Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

The drawings as a whole in a design application need  to show all views of a design under the Japanese design practice.  However, required drawings to disclose a design in a design application vary depending on countries.  Therefore, when only a part of a design is disclosed in the first application, sufficient drawings to disclose all views of the design need to be prepared for the application claiming priority in Japan (the application to the JPO ).  In this regard it is recommended to prepare at least a set of six drawings –front view, rear view, left view, right view, plan view and base view- for the application to the JPO.

When the drawings in the application to the JPO are not identical to those in the first application, substantial identicalness of the design is needed between the two applications in order for the priority claim to be valid.  Basic concept for the substantial identicalness to be affirmed is that a design in the application to the JPO can be recognized by description and drawings in a Priority Certificate.

Examples

Here are some examples of whether substantial identicalness can be affirmed / denied.

○ substantial identicalness can be affirmed
 - the first application:  “ a face of a watch”
     only the face of a watch is disclosed.
     no description of a design for a whole article/ a partial design is provided.

 - the application to the JPO:  “ a face of a watch”
     the six views of the watch are disclosed. 


* a face of a watch is usually a flat plate.

○ substantial identicalness can be affirmed
 - the first application:  “ a drink container”
     only the top perspective view is disclosed.

 - the application to the JPO:  “ a drink container”
     the six views of the container are disclosed.


* the whole design can be recognized by the trait of the article.

× substantial identicalness can be denied   
 - the first application:  “ a car”
     only the side view and the perspective view of the front part are disclosed.

 -the application to the JPO:   “ a car”
     the six views of the car are disclosed.

    * the whole design cannot be recognized by the description and drawings in the first application.


○ substantial identicalness can be affirmed
 - the first application:  “ a flip cell phone”
      six views of the phone are disclosed in the status where the flip cover is closed.
      no figures showing that the flip cover is open are included.

 - the application to the JPO:   “ a flip cell phone”
     the six views of the flip phone are disclosed; the surface parts of the phone which were disclosed in the first application are drawn with solid lines while the inside parts of the phone which were not disclosed in the first application are drawn with broken lines.

* the whole design can be recognized by the description and drawings in the first application.

○ substantial identicalness can be affirmed
 - the first application:  “ a graphical user interface”
     a front view of a cell phone with a graphic image (a), and figures of graphic images (b, c and d) are disclosed.

 - the application to the JPO:  “ a cell phone”
     six views of a partial design of the cell phone with the graphic image (c) are disclosed; the graphic image (c) is drawn with solid lines while the other parts of the phone are drawn with broken lines.

* the whole design can be recognized by the description and drawings in the first application.

× substantial identicalness can be denied
 - the first application:  “ a package”
    only a figure of a pattern for the package is included.

- the application to the JPO:  “a package”
     six views of a partial design of the package with the pattern are disclosed; the pattern is drawn with solid lines while the other parts of the package are drawn with broken lines.

* the whole design cannot be recognized by the description and drawings in the first application.

Further information is provided in the following PDF files (only in Japanese).
http://www.jpo.go.jp/shiryou/toushin/shingikai/pdf/isyou_wg_01isyou_haihu_itiran/sangyou_isyou_haihu_itiran04.pdf http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/kijun/kijun2/isyou-shinsa_kijun.htm


End of report  

HIROTA, Miho
AIGI Intellectual Property Law Firm