcement of the Design Act is the only
express provision that can provide a legal
basis for the feature statement system. Since
the Ordinance for Enforcement of the Design
Act is a ministerial ordinance, it is classified,in terms of the source of the law, under“orders” rather than under “laws.” It can besaid to correspond to “administrative
standards” (administrative legislation) in
administrative law study. Administrative
standards are divided, in terms of academic●

IIP Bulletin 2008

research, into regulatory orders andadministrative
rules.
However,theprovisions pertaining to a feature statement(system) are considered to largely have thenature of administrative rules. That is, theordinance can be understood as a norm thathas the nature of a discretionary standard
within an administrative organ, by which the
Ministry of Economy, Trade and Industry, asuperior
administrative
organ,
ordersacceptance of a document called a featurestatement, which is submitted voluntarily by
an applicant to a JPO examiner or trial
examiner, when the relevant application for adesign registration is pending examination,
trial or retrial.
Taking into account that the Ordinancefor Enforcement of the Design Act is anadministrative rule in terms of academic
research, the provision that “what is statedin a feature statement shall not be taken into
consideration in determining the scope of aregistered design” in Article 6(3) of said
ordinance is not supposed to be subject tojudicial review, and it should be understoodas binding only for the administrative organthat accepts feature statements – specifically,
JPO examiners and trial examiners engaged
in examination, trial or retrial. This meansthat Article 6(3) of the Ordinance for
Enforcement of the Design Act is not at allbinding for judges when the court interprets
the scope of a registered design, and thatjudges can determine how to handle a featurestatement at their discretion under the
principle of free evaluation of evidence wheninterpreting the scope of a registered design.
In terms of understanding of the current
provisions, a feature statement itself can or
cannot be taken into account in interpretingthe scope of right, and such “two-sidedness”
is considered to turn into uncertainty. It canbereasonably
expectedthatthepredictability of use of the system byapplicants will be increased if such current
theoretical conditions are stipulated in someform by law for the purpose of confirmation.
For example, possible actions include (i)stipulating more clearly in the text of the
Design Act that the information stated in a
6 ●feature statement shall not be used when
JPO examiners
and trial examiners
determine the scope of right and (ii) clearlystipulating in the text of the Design Act thatthe information stated in a feature statement
can be taken into account in interpreting thescope of right.
The problem that the feature statement
system suggests is considered to be
associated with a huge task, namely thesearch for the future of the method of
identifying the subject-matter of protection
under the design system – more specifically,
whether the system is designed to entrust to“objective” evaluation by examiners/trial
examiners/judges based only on information
on shape that is shown in drawings, orwhether the system is designed to accept
supplementary explanation by written
information in addition to the information on
shape that is shown by drawings, thereby
enabling evaluation that takes “subjective”
information provided by applicants into
account.
It is extremely meaningful for theprotection of design creations to provide
supplementary explanation by written
information, because identification of thesubject-matter of protection based on visual
information is considered to have limitations,and because it is essential for ensuring legal
stability that the borderline of thesubject-matter of protection is made clear to
the extent that a strong exclusive right canbe established. The author believes that it isalso very meaningful to promote further
study on the ideal method of identifying the
subject-matter of protection under theJapanese Trademark Act in the future,taking the feature statement system as astarting point.

2

Position of Designs in Corporate
Value and Role of the Design System– Future Significance of FeatureStatements

Regarding the position of the featurestatement system in the design system, its
direction
must
becomprehensively●

considered with a view to what will be
required in the future for the development ofindustry and the encouragement of creation,
which are the purposes of the Design Act.
Product designs have come to haveincomparably more sophisticated and diverse
meanings
than
before,includingbrand-building. Considering the position andfunction of the Design Act for the future, withregard to the subject-matter of protection fora design, it is necessary for the creator (rightholder) to at least recognize what he/she hascreated and what he/she has obtained a rightfor with respect to the design for which
he/she filed an application, and to assert
these and communicate the relevant
information to third parties, including
examiners. A design probably cannot get
beyond the realm of sensitivity anddistinctiveness unless the creator (rightholder) at least recognizes, with regard to thesubject-matter of protection for the design,
what he/she has created and what he/she has
obtained a right with respect to the design forwhich he/she had filed an application, in
relation to prior peripheral designs, andasserts these and communicates the relevant
information to third parties, including
examiners.
Under the current Design Act, it islegitimate if the name and form of an article
is indicated, and the features of a design andinformation on prior peripheral designs, etc.
for proving them are barely disclosed, with
the intention of leaving room for broadinterpretation of right. That is, it can be said
that there is insufficient explanation andthat accountability is not fulfilled. Even if
third parties, including judges, perceive thefunctionality
andindependent
distinctiveness of a form, this is just a happy
accident.
The content of creation of a form is not
limited to the content stated in a featurestatement.
However,withregardtoexpectations for extended interpretation incases where no statements were made, it isnecessary to recognize that the risk of
reduced interpretation is rather larger, since
the right holder has not fulfilled his/her
7 ●IIP Bulletin 2008

accountability.
There is concern that strengthening andenriching the feature statement system willcause costs for companies and the JPO toincrease. However, it is desired that said
system be designed in combination with the
future of the design system, since the system
is not essential for all product designs, and it
is also possible to adopt a method in which
the legal effect of the content of a featurestatement asserted by an applicant and thatof a feature statement that has gone throughthe examination process are separated.

3

Possibility of Development of the
Feature Statement System as anIntellectual Property System thatContributes to User Innovation

accumulation of intellectual assets, easily
understandable information can be provided
if design creators state the points on which
they made the best use of their inventivenessin writing. Then, the accumulation of
innovations will be possible if people whohave made new creations add value to prior
designs and clarify the added value as
written information.
Applicants have a lot of flexibility inmakingfeaturestatements.
Featurestatements also have flexibility, as they are
not used in interpreting rights for designs.
Therefore, they are easy to use as
information. It is also possible to establish amechanismforaccumulating
featurestatements as intellectual assets.

4
In order to maintain its competitiveness,
it is important for Japan to continue to
produceinnovations
andaccumulate
intellectual assets. For this purpose, it seems
important to transform innovations by users,
which have not been sufficiently used andaccumulated in the past, into intellectual
assets in an organized and systematicmanner. It is possible to ensure that
innovations continue to be produced and that
intellectual assets are accumulated, by
developing a platform that promotes many
people who have not gotten involved ininnovations (which are accumulated as
intellectual assets) in the past mechanism to
produce innovations, and by achieving amechanism that enables new users to
produce new innovations using informationon those intellectual assets.
In the present circumstances, thecontent of feature statements is notsearchable. However, such information is
expected to be developed into a mechanism
suited for accumulation as intellectual assets
and for information use through linking withother design information by similar image
searches or by hyperlinks.
Considering the feature statement
system from the viewpoint of aiming at amechanism in which general citizens who areusers of products contribute to the●

IIP Bulletin 2008

Comparative Study with Systems of
Other Countries and Consideration(Focusing on the Russian Design
System)One system in which a feature statement
is obligatory and has an important influenceon the interpretation of protection of design
rights is the design system of Russia. This
seems informative when considering asystem design that is aimed toward making
the Japanese feature statement system
obligatory and using feature statements ininterpreting the protection of design rights.
The Russian feature statement system,
in which features are expressed in writing, isclose to the claim system in the United States.
The determining factor for the scope of adesign is “claims” in the United States, but a“list of essential features” in Russia.
In the United States, claims are
expressed by drawings, and in infringementcases, judges express the claims in words
based on those drawings. Therefore, carefulattention is paid when preparing drawings,
so that parts that are neither functional nor
features of the design are not claimed.
In contrast with this, in Russia, novelty
is determined based on statements in a list of
essential features. Even if a publicly known
example is cited, reasons for refusal can be
avoided by stating parts that are not included
8 ●in the publicly known example in a list of
essential features through an amendment,
within the scope indicated in the original
drawings. In infringement cases, thedefendant’s design does not constitute an
infringement unless it has all of the features
stated in the relevant list of essential
features. Therefore, careful attention is paid
when preparing a list of essential features.
The Russian feature statement system
can be said to be the best system in terms ofclarification of the scope of right, since thescope of right is determined in words at thetime of registration. However, in Russia,
applicants bear a heavier burden than inJapan and the United States.

V

Summary

Through consideration at this study
committee, it was confirmed to a certain
extent that feature statements can play aconsiderable role, as written information
separate from drawings, in understanding
the content of a design for which an
application was filed or in creating new
designs.
For the future, it is consideredreasonable to promote the use of the featurestatement system by introducing ways ofusing and exploiting feature statements tousers. In addition, it is considered beneficial
to examine a better design of the system
based on the current feature statement
system, with reference to the systems ofother countries.
(Senior Researcher: Kumiko IMAI)●9 ●IIP Bulletin 2008