[Complete version of design application Q&A] A patent attorney provides a thorough explanation from costs, period, benefits to tricks to prevent plagiarism

Introduction

"The design of a new product you worked so hard to develop. What would you do if it was imitated by another company right after it was released?"

Good design is just as important, if not more important, than functionality in determining product sales. However, without proper rights protection, there is a risk that cheap copies will quickly become available and take over the market.

What is important here is the acquisition of "design rights".

“What is the difference between a patent and a patent?”

"How much does it cost?"

"Can I register even after it has been released?"

This article is based on questions asked by many companies in the field of design applications.From the basics of design registration to strategic utilization methods to protect your business, a patent attorney provides a thorough explanation in a Q&A format. We will not only provide textbook answers, but also include "offensive and defensive strategies" that can only be explained by practitioners.

Table of contents

1. [Basics] Why is it necessary to file a design application now?

   • Q1. First of all, what is a "design right"? What is the difference between patent and copyright?

   • Q2. What kind of things are subject to design registration? (Points of the 2020 revision)

2. [Merits and risks] The meaning of filing and the risks of not applying

   • Q3. What are the specific benefits of spending money to register?

   • Q4. What are the risks if I do not apply? (Fear of reverse warning)

3. [Cost and period] Cost and schedule

   • Q5. What is the average cost for design registration?

   • Q6. How long does it take from application to registration?

4. [Strategy Edition] Techniques for creating strong rights

   • Q7. Is it possible to prevent "loophole copying" with slightly different designs? (Related designs)

   • Q8. What if I don't want someone to copy only "part" of my product? (Partial design)

   • Q9. I would like to keep the design a secret until the product is released. Is that possible? (Secret design)

5. [Trouble/Sequel steps] What should you do in a situation like this?

   • Q10. I have already announced it on SNS or at an exhibition. Is it already too late?

   • Q11. If my application is "rejected" in the examination, will I have no choice but to give up?

6. [Request version] Do it yourself or hire a professional

   • Q12. What is the difference between filing the application yourself and hiring a patent attorney?

7. Summary: Turn design into "exclusive rights" to protect your business

1. [Basics] Why is it necessary to file a design application now?

Q1. First of all, what is a "design right"? What is the difference between patent and copyright?

A. It is the right to exclusively use the "appearance (design)" of the product.

There are several types of intellectual property rights, but the targets to be protected are clearly different. A lot of people are confused about this, so let's clear it up.

• Patent rights/utility model rights

  • What to protect: The "content" of technical ideas, inventions, structures, etc.

  • Example: Smartphone communication technology, a mechanism to increase engine combustion efficiency.

• Trademark rights

  • What to protect: "Brand (trust)" such as product names and logo marks.

  • Example: Apple's apple mark, product name "iPhone".

• Copyright

  • Protected: "Created works" such as literature, academics, art, music, etc.

  • Notes: The current mainstream interpretation of the law is that, in principle, designs for mass-produced industrial products are difficult to protect by copyright (the hurdles are high).

• Design rights

  • What we protect: "Aesthetic beauty" such as the shape, pattern, and color of the product.

  • Example: The roundness of the iPhone's case, the unique shape of the chair.

Design rights, rather than patents, are the best way to protect products that have common functions but innovative and cool designs.

Q2. What kind of things are subject to design registration?

A. In addition to traditional "things," "images" and "interiors" have also become targets in recent years.

Traditionally, the Design Act protected the design of "articles (tangible objects)." However, with the development of digital technology and changes in business models, the scope of protection has been significantly expanded in 2020 with the revision of the law.

1. Image design (GUI)

   Application images on the cloud and website operation screens, which are not recorded on goods, are now protected. You can also register IoT device operation screens and smartphone app UIs.

2. Building/Interior

   It is now possible to register the exterior of a store (architecture) and the arrangement of furniture and decoration inside the store (interior) as a single design. This is a very important revision for companies whose brand is based on the store design itself.

2. [Advantages and risks] The meaning of filing and the risks of not filing

Q3. What are the specific benefits of spending money to register a design?

A. It is extremely effective in eliminating counterfeit products and requesting deletion on Amazon, etc.

1. Strong right to seek injunction

   You can legally request a vendor who infringes your rights to immediately stop sales or destroy their inventory.

2. Quick response on EC site

   When a copy product is listed on an e-commerce site such as Amazon or Rakuten, proving patent infringement is a specialized and time-consuming process, but since the criterion for design rights is ``similarity in appearance,'' petitions for deletion to the platform tend to go through relatively smoothly.

3. Improvement of brand value

   Displaying "design registered" on a product or package not only serves as a deterrent to other companies, but also gives consumers a sense of trust that the product is unique and genuine.

Q4. What are the risks if I don't apply?

A. Not only will we not be able to stop copy products, but we also run the risk of being sued by other companies.

Suppose your company sells a product it designed without acquiring the rights.

What would happen if a malicious third party saw this and filed a design application for your company's design without permission and registered it? (*Japan's first-to-file system = first come, first served)

This can lead to a terrifying situation where ``Even though the design was originally ours, we are asked to stop selling it because it infringes on the rights of another company.'' This is called a ``misappropriated application,'' and it takes a lot of effort and expense to recover it.

From a ``defensive'' perspective, it is important to securely hold the rights within your company.

3. [Cost and period] Cost and schedule

Q5. What is the average cost for design registration?

A. The total cost per case is generally around 150,000 to 250,000 yen (Japanese Patent Office fee + patent attorney fee).

Compared to patents (total price of 600,000 to 800,000 yen or more), it is possible to acquire rights to designs at a relatively reasonable price. The breakdown of costs is as follows.

• At the time of application: approximately 100,000 yen to 150,000 yen

  • [Patent Office stamp fee] Application fee: 16,000 yen

  • [Patent attorney fees] Prior investigation, drawing preparation, application preparation fees, etc.

• When registering: approximately 50,000 yen to 100,000 yen

  • [Patent Office stamp fee] Registration fee (lump sum for 1 to 3 years): 25,500 yen (*8,500 yen x 3 years)

  • [Patent attorney fees] Success fees, registration procedure agency fees, etc.

*The above is a general guideline and will vary depending on the complexity of the drawings and the response to notification of reasons for refusal during examination (written opinion/written amendment).

*In order to maintain the design right, it is necessary to pay an annuity (registration fee) from the 4th year onwards.

[Cost points]

There is a reduction/exemption system for small and medium-sized enterprises (such as half price) for patents, but as a general rule, there is no reduction/exemption system from the Japan Patent Office for design registration. Instead, you may be able to use local government's own "foreign application subsidy" or "intellectual property acquisition support subsidy". Our office also supports the use of these grants.

Q6. How long does it take from application to registration?

A. On average, it is about 6 to 8 months.

Compared to patents (as early as one year and as long as several years from the request for examination), it is faster.

If you still can't wait more than six months, we recommend using the "Early Examination System." If you meet certain requirements (already in place, filing an application overseas, etc.), the examination period can be significantly shortened to about two months on average. This is very effective when you want to time the release of a new product.

4. [Strategy Edition] Techniques for creating strong rights

If you just apply carelessly, it will become a "weak right" that can be easily circumvented. Here we introduce advanced techniques used by patent attorneys.

Q7. Is it possible to prevent "loophole plagiarism" by slightly changing the design?

A. By utilizing the "Related Design System", you can eliminate all variations at once.

The effect of a design right extends to the "range of similarity" to a registered design, but it may be difficult to determine the extent to which the design is similar.

Therefore, by applying for a set of not only the main design (main design) but also variations with slightly different colors or shapes (related designs), you can widen the scope of your rights like a net.

This will prevent competitors from attempting to evade copyright infringement by subtly changing the design. Improved designs developed later can be additionally registered as related designs within 10 years after the application for the main design.

Q8. What if I don't want someone to copy only "part" of my product?

A. Use the "partial design" system.

This is a method of acquiring rights not to the entire design of the product, but only to a characteristic "portion" (for example, the grip of a camera, the shape of a bottle cap, etc.).

Even if they are not similar as a whole, if there is a product that copies a characteristic part, you can claim that it infringes your rights. By combining overall design and partial design, you can build the strongest portfolio.

Q9. I would like to keep the design a secret until the product is released. Is that possible?

A. If you use the "secret design system", you can keep it private for up to 3 years.

Normally, once registered, the design is made available to the public as a "design publication." However, it would be a problem if information on new products leaked to rivals before they are released.

If you request a secret design at the time of filing, you can hide your design from publication in the official gazette for up to three years after registration. This is a convenient system that allows you to secure the rights and keep the secret until the release date.

5. [Trouble/Sequel] What should you do in a situation like this?

Q10. I have already announced it on SNS or at an exhibition. Is it already too late?

A. Don't give up. Relief may be available under the “loss of novelty exception.”

In principle, a design must be a "new design unknown to the world" (novelty). However, if you apply to the National License Office within one year from the date of publication and complete the prescribed procedures, there is an exceptional system in which your application will be treated as if it had not been published yet.

However, this is only an "exceptional" remedy. There is a risk that you will be at a disadvantage when filing an application overseas, or that you will not be able to compete if another company independently created the same design between publication and application. The golden rule is to "fil your application before publication," but if your patent has been published, please consult a patent attorney as soon as possible.

Q11. If my application is "rejected" during the examination, will I have no choice but to give up?

A. There is an opportunity for rebuttal. This is where a patent attorney's skills are shown.

You may receive a notice from the Japan Patent Office stating that your application cannot be registered as is (notice of reasons for refusal). The main reasons include ``similarity to existing designs'' and ``easy creation.''

On the other hand, there are many cases where By logically asserting the differences in a ``written opinion'', it is possible to overturn the examiner's decision and lead to registration. Even if you receive a rejection notice, do not give up immediately and work out countermeasures with an expert.

6. [Request] Do it yourself or hire a professional

Q12. What is the difference between filing the application yourself and hiring a patent attorney?

A. The biggest difference is "quality of drawings (= strength of rights)".

Although there are AI and electronic filing software these days, the most difficult part of a design application is creating "drawings".

Drawings used in design registration are not just illustrations. The six-sided drawings (front, back, left, right, flat, bottom) must be completely consistent, and even a difference in the type of line (solid line, broken line) can significantly change the scope of rights.

• Risks of filing on your own

  • I was asked to make corrections many times due to defects in the drawing, and in the end I was unable to register it.

  • Even if it is possible to register, the scope of the right is too narrow and it becomes a useless right that can be easily circumvented (counterfeit products cannot be excluded).

A patent attorney will understand your company's business strategy and then design a plan that will make it difficult for other companies to imitate it and secure a wide range of rights. Although expensive, the return on investment for protecting your business can be very high.

7. Summary: Protect your business by turning design into "exclusivity"

Design rights are not just for large companies. Rather, it is precisely small and medium-sized enterprises and startups whose company's fate depends on a single hit product that they need to legally protect their "design" assets.

Points of this article

• Design rights are powerful rights that monopolize the "appearance" and exclude counterfeit products.

• Be sure to apply before publication (there is a chance even after publication within one year).

• Can be obtained cheaper and in a shorter period of time than patents.

• If you want to create strong rights, hire a patent attorney who is a professional drawing expert.

For consultation regarding design applications, please contact "Intellectual Property Office EVORIX"

Our office provides intellectual property consulting from the product design stage.

Please feel free to contact us with questions such as "Can this design be registered?" and "How much does it cost?" If you provide design drawings and photos, we can also provide a free simple diagnosis.

We will do our best to support you so that your great designs don't get lost in counterfeit products.