U.S. Registration Requirements: U.S. design patents are part of the Patent Act and require \na new, original, and ornamental design for an article of manufacture.'' Therefore, in addition to noveltyand non-obviousness, the design must also have ornamentality as a condition for registration. Novelty is judged from the point of view of anordinary observer, anda design that gives the same overall impression as a design that became known before the effective filing date is considered to be lacking novelty. In this case, even if the fields (uses and types) of the goods being compared are different, this will not be taken into account when determining novelty. Non-obviousness corresponds to the Japanese term "difficulty in creation," and requires that the design be one that would not be easily conceived by an ordinary designer in the field, considering the prior design. Furthermore, in the United States, it is important for a design to have aesthetic decorativeness rather than a shape that is purely derived from function (shapes determined by function are not protected), and this is considered a requirement for designability (decorativeness). For example, if a product's shape is essential to its function and there are no decorative elements, it will not be eligible for a design patent. U.S. law also provides a grace period for pre-filing self-disclosure of design patents, and an exception to lack of novelty is granted within one year of publication by the creator (in the United States, there is a grace period of one year). This is applied based on the time of filing, so even if it was published within one year immediately before filing in Japan, it is acceptable in the United States.
Registration requirements in Japan: Japanese design law also requires novelty and non-obviousness (equivalent to non-obviousness in the US). According to Article 3 of the Design Act, designs that are identical or similar to designs that were publicly known before the application is filed cannot be registered, and designs that can be easily created will also be rejected. In Japan, the definition of a design is ``the shape, pattern, color (or combination) of an article (including parts) that arouses a sense of beauty through the sense of sight'', and purely functional shapes that do not create a sense of beauty (aesthetics) are not subject to protection. In Japan, novelty is also said to be determined from the viewpoint of the general consumer (user = consumer), and in practice, as in the United States, it is determined by comparing the overall shape with a conventional design. However, in Japan, it is assumed that the uses and functions of the articles being compared are the same or similar, and even if the shapes are the same, if the articles have completely different uses and functions, then the designs will be treated as different. For example, a medal and a chocolate with the same design are considered to be dissimilar because they are different products. In this way, in Japan, designs are considered inseparable from goods, so similar shapes applied to goods in different fields do not directly compete with each other, whereas in the United States, the difference is that novelty and non-obviousness are examined regardless of the field of goods. Furthermore, JapanThere is also an exception system (grace period) for loss of novelty based on self-disclosure, and recent legal reforms have made it possible to apply an exception for self-publication within one year before filing (previously 6 months). However, in Japan, certain procedures are required at the time of application (application for exception application, submission of supporting documents, etc.), which is different from the United States, where application is automatically applied without any formalities. In addition, in the United States, fonts, icons, and screen displays can also be protected as "designs for manufactured articles," and the scope of designs is relatively wide.In Japan, too, the 2020 legal reform made it possible to protectimage designs (screen displays and icons themselves), but there has been a history of placing emphasis on article-like properties. In general, the registration requirements in both the United States and Japan are largely the same, such as novelty and non-obviousness, but there are differences in the system, such as the way goods are defined, the use of grace periods, and the specification of decorative requirements.
Application procedures in the United States: When filing an application for a design patent in the United States, it is basically done in a format similar to a patent application. Specifically, in a document that corresponds to an Application, enter applicant information and inventor (creator) information, attach Drawings, and include a concise Description of the design and Claims as parts equivalent to the specification. U.S. design patents usually have only one claim, which is written in the standard language, ``The ornamental design for , as shown and described.'' Detailed written descriptions are often the bare minimum, as the drawings show the details of the design. It is also legally required that the inventor submit an oath/declaration (Oath/Declaration), in which the inventor submits a written declaration to the USPTO that he or she is the creator of the design, either at the time of filing or after filing. Furthermore, there is an obligation to disclose any relevant prior design documents known to the applicant in theInformation Disclosure Statement (IDS). Unlike Japan, U.S. applicants are obligated to disclose prior designs, and failure to do so may be considered inequitable conduct and may restrict the enforcement of rights even after registration.
In the United States, the principle is one application for one design, but in practice it may be allowed to include multiple embodiments (embodiments) in one application. This is a case where multiple designs are judged to belong to a single creative concept, such as variations in shape or cases where an entire design and its partial designs are included together. If the application examiner determines that the single case requirement is not met, a Restriction Requirement will be issued and the application will need to be divided or the scope of claims (examples) must be narrowed down. On the other hand, if similar designs are filed separately, a reason for refusal may be raised for lack of obviousness by citing the earlier application in the later application, and in order to deal with this, there are cases where a terminal disclaimer (a procedure for ending the term of the later application on the same day as the earlier application) is carried out. In this way, in the United States, there is a strategy to cover multiple designs in one application, but care must be taken because division may be necessary depending on the examiner's judgment.
Examination is based on substantive examination even for designs in the United States. After filing an application, an examiner specializing in designs at the USPTO searches for prior designs and examines novelty, non-obviousness, designability, etc. The first examination result (office action) will be notified in an average of 8 to 12 months. If there are any reasons for refusal, you will address them through written opinions and amendments, and if registration is approved after communication with the examiner, a design patent will be issued after payment of patent fee. Applications for design patents in the United States require fees such as application fees, examination fees, and issuance fees.For example, for large companies (regular-sized applicants), the total fee is about $1,000 to $1,500 at the time of filing. > (basic application fee of $250 + search fee of $160 + examination fee of $160, etc.), and at the time of registration (at the time of patent issuance), an additional approximately $1,000 (planned to increase to $1,300 in 2025) as an issuance fee. There is a system where small and medium-sized enterprises and individuals (Small/Micro Entities) can reduce the amount to half or one-fourth of that amount. Regarding maintenance annuity, US design patents have the characteristic that there is no obligation to pay annuity (maintenance fee) during the term of the patent (only the fee at the time of filing and issuance).
Application procedures in Japan: Japan has an independent design law procedure for application for design registration. In the Application Form, enter the name of the design (product name), creator/applicant information, etc., and submit Drawings or Photographs (Recent amendments have made it possible to apply with photographs and CG drawings). In Japanese design applications, it is not necessary to write claims, and the submitted drawing itself defines the scope of the right. If necessary, a "description of the article to which the design pertains" or "detailed description of the design" may be included, but these are supplementary items that do not directly affect the interpretation of the scope of rights. When filing an application for a partial design, a method is used to identify the relevant part by drawing other parts in the drawing with broken lines, etc. (details will be described later). In Japan, the principle is one application for one design, and unlike in the United States, it is basically impossible to include multiple designs in one application. If you want to protect multiple variations of your design, you must file each one separately. However, there is a system called the related design system, which allows designs similar to the main design to be linked and granted rights as related designs with the same filing date. In this case as well, applications are filed separately, but there are linkage rules for related designs, such as limitations on the duration of the design that extend back to the filing date of the main design (the 2020 amendment expanded the period in which applications can be filed for related designs). In Japan, partial design is also an independent application category, and it is possible to apply for only a part of a product as a design. Unlike in the United States, it is not allowed to amend or change the design to a partial design later, and it is necessary to submit drawings as a partial design at the time of filing.
Examination and period: Japan also conducts substantive examination under the examination and registration system, where design examiners at the Patent Office conduct prior design searches and check novelty, ease of creation, etc. In recent years, the average time it takes for a Japanese design application to receive a notification of the first examination has been around 6 to 7 months, and if things go smoothly, there are many cases in which a decision to register can be made within 8 to 12 months from application (this varies depending on the case). If the design is approved for registration, the design right will not be granted until the Establishment registration fee is paid. The establishment registration fee is paid in one lump sum for the first to third years at the time of registration. For example, in the case of a design, the registration fee is 8,500 yen per year x 3 years = 25,500 yen (as of 2022). From the 4th year onward, you need to maintain your rights by paying an annual pension, which is set at 16,900 yen for each year from the 4th year until 25 years. The Application fee for a design application in Japan is relatively low at 16,000 yen, and there is no need to request an examination (examination is done at the same time as the application), so filing costs are kept low. Furthermore, Japan has a Secret Design System, which allows designs published in official gazettes to be kept private for up to three years after registration. This allows us to delay the release of designs to coincide with new product announcements. On the other hand, In the United States, pending designs are, in principle, kept private (there is no public disclosure system for design applications, and they are made public only after they are issued as patents), so the situation is different in that they are automatically kept confidential from application to registration. In general, in terms of application procedures, the US requires patent-like procedures (claims, oaths, IDS submissions, etc.) and costs are high, but there are no maintenance costs, whereas Japan has simple procedures and low costs, but requires annual maintenance costs.
United States: The term of a U.S. design patent is 15 years from the date of issue (date of registration). Previously, the term was 14 years, but due to the 2015 legal reform (amended with accession to the Hague Agreement), it has now been extended to15 years . During this period, there are no annual maintenance fees, and protection continues from application to expiration without any additional costs. Additionally, in the United States, a design application is not made public unless it is patented, so the 15-year countdown from the date of application begins at the time of issuance.
Japan: The duration of design rights in Japan has been extended in recent years to 25 years from the filing date (revised law effective April 1, 2020. Prior to that, the term for applications was ``20 years from the date of registration''). The revision has resulted in a longer protection period compared to other countries. Since the starting point for calculating the duration is the filing date, protection will be provided for a maximum of 25 years, including the period required for examination and registration. For example, if the application is registered one year after the application, the effective protection period will be approximately 24 years from the date of registration, so there is no loss of benefits even if the application is registered early (under the old system, the effective protection period would be shortened if the examination took time). It is also important to note that in Japan, annual pension payments are required (annual payments are made until the 25th year). Furthermore, Japanese design rights can be terminated even before the expiry of the term if the design right holder abandons them, and the rights will also expire even if the pension is not paid. The difference is that U.S. design patents have a short term but do not require maintenance, while Japanese design patents have a long term but require maintenance.
US Infringement Determination: Infringement of US design patents is determined by an ``ordinary observer'' test. Specifically, the standard is whether there is a risk that an ordinary purchaser of the subject product, when looking at the design of the suspect product, might mistakenly believe that it is the same as the design patented product. Thisjudgment of similarity based on overall observation has been a traditional test since the U.S. Supreme Court decisionGorham Co. v. White (1871), and was re-established in the Egyptian Goddess case in 2008. The Egyptian Goddess decision eliminates the need for the previously considered "point of novelty" test and provides a method for determining whether a design is substantially identical when viewed as a whole, taking into account the existence of a prior design (and taking into account the difference in impression from an existing design). In the United States, the claim ofa design patent is the shape itself shown in the drawing, and the solid line portion of the drawing constitutes the scope of the right. The part drawn with a broken line is the part that is not claimed as a right (excluded) and will not be taken into account in determining infringement. Even if the accused object is not exactly the same as the patented design, it is considered an infringement if it is almost the same in appearance, but on the other hand, the visual impression of the entire design is more important than the differences in details. Furthermore, under US law, the Doctrine of Equivalentsdoes not apply in principle, just as it does to patent claims, and in the case of designs, there is all about the visible design itself. In addition, in determining infringement, even if the accused product is a product with a different purpose than the "article" claimed in the patent, it can be considered as an infringement if there is substantial identity of the design (for example, even if the patent claim is "a chair design," selling a toy that imitates that design may be considered an infringement). However, if the goods are completely different, consumer misunderstandings are less likely to occur, so in practice, this often becomes a problem** within the same or similar product field.
Japan's Infringement Judgment: The success or failure of design right infringement in Japan is determined bywhether the registered design (and its similar designs) and the accused design are "identical or similar" (Article 23 of the Design Law). This determination of "similarity" is carried out in two steps. First, it is assumed that the accused product and the registered designer's product are the same or similar in terms of the use and function of the product. If the articles are completely different, their designs will be treated as dissimilar, no matter how similar their shapes may be. Next, if the products are found to be identical or similar, we compare the commonality of the design form (the design itself). Specifically, the feature points of the constituent elements and shapes of both designs are compared to determine whether the overall aesthetic impression is the same or not. Japanese court precedents tend to place emphasis on the similarity of the main parts of the design (particularly the distinctive parts of the design that attract the attention of customers). If the similarities are significant and the differences are only in the details, it is likely to be judged as similar, whereas if there are clear differences in the main parts of the design, it will be judged as dissimilar. For example, if the main design concept is different between the registered design and the accused design, or if the details are similar but the overall silhouette and proportions are different and the impression is different, then the design is considered dissimilar. Based on the above, in Japan, infringement of design rights is established when both "same/similarity of articles" and "sameness/similarity of form" are satisfied. Compared to the United States, the scope of ``similarity'' in Japan is said to be a little wider, with emphasis being placed on a common sense of aesthetics rather than small differences in the overall design. On the other hand, the point that different goods do not constitute infringement is a unique requirement** in Japan.
Damages and Remedies: In the United States, in the same way as with other patents, it is possible to seek injunctions (orders to prohibit infringing acts) and damages for infringement of design patents. Of particular note regarding damages is the ``Additional Remedy for Design Patent Infringement'' stipulated in U.S. Patent Law § 289. The same article stipulates that ``the infringer must pay the total profit obtained from the sale of the infringing product to the right holder,'' and the amount of profit per infringing product x sales volume = total profit may be directly recognized as damages. This is a powerful remedy unique to design patents, and is also known as the confiscation of all profits from infringing products (entirement rule). For example, in the famousApple vs. Samsungsmartphone lawsuit, Samsung's smartphones were found to infringe Apple's design patents (iPhone housing design, etc.), and the jury awarded a huge compensation of approximately $1.05 billion (equivalent to Samsung's entire profits on the product). Subsequently, in court and Supreme Court judgments, the scope of ``goods'' to which ``gross profit'' is applied became a point of contention, and the case was remanded on the grounds that there are cases where profits should be calculated in terms of each component rather than the entire smartphone. In the end, the amount Samsung paid Apple for design infringement was reduced to approximately $500 million in a settlement. In 2016, the U.S. Supreme Court held that the "article of manufacture" in Article 289 does not necessarily refer to the entire finished product, but in some cases can be interpreted to correspond to a part of the product, indicating that in the future, if the infringing design is part of the product, the amount of compensation may only be the profits corresponding to that part. Nevertheless, in the United States, there is scope to obtain full compensation of sales profits for design infringement**, which provides a great deterrent and bargaining power for design rights holders. In addition, in the United States, punitive damages (up to 3x damages) for willful infringement are also applicable in the same way as for other patents. Additionally, by notifying the customs of your design registration, you can take advantage of the system to stop counterfeit products at the import stage.
In Japan, the civil remedies for design right infringement are the right to injunction and right to claim damages, which is almost the same scheme as in the case of patent right infringement. Similar to the Patent Act, the amount of damages can be calculated by selectively proving either ①Lost profits of the right holder, ②Profits of the infringer (excluding the portion exceeding the right holder's production capacity), or ③amount equivalent to license fees (license fee), and they can be used together as long as they do not overlap (mutatis mutandis provisions such as Civil Code and Patent Law Article 105-3). The infringer's total profits will not be compensated in full; if the design is related to a part of the product, its contribution will be taken into consideration. As a result, the amount of damages awarded in design lawsuits in Japan is rarely as huge as in the United States, and is generally in the range of several million to tens of millions of yen (depending on the market size, of course). A well-known example of a design infringement lawsuit in Japan is a case in which an injunction/destruction order and tens of millions of yen in compensation were ordered for the imitation of the design of an industrial product. Japan also has criminal penalties, and serious infringements of design rights can be punished with imprisonment for up to 10 years or a fine of up to 10 million yen (for corporations, a fine of up to 300 million yen) (Article 69 of the Design Law).
Case law trends: In the United States, the aforementioned Apple vs. Samsung case dramatically increased the importance of design rights, and design patents have since been actively utilized in high-tech fields. Also, recently, in the LKQ Corp. v. GM case, standards for determining non-obviousness of design patents were discussed. In 2024, the Court of Appeals for the Federal Circuit (CAFC) en banc ruled that the long-standing Rosen-Durling test (design-specific non-obviousness determination framework) can be invalidated to the extent that it contradicts the spirit of the Supreme Court KSR decision, and held that a flexible non-obviousness determination similar to utility patents should be applied in the future. Some have pointed out that this change will increase the likelihood that U.S. design patents will be invalidated in situations where their validity is contested. On the other hand, in Japan, there are not many famous precedents regarding design infringement in recent years, but cases such as the "bag design case" in the 1998s have shown methods for identifying essential parts of designs and determining similarity. The 2020 amendments have made it possible to use strategies to extend rights using related designs, and new points of contention may be considered, such as the distinction between the use of the main design and related designs in infringement lawsuits. Overall, the United States has a legal system that can result in huge damages under the jury system, andJapan is characterized by stable trials with a specialist division (Intellectual Property High Court), but there are large differences in the system in terms of compensation amounts and deterrence.
Hague Agreement Membership: Both the United States and Japan joined the Hague Agreement, an international design registration system, in 2015. Therefore, companies can now use the Hague International Application to apply for design protection in multiple countries (Contracting Parties) witha single application. If you file an international application that includes the United States (USPTO) or Japan (JPO) as designated countries, it will be sent to the designated country's office after a formality examination at the WIPO International Bureau in Geneva. The United States is a substantive examination country by examiners, so even if an international application is accepted, the USPTO will examine it for novelty, non-obviousness, etc. in the same way as it would for a domestic application, and if there are reasons for refusal, it will issue a refusal. In the case of designation in the United States, as a general rule, notification of rejection is required within 12 months from the date of international publication.If there is no notification of rejection, the design will be registered (design patent granted) in the United States. Japan also conducts a substantive examination, so it is determined whether or not there is a refusal within 12 months after designation. In a Hague application, if you receive a notification of reasons for refusal from the office of each country, you will not be able to obtain protection in that country unless you respond through a local representative, just like a normal foreign application via the Paris Convention.
Advantages and points to keep in mind when filing international applications: Using the Hague Agreement has the advantage of being able to manage design rights in multiple countries with a single application. Application fees can be paid all at once, reducing the need to submit duplicate documents for each country. This is especially useful when filing a registered design with the European Union Intellectual Property Office (EUIPO) or a package application involving multiple countries such as South Korea and China. With both the United States and Japan joining the Hague System, Japanese companies are increasingly filing U.S. design applications under the Hague System. However, there are some caveats. Unification of drawings (design expressions) is one of them. Since the representation format and standards of drawings required by each country are different, it is necessary for one set of drawings to meet the standards of all designated countries. For example, in Japan, only line drawings are acceptable, but in the United States, shading and complete six-sided drawings may be required. If the drawings were created at the time of application in Japan, they may not meet the US standards and may be rejected in the US as they are.g>Revisions to drawings should be considered before international filing. The US-specific usage of dashed lines (described below) and shading methods must also be considered. In Hague applications, there are basically strict restrictions on drawing amendments after filing, and if a priority claim is involved, it is desirable to submit drawings that meet the requirements of each country at the time of filing. Therefore, if a Japanese company first files a design application domestically and then uses the drawings to file a Hague application specifying the United States (or another country), it is recommended that they prepare internationally acceptable drawings from the time of filing in Japan. In particular, if you plan to specify the United States, you can avoid problems that cannot be corrected later by preparing US-style drawings (with sufficient views and shading) at the stage of filing the application in Japan.
Also, it is necessary to pay attention to Hague applications that include multiple designs in one application. The Hague system itself allows up to 100 designs to be included in one international application, but in countries such as the United States and Japan, where domestic law allows one application for one design in principle, the application may be rejected as a violation of unity. If the designated countries include the United States and Japan, it is practically safer tofile an international application for each designseparately. If you include multiple designs in one international application, you may receive a rejection notice from the USPTO or JPO stating that ``only one of them is acceptable,'' and as a result, you may not be able to obtain rights to some of the designs. Therefore, the practical solution is to apply the principle of one design per application for Hague applications involving the United States and Japan.
Other practices: When the United States joined the Hague Agreement, it made some changes to its design legal system, extending the term of design to 15 years as mentioned above, and also dealing with international registration applications. In a Hague application that designates the United States, the applicant of the international application is considered the design inventor under US law, and must later submit an oath to the USPTO (this point is similar to a regular US application, but there are some additional filing procedures when filing via an international application). For Japanese companies, the Hague system is convenient when filing applications in Europe and the US at once, but they still need to be careful about procedures unique to US applications (such as the obligation to submit an IDS and declarations). However, even if you apply via an international application, as long as it passes the substantive examination in the United States, you will be granted the same design patent as if you applied directly, and the same is true in Japan. Furthermore, Direct application by claiming priority under the Paris Convention continues to be a common method; for example, there are many cases in which a Paris route application is filed in the United States within 6 months of filing in Japan. The choice of whether to use The Hague or to apply directly will depend on the number of designated countries, costs, and procedural burden. Overall, with the United States and Japan becoming members of The Hague, international design strategies have become more flexible, but it is necessary to fully understand the differences in examination standards in each country when planning drawings and filing applications.
US Drawing Requirements: Drawings are the core of a design patent application, and the USPTO requireshigh-quality, detailed drawings. Basically, all views of the front, back, left and right sides, top (plane), and bottom of the product must be submitted as six-sided (orthographic) views. If it is a three-dimensional object, it is recommended to submit aperspective view in addition to these. In short, it requires full disclosure of the shape when viewed from all angles. Each diagram must be consistent with each other and must depict a consistent shape across all diagrams. If there is even a slight mismatch in shape between the drawings, it will be flagged as a flaw in the review (for example, a line drawn in one drawing may be missing in another drawing, etc.). It is strongly recommended that figures be drawn using line drawings (black line drawings) and shading to express three-dimensionality and surface irregularities and curves. In particular, in the case of a partial design (where only a part is claimed), it may be required to clearly indicate the scope of the right by shading that part. On the other hand, it is said that it is better not to submit cross-sectional views if irregularities in the appearance can be seen by shading. This is because cross-sectional views are also considered valid drawings for the purpose of interpreting rights, and showing unnecessary cross-sections may unnecessarily limit the scope of rights. Utilizing Broken lines is also important for US drawings. The part drawn with a dashed line is interpreted as ``environmental or unclaimed part'' and is not included in the scope of the design claim. For example, if you are claiming a partial design for a certain part, you would draw the entire product and use solid lines for the relevant parts and broken lines for the rest to express that you are claiming only the shape of the solid line parts. Also, all structures that purely indicate the environment (such as hands and people that indicate how the product is being used) are drawn with broken lines. A feature of American drawings is that they clearly limit the subject of protection by using solid lines and broken lines. In the United States, there are exceptions in which photographs and CG drawings are allowed, but permission must be obtained in advance by submitting a Petition. In principle, line drawings are used only when there are special circumstances such as textures or gradations that cannot be expressed with line drawings. Even if photo submission is permitted, it is preferable to use line drawings, as color photos have disadvantages such as the scope of rights being limited to the color of the photo. It is also not allowed to mix line drawings and photographs, or to combine line drawings and CG. As for the drawing format, each figure should have a number such as Fig.1, Fig.2,...** and an explanation of the view name (front view, side view, etc.) in the specification. Although the U.S. Design Patent Bulletin includes a simple explanation of the drawing (e.g., "Figure 1 is a front view of the design"), it rarely includes detailed written explanations of the design. In short, in the United States, the drawing itself is everything, and it is extremely important to submitclear and uniform drawings.
Japanese Drawing Requirements: In Japan, as a general rule, six-sided drawings (six directional views) are required for design applications. In addition to drawings of the front, back, left and right sides, top, and bottom, if it is a three-dimensional object, it is common to include a perspective view (three-dimensional view). However, the Japan Patent Office has some flexibility in its handling, such as omitting some figures when the shape is symmetrical and one side is the same as the other. For example, if the item is left and right symmetrical, one side view can be omitted, or if the top and bottom are the same, the bottom view can be omitted (in that case, write in the application, ``Right side view omitted because the left and right are the same''). In Japan, shading in drawings is not mandatory, and there is no problem as long as the shape can be clearly understood from line drawings only. In fact, many of the design drawings published in Japanese public gazettes areline drawings without shading. Regarding detailed curved shapes, Japanese examinations often rely on the strokes of the drawings, and there are no situations where shading is required as much as in the United States. However, glass or transparentIn the case of bright objects, etc., use dashed or dotted lines to draw behind the transparent part, etc., to express as necessary. Regarding handling of broken lines, Japan also has a partial design system, so parts for which no rights are sought are sometimes drawn with broken lines at the time of application. For example, if you want to register only a specific part of the entire product, you can mark the unclaimed part (environmental part) with a broken line and it will be recognized as a partial design. The difference from the United States is that In Japan, in principle, amendments that change solid line parts of drawings to broken lines after submission are not allowed. In the United States, it may be permissible to make an amendment to transform the design into a partial design by making ambiguous parts into broken lines during the examination process, but in Japan, doing so is likely to be considered as adding new matter or changing the gist, and it is necessary to finalize the drawings at the time of filing. Therefore, in a Japanese application, it is necessary to first decide whether the design is a partial design or a whole design, and to clearly indicate this in the drawing. As for the description method, do not assign a figure number to the drawing, but write something like ``(1) is a perspective view of the design, (2) is a front view...'' in the ``[Brief description of the drawing]'' column. In Japanese applications, it has become possible to register designs using photographic images since around 2016, and the number of cases in which photographs are submitted for complex designs such as patterns on fabrics is increasing. However, just like in the US, if you register a color photo, you will be limited to that particular color. In recent years, in Japan, preparations are underway to introduce design applications using 3D model data as part of the 2020 revision (at the trial stage). Japan also has areference drawing system, which allows you to submit reference drawings that show the product in use and before and after deformation. Reference drawings are not included in the scope of the right, but may be considered by the examiner as an aid to understanding the design. Submission is voluntary, but care must be taken as careless reference figures may narrow the interpretation.
Differences in drawing standards between the two countries: There are cases where drawings that are accepted in Japan are not valid in the United States, and vice versa. For example, a back view that was omitted in a Japanese application may not be omitted in the United States and may be required to be completed. Additionally, details that would be fine if depicted two-dimensionally in Japan may be considered ``unclear'' by U.S. examiners and may require shading or enlarged drawings to be submitted. As mentioned above, if both countries are designated simultaneously in the Hague international application, it is necessary to prepare drawings that fill in the differences in these drawing standards. If a Japanese company files an application in the US with drawings based on Japanese local standards, they may have to redraw the drawings even if they waive priority rights if the application cannot be corrected by amendment. Therefore, it is recommended thatfor designs for which international rights are to be obtained, drawings should be prepared with US standards in mind from the beginning. Specifically, by preparing line drawings with six orientations and shading, and using them when filing applications in Japan, it will be easier to expand the application in the United States later. In this way, the difference is thatthe United States has very strict requirements for drawing quality while Japan accepts even relatively simple drawings. In terms of the strictness of the scope of rights, in the United States, shapes that do not appear in drawings are not included in the scope of rights at all, so it is necessary to take measures such as clearly indicating "broken lines" even if the parts are not visible. On the other hand, in Japan, there are examination standards that implicitly consider invisible parts to be flat, but in recent years they have become stricter, requiring reasons for refusal to be issued for unclear parts. Overall, drawings are the lifeblood of design rights, and specialized know-how is essential to create drawings that can be used without problems in both the United States and Japan.
Based on the above, the main differences between the US design patent system and the Japanese design system are summarized as follows.
| Perspective | United States (design patent) | Japan (design registration) |
|---|---|---|
| Registration requirements (Novelty, non-obviousness, design) | ・Novelty: World standard. If there is a prior design that gives the same impression to the average observer, it will be rejected (regardless of the product field).・Non-obviousness: Things that are not obvious to ordinary designers (recently, judicial precedents regarding the application of KSR standards have changed).・Designability (decorativeness): The shape is not only due to function, but also has aesthetic characteristics.・Others: Designs belong to "manufactured articles" (fonts and GUIs are also treated as articles and protected). There is a grace period of one year from self-publication (no formalities required). | ・Novelty: World standard. Rejection if it is the same or similar to a publicly known design (comparison with article and shape).・Difficulty in creation: Something that a person skilled in the art cannot easily conceive of (equivalent to non-obviousness in the United States).・Aesthetic requirements: Forms that create a sense of beauty through vision (excluding purely functional shapes).・Other: The design is inseparable from the article. It does not apply to goods with different uses or functions. There is an exception period (procedures required) of 1 year from self-publication (6 months → 1 year with the 2020 revision). |
| Application procedure (Documents, examination, fees) | ・Application documents: Claim (one item) required. Precise line drawings and shading are recommended for drawings. An oath must be submitted by the inventor. Obligation to disclose prior design information in IDS.・Multiple designs in one application: In principle, one design. However, multiple examples within a single concept are allowed (restrictions may be requested during examination). Post-correction to partial designs is possible.・Examination: Substantive examination (novelty/non-autonomy). It takes about 8 to 12 months until the first notification. If rejected, respond with a written opinion/amendment.・Cost: At time of application: approximately $1,000 to $1,500 (large companies), at time of publication: approximately $1,000. There is a reduction for small scale. No annual maintenance fee. | ・Application documents: No claims required (drawings are the scope of rights). Submit the item name, drawing or photo. Partial designs are displayed with broken lines as necessary. There is no obligation to submit an oath or IDS.・One application, one design: In principle, one design/application. Similar designs can be protected separately under the Related Design system (a separate application is required). It is not possible to make amendments to change the design to a partial design after filing the application.・Examination: Substantive examination system. It takes an average of 6 to 10 months to get the first results. If rejected, respond with a written opinion/amendment. No request for examination is required (automatic application examination).・Cost: Application fee 16,000 yen. Registration fee: 25,500 yen (one-time payment for 1 to 3 years). Pension 16,900 yen/year from 4th year onwards. Annual maintenance fee required (up to 25 years). |
| Protection period | ・15 years from the date of registration (current law since 2015). - No interim pension required (no maintenance fees for 15 years).・The process from application to registration is closed to the public (there is no public disclosure system for design applications). | ・25 years from the filing date (2020 revised law. Before that, it was 20 years from the registration date).・Pay pension every year and maintain for up to 25 years.・No application announcement (published for the first time at the time of registration). **Undisclosed for up to 3 years (secret design)** possible upon request. |
| Infringement requirements (proof/scope) | ・Criteria for determining infringement: Ordinary observer test – If it is substantially the same enough that a general consumer would misidentify it when looking at it, it is an infringement. Emphasizes comparison of overall appearance (overall impression rather than differences in details). Comparison regardless of type of product (if the appearance is the same even if the purpose is different, there is a possibility of infringement).・Scope of rights: Only the solid line part in the drawing is protected. Broken lines and unwritten sides are out of scope. The doctrine of equivalents argument is basically non-existent.・Proof: Compare the photograph/actual object of the suspect with the patent publication drawing. The plaintiff alleges and proves the commonality of the main parts (features) of the designs. Defendants can also disprove the validity of design patent evidence. | ・Infringement determination criteria: Identical/similar concept – If the registered design and the product are the same/similar andthe shape is the same/similar, there is an infringement. First, check whether the products are of the same type in terms of usage and functionality (if they are in a different industry, there will be no infringement). If the items match, the overall impression of the shape is compared, and if there are no differences in the main parts that attract the attention of the consumer, it is determined that they are similar.・Scope of rights: Extends to registered designs and designs similar to them (Article 23 of the Design Law). Rights to related designs can also be exercised separately. In the case of a partial design, it is limited to that part.・Proof: The plaintiff compares the registered design drawings and the design of the accused product and claims similarities. Defendants can defend the difference in form or similarity to publicly known designs. |
| Damages (Remedy/amount) | ・Injunction request: Possible (order prohibiting the manufacture and sale of infringing products).・Damages:Forfeiture of gross profits from infringing goods pursuant to 35 USC 289. Whether it is the entire product or its parts depends on the case. Additionally, in the case of intentional infringement, punitive damages (triple damages) can be applied.・Case law: In Apple vs. Samsung, gross profit compensation was at issue and compensation amounted to approximately $500 million. High compensation received attention and the number of design applications increased. Preventing imports through customs injunctions is also effective. | ・Request for injunction: Possible (injunction through provisional disposition is also possible).・Damages: Calculation similar to the patent law (lost profits, infringer's profits, amount equivalent to royalty fees, etc.). The entire gross profit is not calculated, but the contribution rate of the design is considered.・Typical amount: Usually several million to tens of millions of yen (depending on market size). There is no punitive compensation system.・Case law: Many cases regarding recognition of essential parts of designs and determination of similarity (bag design cases, etc.). There are cases where compensation and injunctions of approximately tens of millions of yen have been ordered for counterfeit products. Criminal penalties are also applicable (up to 10 years' imprisonment, etc.). |
| International application (Hague Agreement) | ・Membership status: Joined in 2015. It is possible to designate the United States in international applications.・Examination response: Even international applications undergo substantive examination at the USPTO, and if there is no notification of refusal, automatic registration (examination within 12 months of application).・Drawing Note: International drawings will be rejected if they do not meet US standards. Pay special attention to shadows and lack of visibility.・Procedure: Even if the US is designated in an international application, an inventor oath, etc. must be submitted separately. If multiple designs are included in one application, there is a risk of rejection of unity.・Direct application: Direct US application via the Paris route is also possible (priority deadline: 6 months). | ・Membership status: Joined in 2015. Japan can be designated in international applications.・Examination response: JPO conducts substantive examination. If there is no notification of refusal within 12 months, it will be registered.・Note on drawings: International drawings will be rejected if they do not meet Japanese standards. Japan does not require shading, but there is no problem if you apply for both the US and US・Procedure: Rights arise upon payment of designated country fees for international applications. If the application includes multiple designs, Japan may also partially reject the application due to a violation of unity.・Direct application: Paris route applications claiming priority are also common (within 6 months of domestic filing). |
| Drawing requirements (quality standards, broken lines, etc.) | ・Drawing quality: Detailed line drawing + shading required. Full disclosure with six sides and perspective views. Rigorous consistency checks between figures.・Dash line display: Unclaimed parts/environment are drawn with broken lines (outside the scope of rights). In some cases, amendments to make the application broken after filing are allowed.・Photographic drawings: Generally not allowed (permission required in exceptions). Color drawings are limited to that color. Line drawings and photographs cannot be mixed.・Other: Provide a brief explanation of the drawing (Fig. number assigned). Please use caution as reference figures may be subject to review and interpretation. | ・Drawing quality: Basic line drawings are acceptable (acceptable even without shading). Submit a six-sided view + perspective view if necessary. Some of the symmetrical objects can be omitted.・Dash line display: In partial designs, unclaimed parts are drawn with broken lines. Determined at the time of application, changes to broken lines cannot be amended later. The part that only shows the environment is also a broken line.・Photographic drawings: Color/black and white photos and CG drawings are also accepted (recently lifted). When registering in color, the color is limited (by convention, black and white drawings are recommended if possible).・Other: Explain each figure using (1), (2)... in the brief explanation column of the drawing. Reference drawings may also be submitted (basically, they do not affect the interpretation of rights). **(Note)** Japanese drawings may not meet the US standards, so when filing an international application, it is necessary to comply with the US standards. |
From the above comparison, it can be seen that although the basic frameworks of the US design patent system and the Japanese design system are similar, there are important differences in the application of examination standards and rules for exercising rights. When Japanese companies acquire and utilize design rights in the United States, they need a strategy that fully takes into account the strict drawing production standards unique to the United States and the risks of infringement (high compensation). On the other hand, the Japanese side is also working towards international harmonization, such as extending the term of protection and expanding the protection of image designs through legal revisions in 2020, and it will be necessary to continue to pay attention to trends in the systems in both countries. Accurately understanding the differences between each system and acquiring and exercising rights appropriately will be the key to protecting designs in the international market.
[Reference materials]
Japan Patent Office Industrial Structure Review Materials "Comparison of Design Systems in Each Country" (2011) Comparison of Application Fees and Fees
JETRO "Manual for Business Expansion in the United States - Design Patent Application" (2022) Points out regarding differences in drawing standards between Japan and the United States
JETRO "Manual for Business Expansion in the United States - Remedies for Design Patents" (2022) Introduction to gross profit compensation provisions in the case of design infringement in the United States and the Apple v. Samsung case
M&Partners “Changes to non-obviousness standards for US design patents (LKQ v. GM)” (2025) Latest case law information on determining non-obviousness of designs in the US
WIPO News “US and Japan Accession to the Hague Agreement” (2015) Announcement regarding the accession of both countries
AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).