only upon function of the articles.
In
the Industrial Property Law, the Patent Law and the Utility Model Law are
intended to protect creations of technical ideas, while the Design Law
is intended to protect designs of shapes, patterns or colors or a combination
of these in an article which produces a visual aesthetic impression.Accordingly,
if the shape of an article is necessarily determined based on technical
functions, and no substantial aesthetic creativity is applied to the shape
of the article, and if the shape of such an article were protected by the
Design Law, there would be the possibility that the Design Law itself would
permit an exclusive right on the creation of technical ideas, which is
not the original intention of the Design Law. Moreover, in an article which
is used by being connected with other articles, the shape or size of the
connecting portion of these articles is inevitably determined due to its
functions. In this case, however, if such a shape or size of the connecting
portion were protected by the Design Law, the act of connecting two articles
would automatically infringe the design right of others. It is very likely
that this problem will become more prominent as a result of the introduction
of the system for protecting partial designs. In addition, in view of the
fact that there are many countries where a design which is based only upon
function is excluded from the object for protection, it is considered appropriate
to exclude such designs from protection under the Design Law in Japan.Since
the current Design Law does not stipulate that a design application which
is rejected, and for which the rejection becomes conclusive, is deemed
never to have been made, such a rejected application will maintain the
right as a prior application over a later application. Accordingly, if
an article of a later design application is the same as or similar to that
of a rejected prior application and the shapes or forms are the same as
or similar to each other, and even though such a later design application
may have creativity over publicly known designs prior to its filing date,
this later application would be rejected due to the existence of the rejected
prior application. Since the Design Law does not adopt an automatic publication
system, there arises the "black box" problem which means that
a later application can be rejected by a prior application which has not
been published. Comparing the practice of the Design Law of Japan with
that of foreign countries using the substantive examination system, there
are almost no countries where the rejected application has the status of
prior art.In
order to resolve the problem mentioned above and also from the viewpoint
of international harmonization, it is considered that, under the new Design
Law, a rejected application is not given the status of prior art over a
later application.in the request and description in the drawings.
Under
the current Design Law, the contents of the statement in the request and
the description in the drawings are meant to represent the design for which
an applicant seeks a design registration and the contents specified in
these documents become the basis for interpretation of the design right
when the design application is registered. Thus, it is required to state
the gist of the design in these documents clearly and concisely in order
that a third party can understand the design easily. The current methods
for describing a design are objective in that the drawings described are
easily understandable and a third party can understand the design with
certainty and without misunderstanding. However, the current methods for
expressing the design are uniformized and very restrictive. Thus, many
drawings must often be presented to describe the gist or characteristic
of the created design, or even drawings which are considered unnecessary
for the determination of the gist of a design may also have to be submitted.In
view of the fact that the preparation of drawings by computer is now possible
and of the rapid developments of methods for describing designs, it is
highly desirable that various more flexible methods for describing designs
be permitted, while maintaining the clarity of the designs to be described.Accordingly,
it is intended to review and simplify the current requirements, which require
that the designs be described with a set of drawings prepared to the same
scale with orthographic projections, so that the number of necessary drawings
to express a design clearly be minimized, allowing the various ways of
expression in the drawings.In
the substantial examination procedures under the current Design Law, an
applicant is permitted to submit an argument in response to a Notice of
Reasons for Rejection. However, considering the difficulties for an applicant
to assert in an argument the features of the created design from the request
and drawings as filed, it has been requested that submission of appropriate
information be permitted in advance for consideration by the Examiner whereby
accurate and speedy examination can be attained. Moreover, the effect of
the design right extends to the registered design and designs related thereto
and the scope of the registered design is decided on the basis of the statements
in the request and the design represented in the drawings.However,
in the design Gazette published under the current Design Law, appropriate
information relating to the scope of the related design to the principal
design is not mentioned, and thus, it has been pointed out that interpretation
of the scope of the design right by a third party is not easy. In order
to solve such problems, it is being contemplated to introduce, under the
new Design Law, a system for describing the features of the created designs
which allows accurate and fast examinations as well as to help to interpret
the scope of the design right by a third party.As
designs are easily visually recognized, and the percentage of working of
design applications is high, and moreover, the working of many designs
starts shortly after the filing of applications, designs are easily imitated,
which gives rise to a significant problem. Therefore, early protection
through early establishment of the design right is desired.Nevertheless,
in view of the fact that it is sought to establish design rights having
high reliability and stability under the substantive examination system
in Japan, a certain period of time for the examination will inevitably
be required. Therefore, under the current practice, the problem has arisen
that an applicant cannot obtain a design right until after many imitations
of the design by others occur and thus, sufficient protection is not afforded
by the Design Law.The
best way to avoid copying of products and designs is to realize an early,
accurate examination at the Patent Office, and to establish a design right
at as early a stage of the application as possible after filing. Considering
the above, the Japanese Patent Office has been expediting the substantive
examination procedure and is intensively working on providing for an early
establishment of the design right for all design applications. Moreover,
for design applications which require early establishment of a design right
for the reason that copied designs are being marketed, a system for expediting
examination is now being introduced and carried out based upon a request
by an applicant on an individual, case-by-case basis.Therefore,
it is considered preferable that the current system for expedited examination
remain as it is, rather than legislating a new system in the new Design
Law.Copyright 1998 Kohno Patent Office