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Leveraging Design Patents and the Japanese Design Act to Expand a Global IP Portfolio

Building and managing a global intellectual property portfolio requires a substantial investment of time and money. In recent years, design patents and registrations have presented a cost effective way to increase the size of an intellectual property portfolio. Certain intellectual property offices, such as the Japan Patent Office, present additional opportunities for applicants that can enable the deferment, or potentially elimination, of additional costs while securing design rights.

The Japanese Design Act allows for the protection of unique shapes, patterns, or colors, or any combination thereof, of an industrially applicable article (including a part of an article), which creates an aesthetic impression through the eye. The Japan Patent Office conducts substantive examination of design applications and performs a search for relevant prior art in an effort to ensure the validity of registered designs. The Japan Patent Office indicates that the average period from filing to receipt of the first notice of examination results is about six months. For design applications filed at the Japan Patent Office after March 31, 2020, the duration of the industrial design right in a registered design is twenty-five (25) years (assuming payment of the annual fees).

As the filing of a patent application in the United States Patent and Trademark Office (the “USPTO”) on an invention made in the United States includes a petition for a foreign filing license, many design patent applications naming a U.S. inventor are first filed in the USPTO, and corresponding design applications are later filed in foreign patent offices claiming priority to the original U.S. design patent application. 

Japanese design applications filed within six months from the filing date of a corresponding U.S. design patent application may claim the priority benefit of the original U.S. design patent application. It is not uncommon for a U.S. design patent application to include multiple embodiments to secure the priority date for designs claiming a varying scope. A Japanese design application claiming priority to the original U.S. design patent application may be filed as a multiple design application and subsequently split into individual design applications so that each application constitutes one design. 

Alternatively, a Japanese design application claiming priority to the original U.S. design patent application may be filed with only one design (e.g., the U.S. design patent application embodiment having the narrowest claim scope), and one or more “related design” applications can be filed after the Examiner’s Decision of Registration has issued. This “related design” system allows an applicant to designate their earlier filed Japanese design application as the “principle design” and later file a related design application which claims a similar design that would otherwise not be registerable due to a lack of novelty over the principle design. The key or unique benefit of the “related design” system, as compared to U.S. continuation practice, is that a related design application can be filed within ten (10) years from the filing date—or the earliest priority date—of the principal design application.

The requirements for filing a related design application are also minimal: (1) the applicant of the related design application must be the same as the applicant of the principal design application, (2) the design claimed in the related design application must be “similar” to the design of the principal design application, and (3) the related design application must be filed within ten (10) years from the filing date—or the earliest priority date—of the principal design application.

The Japan Patent Office provides applicants with the related design system which offers applicants flexibility when selecting their prosecution strategies. For example, applicants may file a design application in the Japan Patent Office even if a design is expected to undergo small changes before a product reaches the market, because the related design system enables the applicant to file a related design application within ten years of the original priority date.

Please contact a member of the HSE Intellectual Property team if you have any questions or would like to discuss whether filing in Japan would maximize the value of your global intellectual property portfolio.

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