|
Design Act (Act No. 125 of 1959)
Chapter I General Provision
Article 1 (Purpose)
The purpose of this Act is, through promoting the protection and the utilization of
designs, to encourage creation of designs, and thereby to contribute to the
development of industry.
Article 2 (Definition, etc.)
(1) "Design" in this Act shall mean the shape, patterns or colors, or any
combination thereof, of an article (including a part of an article, the same shall
apply hereinafter except in Article 8), which creates an aesthetic impression
through the eye.
(2) The shape, patterns or colors, or any combination thereof, of a part of an article
as used in the preceding paragraph shall include those in a graphic image on a
screen that is provided for use in the operation of the article (limited to the
operations carried out in order to enable the article to perform its functions) and
is displayed on the article itself or another article that is used with the article in
an integrated manner.
(3) "Use" of a design in this Act shall mean the manufacturing, using, assigning,
leasing, exporting or importing, or offering for assignment or lease (including
displaying for the purpose of assignment or lease, the same shall apply
hereinafter) of an article to the design.
(4) "Registered design" in this Act shall mean a design for which a design
registration has been granted.
Chapter II Design Registrations and Applications for Design Registration
Article 3 (Conditions for Design Registration)
(1) A creator of a design that is industrially applicable may be entitled to obtain a
design registration for the design, except for the following:
(i) Designs that were publicly known in Japan or a foreign country, prior to the
filing of the application for design registration;
(ii) Designs that were described in a distributed publication, or designs that
were made publicly available through an electric telecommunication line in
Japan or a foreign country, prior to the filing of the application for design
registration; or
(iii) Designs similar to those prescribed in the preceding two items.
(2) Where, prior to the filing of the application for design registration, a person
ordinarily skilled in the art of the design would have been able to easily create the
design based on shape, patterns or colors, or any combination thereof that were
publicly known in Japan or a foreign country, a design registration shall not be
granted for such a design (except for designs prescribed in any of the items of the
preceding paragraph), notwithstanding the preceding paragraph.
Article 3-2
Where a design in an application for design registration is identical with or similar
to part of a design described in the statement in the application and drawing,
photograph, model or specimen attached to the application of another application for
design registration which has been filed prior to the date of filing of the said the
application and published after the filing of the said application in the design
bulletin under Article 20(3) or Article 66(3) (hereinafter referred to in this Article
as the "earlier application"), a design registration shall not be granted for such a
design, notwithstanding paragraph (1) of the preceding Article; provided, however,
that this shall not apply where the applicant of the said application and the
applicant of the earlier application are the same person and the said application was
filed before the date when the design bulletin in which the earlier application was
published under Article 20(3) (except for a design bulletin in which the matters
listed in Article 20(3)(iv) were published under Article 20(4)) was issued.
Article 4 (Exception to lack of novelty of design)
(1) In the case of a design which has fallen under item (i) or (ii) of Article 3(1)
against the will of the person having the right to obtain a design registration, such
a design shall be deemed not to have fallen under item (i) or (ii) of Article 3(1)
for the purposes of Article 3(1) and (2) for any design in an application for
design registration which has been filed by the said person within six months from
the date on which the design first fell under either of those items.
(2) In the case of a design which has fallen under item (i) or (ii) of Article 3(1)
as a result of an act of the person having the right to obtain a design registration,
the preceding paragraph shall also apply for the purposes of Article 3(1) and (2)
to any design in an application for design registration which has been filed by the
said person within six months from the date on which the design first fell under
either of those items.
(3) Any person seeking the application of the preceding paragraph shall submit to
the Commissioner of the Patent Office, at the time of filing of the application for
design registration, a document stating thereof and, within thirty days from the
date of filing of the application for design registration, a document proving the fact
that the design which has otherwise fallen under item (i) or (ii) of Article 3(1)
is a design to which the preceding paragraph may be applicable.
Article 5 (Unregistrable designs)
Notwithstanding Article 3, the following designs shall not be registered.
(i) a design which is liable to injure public policy;
(ii) a design which is liable to create confusion with an article pertaining to
another person's business; or
(iii) a design solely consisting of a shape that is indispensable for securing
functions of the article.
Article 6 (Application for design registration)
(1) A person requesting a design registration shall submit to the Commissioner of
the Patent Office an application stating the following matters and drawing
depicting the design for which registration is requested:
(i) the name, and domicile or residence of the applicant for the design
registration;
(ii) the name and domicile or residence of the creator of the design; and
(iii) the article to the design.
(2) Where so provided by Ordinance of the Ministry of Economy, Trade and
Industry, the applicant may submit photograph, model or specimen representing
the design for which the registration is requested, in lieu of the drawing in the
preceding paragraph. In such case, the applicant shall indicate in the application
which among photograph, model and specimen is submitted.
(3) When neither the statement of the article to the design required under item
(iii) of paragraph (1), nor the drawing, photograph or model attached to the
application would enable a person ordinarily skilled in the art to which the design
pertains to understand the material or size of the article, and by this reason such
a person would not be able to recognize the design, the material or size of the
article to the design shall be specified in the application.
4 Where the shape, patterns ( ) or colors of the article to the design is changeable
based on the function possessed by the article, if the applicant intends to request a
design registration of the shapes, patterns or colors, or a combination thereof as it
appears before, during and after the said change, he/she shall state such an
intention and include an explanation of said function of the article in the
application.
(5) Where colors of the design are applied to the drawing, photograph or model to
be submitted under paragraph (1) or (2), the applicant may omit to apply either
black or white to them.
(6) When the applicant omits to apply black or white under the preceding
paragraph, the applicant shall state thereof in the application.
(7) Where the applicant submits the drawing depicting the design under paragraph
(1) or the photograph or model representing the design under paragraph (2), if
the whole or part of the article to the design is transparent, the applicant shall
state thereof in the application.
Article 7 (One application per design)
An application for design registration shall be filed for each design in accordance
with a classification of articles as provided by Ordinance of the Ministry of Economy,
Trade and Industry.
Article 8 (Design for a set of articles)
Where two or more articles are used together and are specifically designated by
Ordinance of the Ministry of Economy, Trade and Industry (hereinafter referred to
as a "Set of Articles"), if the Set of Articles is coordinated as a whole, an application
for design registration may be filed as for one design, and the applicant may obtain a
design registration, for designs for the articles that constitute the Set of Articles.
Article 9 (Prior application)
(1) Where two or more applications for design registration have been filed for
identical or similar designs on different dates, only the applicant who filed the
application for design registration on the earliest date shall be entitled to obtain a
design registration for the design.
(2)Where two or more applications for design registration have been filed for
identical or similar designs on the same date, only one applicant, who was selected
by consultations between the applicants who filed the said applications, shall be
entitled to obtain a design registration for the design. Where no agreement is
reached by consultations or consultations are unable to be held, none of the
applicants shall be entitled to obtain a design registration for the design.
3 Where an ( ) application for design registration has been waived, withdrawn or
dismissed, or where the examiner's decision or trial decision to the effect that an
application for design registration is to be refused has become final and binding,
the application for design registration shall, for the purpose of the preceding two
paragraphs, be deemed never to have been filed; provided, however, that this shall
not apply to the case where the examiner's decision or trial decision to the effect
that the application for design registration is to be refused has become final and
binding on the basis that the latter sentence of the preceding paragraph is
applicable to said application for design registration.
(4) An application for design registration filed by a person who neither has created
a design nor is the successor in title to the right to obtain a design registration
shall, for the purpose of application of paragraphs (1) and (2), be deemed never
to be an application for design registration.
(5) The Commissioner of the Patent Office shall, in the case of paragraph (2), order
the applicants to hold consultations as specified under paragraph (2) and to
report the result thereof, designating an adequate time limit.
(6) Where no report under the preceding paragraph is submitted within the time
limit designated under said paragraph, the Commissioner of the Patent Office may
deem that no agreement under paragraph (2) has been reached.
Article 9-2 (Amendment of statement in the application or the drawing, etc., and
change of gist)
Where, after the registration establishing a design right, it is found that an
amendment made to any statement in the application (excluding the statements
listed in items (i) and (ii) of Article 6(1) and the statement made under Article 6
(2), the same shall apply to Article 17-2(1) and Article 24(1).) or to the drawing,
photograph model or specimen attached to the application has changed the gist
thereof, the application for design registration shall be deemed to have been filed at
the time of submission of the written amendment of proceedings therefor.
Article 10 （Related designs）
(1) Notwithstanding Article 9(1) or (2), an applicant for design registration may
obtain design registration of a design that is similar to another design selected
from the applicant's own designs either for which an application for design
registration has been filed or for which design registration has been granted
(hereinafter the selected design is referred to as the "Principal Design" and a
design similar to it is referred to as a "Related Design"), if the filing date of the
application for design registration of the Related Design (or when the application
for design registration of the Related Design contains a priority claim under
Article 43(1), 43-2(1) or 43-2(2) of the Patent Act (Act No. 121 of 1959) as
applied mutatis mutandis under Article 15 of this Act, the filing date of the
earliest application, the filing date of an application that is deemed to be the
earliest application under Article 4.C(4) of the Paris Convention for the
Protection of Industrial Property of March 20, 1883, as revised at Brussels on
December 14, 1900, at Washington on June 2, 1911, at Hague on November 6,
1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm
on July 14, 1967, or the filing date of an application that is recognized as the
earliest application under Article 4.(A)2 of the Paris Convention, hereinafter the
same shall apply in this paragraph) is on or after the filing date of the application
for design registration of the Principal Design and before the date when the design
bulletin in which the application for design registration of the Principal Design is
published under Article 20(3) (except for a design bulletin in which the matters
listed in Article 20(3)(iv) were published under Article 20(4)) is issued.
(2) Where an exclusive license has been established for the design right of the
Principal Design, a design registration shall not be granted to its Related Designs,
notwithstanding the preceding paragraph.
(3) A design registration shall not be granted to a design that is similar only to a
Related Design to be registered under paragraph (1).
(4) Where applications for design registration are filed for two or more Related
Designs pertaining to the Principal Design, Article 9(1) or (2) shall not apply to
these Related Designs.
Article 10-2 (Division of applications for design registration)
(1) An applicant for design registration may extract one or more new applications
for design registration out of a single application for design registration containing
two or more designs only while examination, trial or retrial of the application for
design registration is pending.
(2) Where an application for design registration is divided under the preceding
paragraph, the new application(s) for design registration shall be deemed to have
been filed at the time of the filing of the original application; provided, however,
that this shall not apply for the purposes of applications of Article 4(3) of this Act
and Articles 43(1) and (2) of the Patent Act as applied mutatis mutandis under
Article 15 of this Act (including the cases where they are applied mutatis
mutandis pursuant to Article 43-2(3) of the Patent Act as applied mutatis
mutandis pursuant to Article 15(1) of this Act).
(3) Where a new application for design registration is filed under paragraph (1),
any statements or documents which have been submitted in relation to the
original application for design registration and are required to be submitted in
relation to the new application under Article 4(3) of this Act and Articles 43(1)
and (2) of the Patent Act as applied mutatis mutandis under Article 15 of this
Act (including the cases where they are applied mutatis mutandis pursuant to
Article 43-2(3) of the Patent Act as applied mutatis mutandis pursuant to Article
15(1) of this Act) shall be deemed to have been submitted to the Commissioner of
the Patent Office along with the new application for design registration.
Article 11 （Deleted）
Article 12 （Deleted）
Article 13 (Conversion of application)
(1) An applicant of a patent may convert the patent application into an application
for design registration; provided, however, that this shall not apply after the
expiration of 30 days from the date the certified copy of the examiner's initial
decision to the effect that the patent application is to be refused has been served
(including the case where it is deemed that service of such a certified copy is made
under the provision of the Act on Special Provisions to the Procedure, etc. Relating
to an Industrial Property Right (Act No.30 of 1990)).
(2) An applicant of a utility model registration may convert the application for a
utility model registration into an application for design registration
(3) Where the period as provided in Article 121(1) of the Patent Act is extended
under Article 4 of said Act, the period as provided in the proviso to paragraph (1)
shall be deemed to have been extended only for that period as extended.
(4) Where an application is converted under paragraph (1) or (2), the original
application shall be deemed to have been withdrawn.
(5) Articles 10-2(2) and (3) shall apply mutatis mutandis to the case of conversion
of an application under paragraph (1) or (2).
Article 13-2 (Special provisions on conversion of application concerning international
applications under the Patent Cooperation Treaty)
(1) An international application that has been deemed to be a patent application
under Article 184-3(1) or 184-20(4) of the Patent Act may be converted to an
application for design registration, only after the fees payable under Article 195(2)
of said Act have been paid (or, in the case of an international application that is
deemed to be a patent application under Article 184-20(4) of said Act, after the
ruling as provided in 184-20(4) has been rendered), and, in the case of a Patent
Application in Japanese Language under Article 184-6(2) of said Act, the
procedures under Article 184-5(1) of said Act have been completed, or, in the case
of a Patent Application in Foreign Language under Article 184-4(1) of said Act,
the procedures under Articles 184-4(1) and 184-5(1) of said Act have been
completed.
(2) An international application that has been deemed to be an application for
utility model registration under Article 48-3(1) or 48-16(4) of the Utility Model
Act (Act No. 123 of 1959) may be converted to an application for design
registration, only after the fees payable under Article 54(2) of said Act have been
paid (or, in the case of an international application that is deemed to be an
application for utility model registration under Article 48-16(4) of said Act, after
the ruling as provided in Article 48-16(4) has been rendered), and, in the case of
a Utility Model Application in Japanese under Article 48-5(4) of said Act, the
procedures under Article 48-5(1) of said Act have been completed, or, in the case
of a Utility Model Application in Foreign Language under 48-4(1) of said Act, the
procedures under Articles 48-4(1) and 48-5(1) of said Act have been completed.
Article 14 (Secret design)
(1) An applicant for design registration may request that the design be kept in
secret for a period that shall be designated in the request and shall be no more
than three years from the date of the registration establishing the design right.
(2) A person filing a request prescribed in the preceding paragraph shall submit to
the Commissioner of the Patent Office, at the time of filing of the application for
design registration or payment of registration fee for the first year under Article
42(1), a document stating the following:
(i) the name and domicile or residence of the applicant for design registration;
and
(ii) the period for which the secrecy is requested.
(3) The applicant for design registration or the holder of design right may request
extension or reduction of the period for which the secrecy is requested under
paragraph (1).
(4) The Commissioner of the Patent Office shall disclose the design for which the
secrecy is requested under paragraph (1) to persons other than the holder of the
design right, when:
(i) consent of the holder of the design right to do so has been obtained;
(ii) so requested by a party or an intervenor of examination, trial, retrial or
litigation rescinding a trial decision or a design identical with or similar to the
design;
(iii) so requested by a court; or
(iv) so requested by an interested person who has submitted a document stating
the name of the holder of the design right and the registration number and
other documents required by Ordinance of the Ministry of Economy, Trade and
Industry.
Article 15 (Application mutatis mutandis of provisions of the Patent Act)
(1) Articles 38 (joint applications), paragraphs (1) to (4) of Article 43 (procedures
for a priority claim under the Paris Convention) and 43-2 (priority claims
recognized under the Paris Convention) of the Patent Act shall apply mutatis
mutandis to applications for design registration. In this case, the term "within one
year and four months from the earliest of the following dates:" in Article 43(2) of
said Act shall be deemed to be replaced with "within three months from the date
of filing of the application for design registration."
(2) Article 33 and Article 34(1), (2) and (4) to (7) of the Patent Act (right to
obtain patent) shall apply mutatis mutandis to the right to obtain the design
registration.
(3) Article 35 (inventions by employees) of the Patent Act shall apply mutatis
mutandis to creation of a design by an employee, an officer of a juridical person, or
a national or local government employee.
Chapter III Examination
Article 16 (Examination by examiner)
The Commissioner of the Patent Office shall direct the examination of applications
for design registration by an examiner.
Article 17 (Examiner's decision of refusal)
The examiner shall render an examiner's decision to the effect that an application
for design registration is to be refused where the application for design registration
falls under any of the following:
(i) the design in the application for design registration is not registrable under
Article 3, 3-2, 5, 8, 9(1) or 9(2), paragraphs (1) to (3) of Article 10 of this Act,
Article 38 of the Patent Act as applied under Article 15(1) of this Act, or Article
25 of the Patent Act as applied under Article 68(3) of this Act;
(ii) the design in the application for design registration is not registrable under
the provisions of any relevant treaty;
(iii) the application for design registration does not comply with the
requirements under Article 7; and
(iv) where the applicant for design registration is not the creator of a design, the
applicant has not succeeded to the right to obtain a design registration for the
said design.
Article 17-2 (Dismissal of amendments)
1 Where an amendment made ( ) to any statement in the application, or to the
drawing, photograph, model or specimen attached to the application has changed
the gist thereof, the examiner shall dismiss the amendment by a ruling.
(2) The ruling dismissing an amendment under the preceding paragraph shall be
made in writing and state the reasons therefor.
(3) Where the ruling dismissing an amendment under the preceding paragraph (1)
has been rendered, the examiner shall not render a decision on the application for
design registration before the expiration of 30 days from the date on which a
certified copy of the ruling has been served.
(4) Where an applicant for design registration files a request for a trial against an
examiner's ruling dismissing an amendment under paragraph (1), examination of
the application for design registration shall be suspended until the trial decision
becomes final and binding.
Article 17-3 (New application for amended design)
(1) Where an applicant for design registration files, within 30 days from the date on
which a certified copy of the ruling dismissing an amendment under paragraph 1
of the preceding Article has been served, a new application for design registration
for the amended design, the new application shall be deemed to have been filed at
the time when the written amendment of proceedings for the said amendment was
submitted.
(2) Where a new application for design registration is filed under the preceding
paragraph, the original application for design registration shall be deemed to have
been withdrawn.
(3) The preceding two paragraphs shall apply only when the applicant for design
registration has submitted to the Commissioner of the Patent Office, at the time of
the filing of a new application, a document stating a request for the application of
paragraph (1) to the new application for design registration under paragraph (1).
Article （17-4）
(1) The Commissioner of the Patent Office may, upon request or ex officio, extend
the period provided for in paragraph (1) of the preceding Article for a person in a
remote area or an area with transportation difficulty.
(2) The chief trial examiner may, upon request or ex officio, extend the period
provided for in paragraph (1) of the preceding Article as applied mutatis
mutandis under Article 50(1)（including its application under Article 57(1)）for a
person in a remote area or an area with transportation difficulty.
Article 18 (Examiner's decision to the effect that a design registration is to be
granted)
Where no reasons for refusal are found for an application for design registration,
the examiner shall render a decision to the effect that a design registration is to be
granted.
Article 19 (Application mutatis mutandis of provisions of the Patent Act)
Articles 47(2) (qualifications of examiners), 48 (exclusion of examiners), 50
(notice of reasons for refusal), 52 (formal requirements for decision) and 54 (in
relation to litigation) of the Patent Act shall apply mutatis mutandis to examination
of applications of design registration.
Chapter IX Design Right
Section 1 Design Rights
Article 20 (Registration of establishment of a design right)
(1) A design right shall become effective upon registration of its establishment.
(2) The establishment of a design right shall be registered where the registration
fee for the first year under Article 42(1) has been paid.
(3) Where the registration under the preceding paragraph has been effected, the
following matters shall be published in the design bulletin:
(i) the name, and the domicile or residence of the holder(s) of the design right;
(ii) the number and the filing date of the application for the design registration;
(iii) the registration number and the date of registration of establishment;
(iv) the contents of the application and drawing, photograph, model or
specimen attached to the application; and
(v) other necessary matters.
(4) With regard to the design for which secrecy is requested under Article 14(1),
notwithstanding the preceding paragraph, matters provided for in item (iv) of the
preceding Article shall be published without delay after the lapse of the period
designated under Article 14(1).
Article 21 (Duration of design rights)
(1) The duration of a design right (excluding design right of a Related Design)
shall expire after a period of 20 years from the date of registration of its
establishment.
(2) The duration of a Related Design shall expire after a period of 20 years from the
date when the establishment of the design right of its Principal Design is
registered.
Article 22 (Transfer of the design right of a Related Design)
(1) The design right of a Principal Design and that of its Related Design may not be
transferred independently of each other.
(2) Where the design right of a Principal Design has been extinguished under
Article 44(4), a trial decision to the effect that the design right of a Principal
Design is to be invalidated has become final and binding, or the design right of a
Principal Design has been waived, the design right of its Related Design thereof
may not be transferred independently.
Article 23 (Effect of design right)
A holder of a design right shall have the exclusive right to work the registered
design and designs similar thereto as a business; provided, however, that where an
exclusive license regarding the design right is granted to a licensee, this shall not
apply to the extent that the exclusive licensee is licensed to exclusively work the
registered design and designs similar thereto.
Article 24 (Scope of registered design, etc.)
(1) The scope of a registered design shall be determined based upon the design
stated in the application and depicted in the drawing or represented in the,
photograph, model or specimen attached to the application.
(2) Whether a registered design is identical with or similar to another design shall
be determined based upon the aesthetic impression that the designs would create
through the eye of their consumers.
Article 25
(1) A request may be made to the Patent Office for its advisory opinion on the scope
of a registered design and designs similar thereto.
(2) Where a request under the preceding paragraph is made, the Commissioner of
the Patent Office shall designate three trial examiners to make an advisory
opinion on the requested matter.
(3) Article 71(3) and (4) of the Patent Act shall apply mutatis mutandis to the
advisory opinion under paragraph (1).
Article 25-2
(1) Where the Commissioner of the Patent Office is commissioned by the court for
the provision of an expert opinion on the scope of a registered design and designs
similar thereto, the Commissioner of the Patent Office shall appoint three trial
examiners and direct them to provide an expert opinion on the requested matter.
(2) Article 71-2(2) of the Patent Act shall apply mutatis mutandis to the
commissioning of the provision of an expert opinion prescribed in the preceding
paragraph.
Article 26 (Relationship to registered designs, etc. held by others)
(1) Where a registered design uses another person's registered design, patented
invention or registered utility model for which an application was filed prior to the
date of filing of the application for the said design, or a design similar to another
person's registered design, or where part of a design right pertaining to the
registered design is in conflict with another person's patent right, utility model
right or trademark right obtained based on an application filed prior to the date of
filing of the application for the said registered design, or copyright which arose
prior to the date of filing of the application for the said registered design, the
holder of the said design right or exclusive licensee or non-exclusive licensees of
the said design right may not work the said registered design as a business.
(2) Where a design similar to a registered design uses another person's registered
design, patented invention or registered utility model for which an application was
filed prior to the date of filing of the application for the said design, or a design
similar to another person's registered design, or where part of a design right
pertaining to designs similar to the registered design is in conflict with another
person's design right, patent right, utility model right or trademark right obtained
based on an application filed prior to the date of filing of the application for the
said registered design, or copyright which arose prior to the date of filing of the
application for the said registered design, the holder of the said design right or
exclusive licensee or non-exclusive licensees of the said design right may not work
such similar design as a business.
Article 27 (Exclusive license)
(1) A holder of a design right may grant an exclusive license on the design right;
provided, however, an exclusive license on a design right of a Principal Design or
exclusive licenses on design rights of its Related Designs may be granted only
where all the exclusive licenses on the design rights of the Principal Design and its
Related Designs are granted to the same person at the same time.
(2) An exclusive licensee shall have an exclusive right to work the registered design
or designs similar thereto as a business to the extent permitted by the contract
granting the license.
(3) Where the design right of a Principal Design has been extinguished under
Article 44(4), a trial decision to the effect that the design right of a Principal
Design is to be invalidated has become final and binding, or the design right of a
Principal Design has been waived, exclusive licenses on design rights of its Related
Designs may be granted only where all the exclusive licenses on the design rights
of the Related Designs are granted to the same person at the same time.
4 Paragraphs ( ) (3) to (5) of Article 77 (Transfer, etc.), 97(2) (Waiver, etc.) and
98(1)(ii) and (2) (effect of registration) of the Patent Act shall apply mutatis
mutandis to exclusive licenses.
Article 28 (Non-exclusive license)
(1) A holder of a design right may grant a non-exclusive license on the design right
to any third party.
(2) A non-exclusive licensee shall have a right to work the registered design or
designs similar thereto as a business to the extent prescribed by this Act or
permitted by the contract granting the license.
(3) Articles 73(1) (Jointly owned patent rights), 97(3) (Waiver) and 99 (Effect of
registration) of the Patent Act shall apply mutatis mutandis to non-exclusive
licenses. In this case, "Article 79" in Article 99(2) of said Act shall be deemed to
be replaced with "Article 29 or 29-2 of the Design Act."
Article 29 (Non-exclusive license based on prior use)
A person who, without knowledge of a design in an application for design
registration, created a design identical or similar to the said design, or a person who,
without knowledge of a design in an application for design registration, learned of
the design from a person who created a design identical or similar to the said design,
and has been working the design or a design similar thereto or preparing for the
working of the design or a design similar thereto in Japan at the time of the filing of
the application for design registration (where the application for design registration
is deemed to have been filed at the time of submission of the written amendment of
proceedings under Article 9-2 or 17-3(1) (including the cases where it is applied
mutatis mutandis pursuant to Article 50(1) (including the cases where it is applied
mutatis mutandis pursuant to Article 57(1)), at the time of filing the original
application or the written amendment of proceedings), shall have a non-exclusive
license on the design right, only to the extent of the design and the purpose of such
business worked or prepared.
Article 29-2 (Non-exclusive license based on prior application)
A person who, without knowledge of a design in an application for design
registration, created a design identical or similar to the said design, or a person who,
without knowledge of a design in an application for design registration, learned the
design from a person who created a design identical or similar to the said design,
and has been working the design or a design similar thereto or preparing for the
working of the design or a design similar thereto in Japan at the time of the filing of
the application for design registration (excluding a person falling under the
preceding paragraph , shall ) have a non-exclusive license on the design right, only if
both of the following conditions are satisfied and only to the extent of the design and
the purpose of such business worked or prepared:.
(i) the person filed an application for design registration of the design in the
said application for design registration or design similar thereto prior to the date
of filing of the said application, and has been working the design in the
application or preparing for the working of the design in the application, and
(ii) with regard to the application for design registration filed by the person as
prescribed in the preceding item, an examiner's decision or trial decision to the
effect that the application is to be refused on the ground that the design in the
application falls under any of items of Article 3(1) has become final and
binding.
Article 30 (Non-exclusive license due to the working of the design prior to the
registration of the request for a trial for invalidation)
(1) A person falling under any of the following items, who is doing a business
working a design or a design similar thereto in Japan or preparing such business,
before the registration of a request for a trial for invalidation of the design
registration, without knowledge that the design registration falls under any of the
items of Article 48(1), shall have a non-exclusive license regarding the invalidated
design right or the exclusive license existing at the time of the invalidation, only to
the extent of the design and the purpose of such business worked or prepared:
(i) the original holder of a design right in the case where one of two or more
design registrations granted for the same or similar design has been invalidated,
(ii) the original holder of a design right in the case where, after a design
registration has been invalidated, a design registration is granted to the person
who is entitled to obtain a design registration for the same or similar design,
(iii) in the case referred to in items (i) and (ii), a person that , at the time of
the registration of the request for a trial for invalidation of design registration,
has an exclusive license regarding the design right to be invalidated, or a
non-exclusive license effective under Article 99(1) of the Patent Act as applied
mutatis mutandis under Article 28(3) regarding the design right or an
exclusive license on the design right.
(2) The holder of a design right or the exclusive licensee shall have a right to
receive reasonable consideration from the non-exclusive licensee under the
preceding paragraph.
Article 31 (Non-exclusive license after expiration of duration of design right, etc.)
(1) Where part of a design right that pertains to designs similar to the registered
design with regard to an application for a design registration filed on or before the
date of filing of a design application is in conflict with the design right with regard
to the design application, the original holder of design right shall, upon expiration
of the duration of the design right, have a non-exclusive license on the said design
right or on the exclusive license actually existing at the tie of expiration of the
duration of the design right, limited to the extent of the original design right.
2 The preceding paragraph ( ) shall apply mutatis mutandis to the case where a
patent right or utility model right with regard to an application for registration
filed on or before the date of filing of a design application is in conflict with the
design right with regard to the design application upon expiration of the duration
of the patent right or utility model right.
Article 32
(1) Where part of a design right that pertains to designs similar to the registered
design with regard to an application for a design registration filed on or before the
date of filing of a design application is in conflict with the design right with regard
to the design application, a person who, at the time of expiration of the duration of
the design right, actually owns the exclusive license on the expired design right, or
a non-exclusive license having effect under Article 99(1) of the patent Act as
applied under Article 28(3) of the design Act on the design right or on the
exclusive license shall, upon expiration of the duration of the design right, have a
non-exclusive license on the design right or on the exclusive license actually
existing at the time of expiration of the duration of the design right, limited to the
extent of the original right.
(2) The preceding paragraph shall apply mutatis mutandis to the case where a
patent right or utility model right with regard to an application for registration
filed on or before the date of filing of a design application is in conflict with the
design right with regard to the design application upon expiration of the duration
of the patent right or utility model right.
(3) The holder of a design right or the exclusive licensee shall have a right to
receive reasonable consideration from the non-exclusive licensee under the
preceding two paragraphs.
Article 33 (Award granting non-exclusive license)
(1) Where a registered design or a design similar thereto falls under any of the
cases as provided in Article 26, the holder or exclusive licensee of the design right
may request the other person under the said Article to hold consultations to
discuss granting a non-exclusive license to work the registered design or a design
similar thereto or a non-exclusive license on the patent right or the utility model
right.
(2) The other person under Article 26 who is requested to hold consultations under
the preceding paragraph may request the holder of design right or exclusive
licensee requesting such consultations to hold consultations to discuss granting a
non-exclusive license to the extent of the registered design or a design similar
thereto that the said holder of design right or exclusive licensee intends to work
with a non-exclusive license on the design right, on the patent right or on the
utility model right granted through consultations
3 Where no agreement is reached ( ) by consultations or no consultations are able to
be held as provided in paragraph (1), the holder of design right or the exclusive
licensee may request the Commissioner of the Patent Office for an award.
(4) Where no agreement is reached by consultations or no consultations are able to
be held as provided in paragraph (2) and where a request for an award is filed
under the preceding paragraph, the other person under Article 26 may request the
Commissioner of the Patent Office for an award only within the time limit for the
submission of a written answer by the said other person designated by the
Commissioner of the Patent Office under Article 84 of the Patent Act as applied
mutatis mutandis under paragraph (7).
(5) In the case of paragraph (3) or (4), the Commissioner of the Patent Office shall
not render an award to the effect that a non-exclusive license is to be granted
where the granting of the non-exclusive license will be unreasonably prejudicial to
the interests of the other person under Article 26, the holder of design right or the
exclusive licensee.
(6) In the case of paragraph (4), in addition to the case provided for in the
preceding paragraph, the Commissioner of the Patent Office shall not render an
award ordering a non-exclusive license to be granted if an award ordering a
non-exclusive license to be granted is not rendered with respect to the request for
an award under paragraph (3).
(7) Articles 84, 85(1) and 86 to 91-2 (procedures for award) of the Patent Act shall
apply mutatis mutandis to the award under paragraph (3) or (4).
Article 34 (Transfer, etc. of non-exclusive license)
(1) Except for a non-exclusive license granted by an award under paragraph (3) or
(4) of the preceding Article, Article 92(3) of the Patent Act or Article 22(3) of
the Utility Model Act, a non-exclusive license may be transferred only where the
business involving the working of the relevant design is also transferred, where
the consent of the holder of a design right (or, in the case of a non-exclusive
license on the exclusive license, the holder of a design right and the exclusive
licensee) is obtained and where the transfer occurs as a result of general
succession including inheritance.
(2) Except for a non-exclusive license granted by an award under paragraph (3) or
(4) of the preceding Article, Article 92(3) of the Patent Act or Article 22(3) of
the Utility Model Act, a non-exclusive licensee may establish a right of pledge on
the non-exclusive right only where the consent of the holder of a design right (or,
in the case of a non-exclusive license on the exclusive license, the holder of a
design right and the exclusive licensee) is obtained.
(3) Where a non-exclusive license is granted by an award under paragraph (3) of
the preceding Article, Article 92(3) of the Patent Act or Article 22(3) of the
Utility Model Act, the said non-exclusive license shall be transferred together with
the design right, patent right or utility model right of the non-exclusive licensee on
which the non-exclusive license is granted and the business involving the working
of the relevant design in the case where each right is transferred together with the
said business, and shall be extinguished in the case where each right of the said
non-exclusive licensee is extinguished or transferred independently of the said
business.
(4) A non-exclusive license granted by an award under paragraph (4) of the
preceding Article shall be transferred together with the design right, patent right
or utility model right of the non-exclusive licensee on which the non-exclusive
license is granted, and shall be extinguished in the case where the said design
right, patent right or utility model right is extinguished.
Article 35 (Right of pledge)
(1) Unless otherwise agreed by contract, where a right of pledge is established on a
design right, exclusive license or non-exclusive license, the pledge may not work
the registered design or design similar thereto.
(2) Article 96 (extension of a right of pledge to the proceeds of the patent right,
etc.) of the Patent Act shall apply mutatis mutandis to a right of pledge
established on a design right, exclusive license or non-exclusive license.
(3) Article 98(1)(iii) and (2) (Effect of registration) of the Patent Act shall apply
mutatis mutandis to a right of pledge established on a design right or exclusive
license.
(4) Article 99(3) (Effect of registration) of the Patent Act shall apply mutatis
mutandis to a right of pledge established on a non-exclusive license.
Article 36 (Application mutatis mutandis of provisions of the Patent Act)
Articles 69(1) and (2) (Limitations of patent right), 73 (Jointly owned patent
rights), 76 (Lapse of patent rights in absence of heir), 97(1) (Waiver of patent
right, etc.) and 98(1)(i) and (ii) (Effect of registration) of the Patent Act shall
apply mutatis mutandis to design rights.
Section 2 Infringement of rights
Article 37 (Right to seek injunction)
(1) A holder of a design right or an exclusive licensee may demand of a person who
infringes or is likely to infringe the design right or exclusive license to stop or
prevent such infringement.
(2) In making a demand under the preceding paragraph, the holder of a design
right or an exclusive licensee may demand measures necessary for the prevention
of such infringement including the disposal of products constituting such act of
infringement (including Computer Program, etc. (refers to Computer Program,
etc. as provided in Article 2(4) of the Patent Act; the same shall apply for the
following Article); the same shall apply hereinafter) and the removal of facilities
used for the act of infringement.
(3) With regard to a design for which secrecy is requested under Article 14(1), the
holder of the design right or the exclusive licensee may not make a demand under
paragraph (1) unless he/she has given warning with documents stating the
matters listed in Article 20(3) and certified by the Commissioner of the Patent
Office.
Article 38 (Acts Deemed to constitute infringement)
The following acts shall be deemed to constitute infringement of a design right or
an exclusive license:
(i) acts of producing, assigning, etc. (assigning and leasing and, in the case
where the product is a computer program, etc., including providing through an
electric telecommunication line, the same shall apply hereinafter) or importing
or offering for assignment, etc. (including displaying for the purpose of
assignment, etc., the same shall apply hereinafter) any product to be used
exclusively for the producing of the article to the registered design or a designs
similar thereto as a business; and
(ii) acts of possessing an article to the registered design or a design similar
thereto for the purpose of assigning, leasing or exporting it as a business.
Article 39 (Presumption of Amount of Damage, etc.)
(1) Where a holder of design right or an exclusive licensee claims against an
infringer compensation for damages sustained as a result of the intentional or
negligent infringement of the design right or exclusive license, and the infringer
assigned articles that composed the act of infringement, the amount of damages
sustained by the holder of such design right or the exclusive licensee may be
presumed to be the amount of profit per each unit of article which would have
been sold by the holder of the design right or the exclusive licensee if there had
been no such act of infringement, multiplied by the quantity (hereinafter referred
to in this paragraph as the "assigned quantity" of articles) assigned by the
infringer, the maximum of which shall be the amount attainable by the holder of
the design right or the exclusive licensee in light of the capability of the holder of
the design right or the exclusive licensee to work such articles; provided, however,
that if any circumstances exist under which the holder of the design right or the
exclusive licensee would have been unable to sell the assigned quantity in whole or
in part, the amount calculated as the number of articles not able to be sold due to
such circumstances shall be deducted.
2 Where a holder of ( ) design right or an exclusive licensee claims against an
infringer compensation for damages sustained as a result of the intentional or
negligent infringement of the design right or exclusive license, and the infringer
earned profits from the act of infringement, the amount of profits earned by the
infringer shall be presumed to be the amount of damages sustained by the holder
of the design right or exclusive licensee.
(3) A holder of a design right or an exclusive licensee may claim against an
infringer compensation for damages sustained as a result of the intentional or
negligent infringement of the design right or exclusive license, by regarding the
amount the holder of the design right or exclusive licensee would have been
entitled to receive for the working of the registered design or design similar
thereto as the amount of damages sustained.
(4) The preceding paragraphs shall not prevent any relevant party from claiming
compensation for damages in an amount exceeding the amount provided for
therein. In such a case, where the infringer committed the infringement of the
design right or exclusive license without intent or gross negligence, the court may
take these circumstances into consideration in determining the amount of
damages.
Article 40 (Presumption of negligence)
An infringer of a design right or an exclusive license of another person is
presumed negligent in the commission of the said act of infringement; provided,
however, that this shall not apply to a design for which secrecy is requested under
Article 14(1).
Article 41 (Application mutatis mutandis of provisions of the Patent Act)
Articles 104-2 to 105-6 (Obligation to clarify the specific conditions, restrictions on
the exercise of rights of patentee, etc., production of documents, etc., expert opinion
for calculation of damages, determination of reasonable damages, protective order,
rescission of protective order and notice, etc. of a request inspection of record, etc.)
and 106 (Measures to restore credibility) shall apply mutatis mutandis to
infringement of a design right or an exclusive license.
Section 3 Registration Fees
Article 42 (Registration fees)
(1) A person obtaining the registration establishing a design right, or a holder of a
design right, shall pay as registration fees the amounts specified in the following
items, for each design registration and for each year to the expiration of the
duration as provided in Article 21:
(i) First to third year: annually 8,500 yen
(ii) Fourth to tenth year: annually 16,900 yen
(iii) Eleventh year to twentieth year: annually 33,800 yen
(2) The preceding paragraph shall not apply to design rights belonging to the State.
(3) Notwithstanding the provisions of paragraph (1), where a design right is jointly
owned by the State and any other persons, and the portions of their respective
shares of the said design right have been agreed upon, the registration fees
payable under paragraph (1) shall be determined as the sum calculated by
multiplying the applicable registration fees as provided in paragraph (1) by the
ratio of the share of persons other than the State, and the persons other than the
State shall pay such amounts.
(4) For the amount of registration fees calculated under the preceding paragraph,
fractional figures of less than ten yen shall be discarded.
(5) The payment of registration fees under paragraph (1) shall be made by patent
revenue stamps as provided by Ordinance of the Ministry of Economy, Trade and
Industry; provided, however, that where so provided by Ordinance of the Ministry
of Economy, Trade and Industry, a cash payment thereof shall be accepted.
Article 43 (Time limit for payment of registration fees)
(1) The registration fee for the first year under Article 42(1)(i) shall be paid
within 30 days from the date on which a certified copy of the examiner's decision
or the trial decision to the effect that the design is to be registered has been
served.
(2) The registration fees for each year from the second and subsequent years under
Article 42(1) shall be paid by the end of the previous year.
(3) The Commissioner of the Patent Office may, upon a request by a person by
whom the registration fees are to be paid, extend the time limit under paragraph
(1) by a period not exceeding 30 days.
Article 44 (Late payment of registration fees)
(1) Where a holder of a design right is unable to pay the registration fees within the
time limit under Article 43(2), the holder of the design right may make a late
payment of the registration fees after the expiration of the said time limit, but not
later than 6 months following the expiration of the said time limit.
2 The holder of the design right who ( ) makes a late payment of the registration fees
under the preceding paragraph shall pay, in addition to the registration fees to be
paid under Article 42(1), a registration surcharge in the same amount as the
registration fees.
(3) The payment of the registration surcharge under the preceding paragraph shall
be made by patent revenue stamps as provided by Ordinance of the Ministry of
Economy, Trade and Industry; provided, however, that where so provided by
Ordinance of the Ministry of Economy, Trade and Industry, a cash payment
thereof shall be accepted.
(4) Where a holder of a design right fails to pay, within the time limit for late
payment of the registration fees under paragraph (1), the registration fees and
the registration surcharge under paragraph (2), the design right shall be deemed
to have been extinguished retroactively upon expiration of the time limit as
provided in the Article 43(2).
Article 44-2 (Restoration of design right by late payment of registration fees)
(1) A person who was the holder of a design right which became extinguished under
Article 44(4), if a failure to pay the registration fees and the registration
surcharge prescribed in Articles 44(4) within the time limit provided in Article 44
(1) was for reasons not attributable to the person, may make a late payment of
the registration fees and the surcharge within 14 days (in the case of an overseas
resident, within two months) from the date on which the reasons ceased to exist,
but not later than six months following the expiration of the said time limit.
(2) Where the registration fees and the surcharge are paid under the preceding
paragraph, the design right shall be deemed to have been maintained retroactively
from the time of expiration of the time limit as provided in Article 43(2).
Article 44-3 (Restriction on effect of restored design right)
(1) Where a design right has been restored under paragraph (2) of the preceding
Article, such design right shall not be effective against an article to the registered
design or a design similar thereto, which was imported into, manufactured or
acquired within Japan after the lapse of the time limit during which the late
payment of the registration fees is allowed under Article 44(1) but before the
registration of the restoration of the design right.
(2) A design right restored under paragraph 2 of the preceding Article shall not be
effective against the following acts conducted after the lapse of the time limit
during which the late payment of the registration fees is allowed under Article 44
(1) but before the registration of the restoration of the design right:
(i) the using of the registered design or a design similar thereto;
ii ( ) manufacturing, assigning, etc., importing or offering for assignment, etc. of
any product to be used exclusively for manufacturing an article to the registered
design or a design similar thereto.
; and
(iii) possessing an article to the registered design or a design similar thereto for
the purpose of assigning, leasing or exporting it.
Article 45 (Application mutatis mutandis of provisions of the Patent Act)
Article 110 (Payment of patent fees by interested persons) and Article 111(1)
(Excluding item (iii)) and (2) (Refund of patent fees) of the Patent Act shall
apply mutatis mutandis to registration fees.
Chapter V Trial
Article 46 (Trial against examiner's decision of refusal)
(1) A person who has received an examiner's decision to the effect that an
application is to be refused and is dissatisfied may file a request for a trial against
the examiner's decision of refusal within 30 days from the date certified copy of
the examiner's decision has been served.
(2) Where, due to reasons beyond the control of the person, said person is unable to
file a request for a trial against an examiner's decision of refusal within the time
limit as provided in the preceding paragraph, the said person may,
notwithstanding the said paragraph, file the request within 14 days (where
overseas resident, within two months) from the date on which the reasons ceased
to be applicable, but not later than six months following the expiration of the said
time limit.
Article 47 (Trial against examiner's ruling dismissing an amendment)
(1) A person who has received an examiner's decision to dismiss an amendment and
is dissatisfied may file a request for a trial against the examiner's ruling
dismissing an amendment within 30 days from the date on which the certified
copy of the examiner's decision has been served; provided, however, that this shall
not apply where a new application for design registration under Article 17-3(1)
has been filed.
(2) Paragraph (2) of the preceding Article shall apply mutatis mutandis to a
request for a trial against an examiner's ruling dismissing an amendment.
Article 48 (Trial for invalidation of design registration)
(1) Where a design registration falls under any of the following, a request for a trial
for invalidation of design registration may be filed.
i where ( ) the design registration has been granted in violation of Articles 3,
3-2, 5, 9(1) or (2), 10(2) or (3) of this Act, Articles 38 of the Patent Act as
applied mutatis mutandis under Article 15(1) of this Act, or Articles 25 of the
Patent Act as applied mutatis mutandis under Article 68(3) of this Act;
(ii) where the design registration has been granted in violation of a treaty;
(iii) where the design registration has been granted on an application for design
registration filed by a person who is not the creator of the design and has not
succeeded to the right to obtain a design registration for the said design; and
(iv) where, after the grant of a design registration, the holder of the design right
has become unable to hold a design right under Article 25 of the Patent Act as
applied mutatis mutandis under Article 68(3) of this Act, or the design
registration has become in violation of a treaty.
(2) Any person may file a request for a trial for invalidation of design registration;
provided, however, that where a request for a trial for invalidation of design
registration is filed on the ground that the design registration falls under item (i)
of the preceding paragraph (limited to cases where the design registration is
obtained in violation of Article 38 of the Patent Act as applied mutatis mutandis
under Article 15(1) of this Act) or item (iii) of the preceding paragraph, only an
interested person may file a request for a trial for invalidation of design
registration.
(3) A request for a trial for invalidation of design registration may be filed even
after the lapse of the design right.
(4) Where a request for a trial for invalidation of design registration has been filed,
the chief trial examiner shall notify the exclusive licensee of the design right and
other persons who have any registered rights relating to the design registration.
Article 49 (Trial to invalidate a design registration)
Where a trial decision to the effect that a design registration is to be invalidated
has become final and binding, the design right shall be deemed never to have
existed; provided, however, that where a design registration falls under paragraph
(1), item (iv) of the preceding Article and where a trial decision to the effect that
the design registration is to be invalidated has become final and binding, the design
right shall be deemed not to have existed from the time the said item first became
applicable to the design registration.
Article 50 (Application mutatis mutandis of provisions on examination)
(1) Article 17-2 and Article 17-3 shall apply mutatis mutandis to a trial against an
examiner's decision of refusal. In this case, the term "files a request for a trial
against" in Article 17-2(4) shall be deemed to be replaced with "institutes, under
Article 59(1), an action against."
2 Article 18 shall ( ) apply mutatis mutandis where a request for a trial against an
examiner's decision of refusal is found to have reasonable grounds; provided,
however, that this shall not apply where a trial decision is made to order a further
examination to be carried out under Article 161(1) of the Patent Act as applied
mutatis mutandis under Article 52.
(3) Article 50 (notice of reasons for refusal) of the Patent Act shall apply mutatis
mutandis where a reason for refusal which was not contained in an examiner's
decision is found in a trial against the examiner's decision of refusal.
Article 51 (Special provisions for trial against examiner's ruling dismissing an
amendment)
Where a trial decision is made to rescind an examiner's ruling in a trial against
the examiner's ruling dismissing an amendment, the decision made in the trial
decision shall be binding upon the examiner with respect to the case.
Article 52 (Application mutatis mutandis of provisions of the Patent Act)
Articles 131(1) and (2), 131-2 (excluding item (i) of paragraph 2) to 134, 135 to
154, 155(1) and (2), 156 to 158, 160(1) and (2), 161, and 167 to 170 (request for
trial, trial examiner, procedures of trial, relation to litigation and costs of trial) of
the Patent Act shall apply mutatis mutandis to a trial. In this case, the term "a trial
against the examiner's decision of refusal" in Article 161 and the term "a trial
against an examiner's decision of refusal and a trial for correction" in Article 169(3)
of the said Act shall be deemed to be replaced with "a trial against an examiner's
decision of refusal and a trial against an examiner's ruling dismissing an
amendment."
Chapter VI Retrial and Litigation
Article 53 (Request for retrial)
(1) A party or an intervenor may file a request for a retrial against a final and
binding trial decision.
(2) Articles 338(1) , 338(2) and 339 (Grounds for retrial) of the Code of Civil
Procedure (Act No.109 of 1996) shall apply mutatis mutandis to a request for a
retrial under the preceding paragraph.
Article 54
(1) Where a demandant for a trial, in conspiracy with the demandee, has caused the
trial decision to be rendered for the purpose of harming the right or interest of a
third party, the third party may file a request for a retrial against the final and
binding trial decision.
2 A request ( ) for a retrial under the preceding paragraph shall be filed against the
demandant and the demandee in the trial as joint demandees.
Article 55 (Restriction on effect of design right restored by retrial)
(1) Where a design right pertaining to an invalidated design registration has been
restored by a retrial, such design right shall not be effective against any article to
the registered design or a design similar thereto, which was imported into or
manufactured or acquired in Japan without knowledge, after the trial decision
became final and binding but before the registration of the request for a retrial.
(2) Where a design right pertaining to an invalidated design registration has been
restored by a retrial, such design right shall not be effective against the following
acts conducted after the trial decision became final and binding but before the
registration of the request for a retrial:
(i) using of the said design or a design similar thereto without knowledge;
(ii) producing, assigning, etc., importing or offering for assignment, etc., any
product to be used exclusively for the manufacturing of an article to the
registered design or a design similar thereto without knowledge; and
(iii) possessing an article to the registered design or a design similar thereto for
the purpose of assigning, leasing or exporting it without knowledge.
Article 56
Where a design right pertaining to an invalidated design registration has been
restored through a retrial or where the establishment of a design right with respect
to an application for design registration refused by a trial decision has been
registered through a retrial, and where a person has, without knowledge, been using
the design or a design similar thereto in Japan or has, without knowledge, been
making preparations therefor, after the trial decision became final and binding but
before the registration of the demand for a retrial, such person shall have a
non-exclusive license on the design right, to the extent of the design and the purpose
of such business used or prepared.
Article 57 (Application mutatis mutandis of provisions on trial)
(1) Article 50(1) and (3) shall apply mutatis mutandis to a retrial against a final
and binding trial decision in a trial against an examiner's decision of refusal.
(2) Article 51 shall apply mutatis mutandis to a retrial against a final and binding
trial decision in a trial against an examiner's ruling dismissing an amendment.
Article 58 (Application mutatis mutandis of provisions of the Patent Act)
(1) Articles 173 and 174(4) of the Patent Act shall apply mutatis mutandis to a
retrial.
2 Articles 131 1 , the main clause of 131-2 ( ) ( ) (1), 132(3) and (4), 133, 133-2, 134
(4), 135 to 147, 150 to 152, 155(1), 156 to 158, 160, 168, paragraphs (3) to (6) of
Article 169, and 170 of the Patent Act shall apply mutatis mutandis to a retrial
against a final and binding trial decision in a trial against an examiner's decision
of refusal. In this case, the term "a trial against an examiner's decision of refusal
and a trial for correction" in Article 169(3) of the said Act shall be deemed to be
replaced with "a trial against an examiner's decision of refusal."
(3) Articles 131(1), the main clause of 131-2(1), 132(3) and (4), 133, 133-2, 134
(4), 135 to 147, 150 to 152, 155(1), 156, 157, 168, paragraphs (3) to (6)of Article
169, and 170 of the Patent Act shall apply mutatis mutandis to a retrial against a
final and binding trial decision in a trial against an examiner's ruling dismissing
an amendment. In this case, the term "a trial against an examiner's decision of
refusal and a trial for correction" in Article 169(3) of the said Act shall be deemed
to be replaced with "a trial against an examiner's ruling dismissing an
amendment."
(4) Article 174(2) of the Patent Act shall apply mutatis mutandis to retrial against
a final and binding trial decision in a trial for invalidation of design registration
Article 59 (Actions against trial decisions, etc.)
(1) The Tokyo High Court shall have exclusive jurisdiction over any action against a
trial decision, a ruling dismissing an amendment under Article 17-2(1) as applied
mutatis mutandis under Article 50(1) (including its application under Article 57
(1)), and a ruling to dismiss a written request for a trial or a retrial.
(2) Paragraphs (2) to (6) of Article 178(Statute of limitations for filing an action,
etc.), 179 to 180-2 (Appropriate party as defendant, Notice of institution of action
and Opinion of the Commissioner of the Patent Office in litigation rescinding the
trial decision), 181(1) and (5) (Rescission of the trial decision or ruling), and
182 (Delivery of original copy of judgment) of the Patent Act shall apply mutatis
mutandis to an action under the preceding paragraph.
Article 60 (Action against amount of compensation)
(1) A person(s) who has received an award under Article 33(3) or (4) may, if not
satisfied with the amount of the compensation determined in the award, institute
an action demanding an increase or decrease of the said amount.
(2) Articles 183(2) (Statute of limitations for filing an action) and 184 (Standing
as defendant) of the Patent Act shall apply mutatis mutandis to an action under
the preceding paragraph.
Article 60-2 (Relationship between (administrative) objection and litigation)
Article 184-2 (Relationship between (administrative) objection and litigation) of
the Patent Act shall apply mutatis mutandis to an action demanding the rescission
of dispositions imposed by this Act or an order thereunder (excluding dispositions
under Article 68(7)).
Chapter VII Miscellaneous Provisions
Article 60-3 (Amendment of proceedings )
A person undertaking a procedure with regard to an application for design
registration, a request or any other procedures relating to design registration, may
make amendments only while the case is pending in examination, trial or retrial.
Article 61 (Registration in the design registry)
(1) The following matters shall be registered in the design registry maintained in
the Patent Office:
(i) the establishment, transfer, lapse, restoration or restriction on disposition,
of a design right;
(ii) the establishment, maintenance, transfer, modification, lapse or restriction
on disposal, of an exclusive or non-exclusive license; and
(iii) the establishment, transfer, modification, lapse or restriction on disposal, of
a right of pledge on a design right or exclusive or non-exclusive license.
(2) The design registry may be prepared, in whole or in part, in the form of
magnetic tapes (including other storage media using a similar method that may
record and reliably store certain matters, the same shall apply hereinafter.)
(3) In addition to those prescribed in this Act, matters relating to registration shall
be prescribed by Cabinet Order.
Article 62 (Issuance of certificate of design registration)
(1) The Commissioner of the Patent Office shall issue the certificate of design
registration to the holder of the design right when the establishment of a design
right has been registered
(2) Re-issuance of the certificate of design registration shall be prescribed by
Ordinance of the Ministry of Economy, Trade and Industry.
Article 63 (Request for certificate, etc.)
(1) Any person may file a request with regard to design registrations to the
Commissioner of the Patent Office to issue a certificate, a certified copy of
documents or an extract of documents, to allow the inspection or copying of
documents, model or specimen, or to issue documents which contain matters
recorded on the magnetic tapes that constitute the part of the Design Registry;
provided, however, that if the Commissioner of the Patent Office considers it
necessary to keep such documents, model or specimen confidential, this provision
shall not apply to the following documents, model or specimen:
i an application ( ) or drawing, photograph, model or specimen attached to an
application, or any document pertaining to the examination of an application for
design registration for which the design has not been registered;
(ii) Documents, model or specimen related to a design for which the secrecy is
requested under Article 14(1);
(iii) Documents concerning a trial against an examiner's decision of refusal or a
trial against an examiner's ruling dismissing an amendment requested for an
application for design registration for which the design has not been registered;
(iv) Documents concerning a trial for invalidation of design registration or a
retrial of the final and binding trial decision in such trial, with respect to which
a party in the case or intervenor has given notice that a trade secret owned by
the said party in the case or intervenor has been described (trade secret as
provided in Article 2(6) of the Unfair Competition Prevention Act (Act No. 47
of 1993));
(v) Documents which are liable to cause damage to an individual's reputation or
peaceful life; and
(vi) Documents which are liable to cause damage to public policy.
(2) Where the Commissioner of the Patent Office approves of the request under the
main clause of the preceding paragraph with regard to the documents, model or
specimen as provided in items (i) to (v) of the said paragraph, the Commissioner
of the Patent Office shall notify the person who submitted the said documents,
model or specimen thereof and reasons therefor.
(3) Provisions of the Act on Access to Information Held by Administrative Organs
(Act No. 42 of 1999) shall not apply to the documents concerning design
registrations and the part of the Design Registry stored on magnetic tapes.
(4) Provisions in Chapter IV of the Act on Protection of Personal Information
Possessed by Administrative Organs (Act No. 58 of 2003) shall not apply to the
possessed personal information (refers to the possessed personal information as
provided in Article 2(3) of the said Act) recorded in the documents concerning
design registrations and the part of the Design Registry stored on magnetic tapes.
Article 64 (Mark of Design Registration)
A holder of a design right, exclusive licensee or non-exclusive licensee shall make
efforts to place a mark (hereinafter referred to as a "mark of design registration ")
as provided by Ordinance of the Ministry of Economy, Trade and Industry, on the
article to the registered design or a design similar thereto or package thereof,
indicating that the design for the article has been registered.
Article 65 (Prohibition of false marking)
It shall be prohibited for a person to do the following acts:
(i) putting a mark of design registration or a mark confusing therewith on an
article which is not the article to the registered design and is not the article to a
design similar to the registered design, or the package thereof;
(ii) assigning, leasing or displaying for purposes of assignment or lease an
article which is not the article to the registered design and is not the article to a
design similar to the registered design, putting a mark of design registration or
a mark confusing therewith on the article or package thereof; or
(iii) Giving in an advertisement an indication to the effect that the article, which
is not the article to the registered design and is not the article to a design
similar to the registered design, is related to the registered design, or an
indication confusing with the indication for the purpose of having the article
manufactured or used, or assigning or leasing the article.
Article 66 (Design Bulletin)
(1) The Patent Office shall publish the Design Bulletin (Isho Koho).
(2) In addition to the matters provided for in this Act, the Design Bulletin shall
contain:
(i) the extinguishment of design rights (excluding extinguishment upon
expiration of the duration and under Article 44(4)) or the restoration thereof
(limited to restoration under Article 44-2(4));
(ii) filings for a request for trials or retrials, or withdrawals thereof, or final and
binding trial decisions or retrial decisions (limited to cases where the
establishment of a design right has been registered);
(iii) requests for an award, the withdrawal thereof or a Commissioner's decision;
and
(iv) final and binding judgments in an action under Article 59(1) (limited to
cases where the establishment of a design right has been registered)
(3) In addition to the matters provided for in the preceding paragraph, with regard
to an application for design registration for which an examiner's decision or trial
decision to the effect it is to be refused under the latter sentence of Article 9(2)
have become final and binding, the following matters shall be published in the
Design Bulletin. In this case, if secrecy was requested under Article 14(1) for any
of those applications, with regard to all of those applications, the matters
prescribed in item (3) below shall be published without delay after the lapse of
the period designated under Article 14(1) (in the case where secrecy was
requested for two or more applications, the period which is the longest among the
periods of secrecy requested for such applications) from the date such examiner's
decision or trial decision became final and binding.
i the ( ) name, and domicile or residence of the applicant for design registration;
(ii) the number and the filing date of the application for design registration;
(iii) the application and drawing(s), photograph(s), model(s) or specimen(s)
attached to the application; and
(iv) other necessary matters.
Article 67 (Fees)
(1) Fees shall be paid by the following persons in an amount to be provided by
Cabinet Order in view of the actual costs:
(i) persons requesting disclosure of a design under Article 14(4);
(ii) persons notifying of succession under Article 34(4) of the Patent act as
applied mutatis mutandis under Article 15(2)
(iii) persons filing a request for an extension of period under Article 4 or 5(1) of
the Patent Act as applied mutatis mutandis under Article 17-4, 43(3) or 68(1),
or a change of the date under Article 5(2) of the Patent Act as applied mutatis
mutandis under Article 68(1);
(iv) persons filing a request for the re-issuance of the certificate of design
registration;
(v) persons filing a request for the issuance of a certificate under Article 63(1);
(vi) persons filing a request for the issuance of a certified copy of documents or
an extract of documents under Article 63(1):
(vii) persons filing a request to allow the inspection or copying of documents,
model or specimen under Article 63(1); and
(viii) persons filing a request for the issuance of documents which contain
matters recorded on the magnetic tapes that constitute the part of the Design
Registry under Article 63(1).
(2) The persons listed in the center column of the attached table shall pay fees in
the amount as provided by Cabinet Order within the range of the amounts
specified in the corresponding right-hand column of the table.
(3) The two preceding paragraphs shall not apply where the person to pay the fee in
accordance with these paragraphs is the State.
(4) Where the State has joint ownership of a design right or a right to obtain a
design registration with a person other than the State, and the portion of their
respective shares of said right has been agreed, notwithstanding the provisions of
paragraph (1) or (2), the fees payable thereunder (limited to those provided by
Cabinet Order) shall be determined as the sum of the provided fees multiplied by
the ratios of the shares of each person other than the State, and, the person(s)
other than the State shall pay such amounts.
(5) Where the amount of the fees calculated under the preceding paragraphs has a
fractional figure of less than ten yen, said portion shall be discarded.
6 The payment of the ( ) fees under paragraphs (1) and (2) shall be made by patent
revenue stamps as provided by Ordinance of the Ministry of Economy, Trade and
Industry; provided, however, that where so provided by Ordinance of the Ministry
of Economy, Trade and Industry, a cash payment thereof shall be accepted.
(7) Fees paid in excess or in error shall be refunded upon the request of the person
who made payment thereof.
(8) No request for a refund of the fees under the preceding paragraph may be filed
after one year from the date on which the payment thereof has been made.
Article 68 (Application mutatis mutandis of provisions of the Patent Act)
(1) The provisions of Articles 3 to 5 (Time periods and dates) of the Patent Act
shall apply mutatis mutandis to time periods and time limits provided in this Act.
In this case, the term "Article 121(1)" of Article 4 of the Patent Act shall be
deemed to be replaced with "Article 46(1) or 47(1) of the Design Act."
(2) Article 6 to 9, 11 to 16, 17(3) and 17(4), 18 to 24 and 194 (Procedures) of the
Patent Act shall apply mutatis mutandis to an application for design registration,
a request, or any other procedures relating to design registration. In this case,
the term "hearing against an examiner's decision of refusal" in Article 9 of the
Patent Act shall be deemed to be replaced with "request for a trial against an
examiner's decision of refusal and trial against examiner's ruling dismissing an
amendment." and the term "hearing against an examiner's decision of refusal" in
Article 14 of the Patent Act shall be deemed to be replaced with "request for a trial
against an examiner's decision of refusal and trial against examiner's ruling
dismissing an amendment."
(3) Article 25 (Enjoyment of rights by foreign nationals) of the Patent Act shall
apply mutatis mutandis to design rights and other rights relating to the design
registration.
(4) Article 26 (Effect of treaties) of the Patent Act shall apply mutatis mutandis to
the design registration.
(5) Articles 189 to 192 (Service) of the Patent Act shall apply mutatis mutandis to
services provided for under this Act.
(6) Article 195-3 of the Patent Act shall apply mutatis mutandis to dispositions
imposed by this Act or an order thereunder.
(7) Article 195-4 (Restriction on objection under Administrative objection Act) of
the Patent Act shall apply mutatis mutandis to a ruling to dismiss an amendment,
an examiner's decision, a trial decision, or a ruling to dismiss a written request for
a trial or retrial, or dispositions against which no objection lies in accordance
with this Act.
Chapter VIII Penal Provisions
Article 69 (Crime of infringement)
An infringer of a design right or exclusive license (excluding one who has
committed any acts which are deemed to constitute infringement of a design right or
an exclusive license under Article 38) shall be punished by imprisonment with work
for a term not exceeding 10 years or a fine not exceeding 10,000,000 yen or
combination thereof.
Article 69-2
A person who has committed any acts which are be deemed to constitute
infringement of a design right or an exclusive license under Article 38 shall be
punished by imprisonment with work for a term not exceeding 5 years or a fine not
exceeding 5,000,000 yen or combination thereof.
Article 70 (Crime of fraud)
Any person who has obtained a design registration or a trial decision by means of
a fraudulent act shall be punished by imprisonment with work for a term not
exceeding one year or a fine not exceeding 1,000,000 yen.
Article 71 (Crime of false marking)
A person who fails to comply with Article 65 shall be punished by imprisonment
with work for a term not exceeding one year or a fine not exceeding 1,000,000 yen.
Article 72 (Crime of perjury, etc.)
(1) A witness, an expert witness or an interpreter who has sworn under this Act
and made a false statement or given a false expert opinion or interpretation to the
Patent Office or the court commissioned thereby shall be punished by
imprisonment with work for a term between three months and ten years.
(2) Where a person who has committed the crime in the preceding paragraph has
made a voluntary confession before a certified copy of the advisory opinion on the
case has been served or an examiner's decision or a trial decision has become final
and binding, the punishment may be reduced or exculpated.
Article 73 (Crime of divulging secrets)
A present or former official of the Patent Office who has divulged any secret
relating to a design in a pending application for design registration that has become
known to him/her in the course of performing his/her duties, or misappropriated the
said design shall be punished by imprisonment with work for a term not exceeding
one year or a fine not exceeding 500,000 yen.
Article 73-2 (Crime of breach of protective order)
(1) A person who fails to comply with an order given under Article 105-4(1) of the
Patent Act as applied mutatis mutandis under Article 41 shall be punished by
imprisonment with work for a term not exceeding five years or a fine not
exceeding 5,000,000 yen or combination thereof.
(2) The prosecution of the crime under the preceding paragraph may not be
initiated unless a complaint is filed.
(3) The crime under paragraph (1) shall apply to a person who commits the crime
outside Japan.
Article 74 (Dual liability)
(1) Where a representative of a juridical person or an agent, employee or other
worker of a juridical person or an individual has committed in the course of
performing his/her duties for the juridical person or individual, any act in violation
prescribed in the following items, in addition to the offender, the juridical person
shall be punished by a fine as provided in the corresponding item and the
individual shall be punished by a fine as provided in the Article prescribed in the
corresponding item:
(i) Article 69, 69-2 or 73-2(1), a fine not exceeding 300 million yen; and
(ii) Article 70 or 71, a fine not exceeding 30 million yen.
(2) In the case of the preceding paragraph, the complaint filed under Article 73-2
(1) against the offender shall have effect on the juridical person or individual and
the complaint filed against the juridical person or individual shall have effect on
the offender.
(3) Where a fine is imposed on a juridical person or individual under paragraph (1)
with regard to a violation of Article 69, 69-2 or 73-2(1), the period of prescription
shall be governed by the same rules as for crimes in the provisions thereof.
Article 75 (Civil fine)
Where a person who has sworn under Article 207(1) of the Code of Civil
Procedure as applied mutatis mutandis under Article 151 of the Patent Act as
applied mutatis mutandis under Article 71(3) of the Patent Act as applied mutatis
mutandis under Article 25(3) of this Act, Article 52, 58(2) or (3) of this Act, or
Article 174(2) of the Patent Act as applied mutatis mutandis under Article 58(4) of
this Act has made a false statement before the Patent Office or a court commissioned
thereby, the said person shall be punished by a civil fine not exceeding 100,000 yen.
Article 76
A person who has been summoned by the Patent Office or a court commissioned
thereby in accordance with this Act, and fails to appear or refuses to swear, make a
statement, testify, give an expert opinion or interpret without a justifiable reason
shall be punished by a civil fine not exceeding 100,000 yen.
Article 77
A person who has been ordered by the Patent Office or a court commissioned
thereby to submit or present documents or other materials for the purpose of
examination or preservation of evidence in accordance with this Act and fails to
comply with the order without a justifiable reason shall be punished by a civil fine
not exceeding 100,000 yen.
Appended Table (In relation to Article 67)
The person (s) who shall pay fees Amounts
1 A person filing an application for design registration 16,000 yen per case
2 A person filing a request for secrecy of the design 5,100 yen per case
under Article 14(1)
3 A person requesting an advisory opinion under Article 40,000 yen per case
25(1)
4 A person requesting an award 55,000 yen per case
5 A person requesting canceling of an award 27,500 yen per case
6 A person filing a request for a trial or retrial 55,000 yen per case
7 A person applying for intervention in a trial or retrial 55,000 yen per case |
