Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

The Japanese design law applies a very strict rule to amendment of statement in the application and the drawings.  The law does not allow an amendment that changes the gist of a design represented in statement in the application and the attached drawings.  Such an amendment will be dismissed.

1. The gist of a design

First of all, what is the gist of a design?  The examination guidelines states that the gist of a design is directly derivable from the statement in the application and the attached drawings based on ordinary skill in the art. 
In other words, the gist of a design is NOT be specified by other documents such as a Priority Certificate or a feature statement.

2. Change of the gist of a design

An amendment to change the substantial identicalness which is obviously derived from the statements in the application and the attached drawings is deemed to changes the gist of a design.  In addition, an amendment to remove ambiguity of the design which was ambiguous at the time of filing is also deemed the change the gist of a design.

Roughly speaking, basically only minor changes such as corrections of errors or informality are allowed. 

Here are typical examples which are deemed to change the gist of a design:
 - changing dotted lines into solid lines or vice versa,
 - changing a design for a whole article into a design for a part of an article or vice versa, or
 - adding drawings which supports to specify the design when the design was ambiguous at the time of filing. *

*There are exceptions to be allowed if an amendment dose not change the gist of a design, of course.

3. Scope of amendment

Scope of amendment is one of the unique points of the Japanese design system.  Once an amendment is filed, scope of amendment will be defined by the amended statements or drawings NOT by the statements and drawings at the time of filing.

4. Our comment

The Japanese design law requires rather strict identicalness between the design in a Priority Certificate and the design in the Japanese application for claim of priority to be valid (please refer to our previous post).  Moreover, as mentioned above, the Japanese design law is very strict to amendment.
Therefore, deliberation for drafting at the timing of filing of the Japanese application is well-advised.

End of report  

HIROTA, Miho
AIGI Intellectual Property Law Firm