WIPO Lex

Design Act (Act No. 125 of 1959, as amended up to Act No. 55 of 2015)

Design Act (Act No. 125 of 1959)

Table of Contents

Chapter I General Provision (Article 1 and Article 2)

Chapter II Design Registrations and Applications for Design Registration (Article 3 to

Article 15)

Chapter III Examination (Article 16 to Article 19)

Chapter IV Design Right

Section 1 Design Rights (Article 20 to Article 36)

Section 2 Infringement of rights (Article 37 to Article 41)

Section 3 Registration Fees (Article 42 to article 45)

Chapter V Trials and Appeals (Article 46 to Article 52)

Chapter VI Retrial and Litigation (Article 53 to Article 60-2)

Chapter VI-2 Special Provisions based on Geneva Act of the Hague Agreement

この意匠法の翻訳は、平成二十七年法律第五十五号までの改正（平成２８年４月１日

施行）について作成したものです。

この法令の翻訳は公定訳ではありません。法的効力を有するのは日本語の法令自体で

あり、翻訳はあくまでその理解を助けるための参考資料です。この翻訳の利用に伴って

発生した問題について、一切の責任を負いかねますので、法律上の問題に関しては、官

報に掲載された日本語の法令を参照してください。

This English translation of the Design Act has been prepared (up to the revisions

of Act No. 55 of 2015 (Effective April 1, 2016)).

This is an unofficial translation. Only the original Japanese texts of laws and

regulations have legal effect, and the translations are to be used solely as reference

material to aid in the understanding of Japanese laws and regulations.

The Government of Japan shall not be responsible for the accuracy, reliability or

currency of the legislative material provided in this Website, or for any consequence

resulting from use of the information in this Website. For all purposes of

interpreting and applying law to any legal issue or dispute, users should consult the

original Japanese texts published in the Official Gazette.

concerning the International Registration of Industrial Designs

Section 1 Application for International Registration (Article 60-3 to Article 60-5)

Section 2 Special Provisions Concerning International Applications for Design

Registration (Article 60-6 to Article 60-23)

Chapter VII Miscellaneous Provisions (Article 60-24 to Article 68)

Chapter VIII Penal Provisions (Article 69 to Article 77)

Supplementary Provisions

Chapter I General Provision

(Purpose)

Article 1 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.

(Definition, etc.)

Article 2 (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

(Conditions for Design Registration)

Article 3 (1) A creator of a design that is industrially applicable may be entitled to

obtain a design registration for the said 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

filing of the said 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.

(Exception to lack of novelty of design

Article 4 (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

(excluding those which have fallen under item (i) or (ii) of Article 3(1) by being

published in a gazette relating to an invention, utility model, design or

trademark), 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.

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 (referred to as a "certificate" in the

following paragraph) may be applicable.

(4) Notwithstanding the preceding paragraph, where, due to reasons beyond the

control of a person who submits a certificate, the person is unable to submit the

certificate within the time limit as provided in the said paragraph, the person

may submit to the Commissioner of the Patent Office the certificate 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.

(Unregistrable designs)

Article 5 Notwithstanding Article 3, the following designs shall not be registered.

(i) a design which is liable to injure public order or morality;

(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.

(Provisional non-exclusive license)

Article 5-2 (1) A person who has the right to obtain a design registration may

grant a provisional non-exclusive license on the design right to be obtained based

on the right to obtain a design registration to a third person within the scope of a

design stated in the application for design registration and depicted in the

drawing, or represented in the photograph, model or specimen attached to the

application or a design similar thereto.

(2) Where the establishment of a design right has been registered with regard to the

application for design registration pertaining to the provisional non-exclusive

license under the preceding paragraph, a non-exclusive license shall be deemed to

have been granted on regard to the design right to a person who has the said

provisional non-exclusive license to the extent permitted by the contract granting

the said provisional non-exclusive license.

(3) The provisions of Article 33(2) and (3), 34-3(4), (6), (8) to (10) and 34-5 of the

Patent Act (Act No.121 of 1959) shall apply mutatis mutandis to a provisional

non-exclusive license. In this case, the term "Article 46(1)" in Article 34-3(8) of the

Patent Act shall be deemed to be replaced with "Article 13(2) of the Design Act,"

the term "Article 46(2) of the Patent Act with regard to an application for design

registration pertaining to a provisional non-exclusive license under Article 5-2(1)

of the Design Act (Act No.125 of 1959)" in Article 34-3(9) of the Patent Article

shall be deemed to be replaced with "Article 13(1) of the Design Act with regard to

a patent application pertaining to a provisional non-exclusive license under

paragraph (1) or (4) of the preceding Article."

Article 6 (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 an 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.

(One application per design)

Article 7 An application for design registration shall be filed for each design in

accordance with a classification of articles as provided by an Ordinance of the

Ministry of Economy, Trade and Industry.

(Design for a set of articles)

Article 8 Where two or more articles are used together and are specifically

designated by an 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.

(Prior application)

Article 9 (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 appeal/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 appeal/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) 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.

(5) 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.

(Amendment of statement in the application or the drawing, etc., and change of

gist)

Article 9-2 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.

(Related designs)

Article 10 (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), 43-3(1) or 43-3(2) of the Patent Act 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.

(Division of applications for design registration)

Article 10-2 (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, appeal/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 43-3(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 43-3(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

(Conversion of application)

Article 13 (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 three months 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.

(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) An applicant of a patent may, when there is a person who has a provisional

exclusive license on the patent application, may convert the patent application

pursuant to paragraph (1) only in the case where the consent of the person is

obtained.

(6) Articles 10-2(2) and (3) shall apply mutatis mutandis to the case of conversion of

an application under paragraph (1) or (2).

(Special provisions on conversion of application concerning international

applications under the Patent Cooperation Treaty)

Article 13-2 (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) or (4) 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) or (4) and 48-5(1) of said Act have been

completed.

(Secret design)

Article 14 (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, appeal/trial, retrial or

litigation relating to the design 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 an Ordinance of the Ministry of Economy, Trade

and Industry.

(Application mutatis mutandis of provisions of the Patent Act)

Article 15 (1) Articles 38 (joint applications), 43(1) to (4), (8) and (9) (procedures

for a priority claim under the Paris Convention) and 43-3 (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 the

time limit provided by Ordinance of Ministry of the Economy, Trade and

Industry" in Article 43(1) of said Act shall be deemed to be replaced with "at the

time of filing of the application for design registration", "within one year and four

months from the earliest of the following dates" in Article 43(2) shall be deemed to

be replaced with "within three months from the date of filing of the application for

design registration", "a person who have received a notice under paragraph (6)"

and "the preceding paragraph" in Article 43(8) shall be deemed to be replaced

with "a person who submits documents under paragraph (2)" and "the said

paragraph", respectively, and "the preceding two articles" in Article 43-3(3) of

said Act shall be deemed to be replaced with "Article 43".

(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 (excluding except the part pertaining to a provisional exclusive

license) (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 to Article 19)

(Examination by examiner)

Article 16 The Commissioner of the Patent Office shall direct the examination of

applications for design registration by an examiner.

(Examiner's decision of refusal)

Article 17 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 (2), 10(1) to (3) 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 an applicant of a design registration does not have the right to obtain

a design registration on the design for the said design.

(Dismissal of amendments)

Article 17-2 (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 three months 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 appeal against an

examiner's ruling dismissing an amendment under paragraph 1, examination of

the application for design registration shall be suspended until the appeal/trial

decision becomes final and binding.

(New application for amended design)

Article 17-3 (1) Where an applicant for design registration files, within three

months 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 administrative judge 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.

(Examiner's decision to the effect that a design registration is to be granted)

Article 18 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.

(Application mutatis mutandis of provisions of the Patent Act)

Article 19 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 IV Design Right

Section 1 Design Rights (Article 20 to Article 36)

(Registration of establishment of a design right)

Article 20 (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).

(Duration of design rights)

Article 21 (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.

(Transfer of the design right of a Related Design)

Article 22 (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), appeal/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.

(Effect of design right)

Article 23 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.

(Scope of registered design, etc.)

Article 24 (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 administrative judges 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 administrative judges 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.

(Relationship to registered designs, etc. held by others)

Article 26 (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.

(Special provisions for pertaining to transfer of a design right)

Article 26-2 (1) Where a design registration falls under the requirements provided

for in Article 48(1)(i) (limited to cases where the design registration has been

granted obtained in violation of Article 38 of the Patent Act as applied mutatis

mutandis in Article 15(1)) or in Article 48(1)(iii), a person who has the right to

obtain a design registration on the design pertaining to the said design

registration may, pursuant to the provision of an Ordinance of the Ministry of

Economy, Trade and Industry, request an owner the holder of the design right

to transfer the said design right as provided by an Ordinance of the Ministry of

Economy, Trade and Industry.

(2) A request with regard to the design right of a Principal Design or a Related

Design under the preceding paragraph may not be filed after any of the right of

its Principal Design or its Related Design has been extinguished, unless the

extinguished design right has been deemed never to have existed from the

beginning under Article 49.

(3) Where the transfer of a design right has been registered based on the request

under paragraph (1), the design right shall be deemed to have belonged to a

person who has obtained the said registration from the beginning. The same shall

apply to the right to claim on the design pertaining to the said design right under

Article 60-12(1).

(4) Where a share of a jointly owned design right is transferred based on the request

under paragraph (1), Article 73(1) of the Patent Act as applied mutatis mutandis

pursuant to Article 36 of this Act shall not apply.

(Exclusive license)

Article 27 (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), appeal/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) Articles 77 (iii) to (v) (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.

(Non-exclusive license)

Article 28 (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) (joint ownership), 97(3) (waiver) and 99 (perfection of

non-exclusive license) of the Patent Act shall apply mutatis mutandis to

non-exclusive licenses.

(Non-exclusive license based on prior use)

Article 29 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.

(Non-exclusive license based on prior application)

Article 29-2 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 appeal/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.

(Non-exclusive licenses by due to the working of the design prior to the before

registration of transfer of a design right)

Article 29-3 A person who had had a design right, an exclusive license on the

design right or a non-exclusive license on the design right or the exclusive license

at the time of the registration of transfer of design right based on the request

pursuant to Article 26-2(1), and is doing a business working a design in Japan or

preparing such business, before the registration of transfer of the design right,

without knowledge that the design registration falls under the requirements as

provided in Article 48(1)(i) (limited to cases where the design registration has

been obtained in violation of Article 38 of the Patent Act as applied mutatis

mutandis in Article 15(1) of this Act) or Article 48(1)(iii), 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.

(2) A request with regard to the design right of a the Principal Design or a the

Related Design under the preceding paragraph may not be filed after any of the

right of its the Principal Design or its the Related Design has been extinguished,

unless the extinguished design right has been deemed never to have existed from

the beginning under Article 49.

(Non-exclusive license due to the working of the design prior to the registration of

the request for invalidation trial)

Article 30 (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 invalidation trial 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 invalidation trial of design registration, has an

exclusive license regarding the design right pertaining to the design

registration to be invalidated, or a non-exclusive license 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.

(Non-exclusive license after expiration of duration of design right, etc.)

Article 31 (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 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.

(Award granting non-exclusive license)

Article 33 (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, 84-2, 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).

(Transfer, etc. of non-exclusive license)

Article 34 (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.

(Right of pledge)

Article 35 (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.

(Application mutatis mutandis of provisions of the Patent Act)

Article 36 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 to Article 41)

(Right to seek injunction)

Article 37 (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.

(Acts Deemed to constitute infringement)

Article 38 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.

(Presumption of Amount of Damage, etc.)

Article 39 (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.

(Presumption of negligence)

Article 40 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).

(Application mutatis mutandis of provisions of the Patent Act)

Article 41 Articles 104-2 to 105-6 (Obligation to clarify the specific conditions,

restrictions on the exercise of rights of patentee, etc., limitation to assertion

restriction on claim, production submission 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 to Article 45)

(Registration fees)

Article 42 (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 twentieth year: annually 16,900 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 an Ordinance of the Ministry of Economy, Trade

and Industry; provided, however, that where so provided by an Ordinance of the

Ministry of Economy, Trade and Industry, a cash payment thereof shall be

accepted.

(Time limit for payment of registration fees)

Article 43 (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 appeal/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.

(4) Where, due to reasons beyond the control of a person who pays registration fees,

the person is unable to pay the registration fees within the time limit as provided

in paragraph (1) (where the time limit under the preceding paragraph is extended,

within the extended time limit), the person may, notwithstanding paragraph (1),

pay the registration fees 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.

(Payment of registration fees by interested persons)

Article 43-2 (1) An interested person may pay the registration fees even against

the will of the person by whom the registration fees are to be paid.

(2) The interested person who has paid the registration fees under the preceding

paragraph may request the reimbursement of the expenses arising therefrom to

the extent of the actual benefit obtained by the person by whom the patent fees

were to be paid.

(Late payment of registration fees)

Article 44 (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 an Ordinance of the Ministry of

Economy, Trade and Industry; provided, however, that where so provided by an

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).

(Restoration of design right by late payment of registration fees)

Article 44-2 (1) Where an original holder of a design right which was deemed to

have been extinguished under paragraph (4) of the preceding Article, has

justifiable reasons for having been unable to pay the registration fees and the

registration surcharge under Articles 44(4) within the time limit for late payment

of the registration fees under Article 44(1), the original holder of the design right

may make a late payment of the registration fees and the surcharge within two

months from the date on which the justifiable reasons ceased to exist, but not

later than one year 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).

(Restriction on effect of restored design right)

Article 44-3 (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.

(Application mutatis mutandis of provisions of the Patent Act)

Article 45 Article 111(1) (Excluding item (iii)) to (3) (Refund of patent fees) of the

Patent Act shall apply mutatis mutandis to registration fees.

Chapter V Trials and Appeals (Article 46 to Article 52)

(Appeal against examiner's decision of refusal)

Article 46 (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 an appeal

against the examiner's decision of refusal within three months from the date the

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 appeal 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.

(Appeal against examiner's ruling dismissing an amendment)

Article 47 (1) A person who has received an examiner's decision to dismiss an

amendment under Article 17-2(1) and is dissatisfied may file a request for an

appeal against the examiner's ruling dismissing an amendment within three

months 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 appeal against an examiner's ruling dismissing an amendment.

(Invalidation trial of design registration)

Article 48 (1) Where a design registration falls under any of the following, a

request for invalidation trial 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 (where the

design registration has been obtained in violation of Article 38 as applied

mutatis mutandis under Article 15(1), excluding the case where the transfer of

a design right pertaining to the design has been registered based on the request

under Article 26-2(1)).

(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 has not had the right to obtain the design

registration for the said design (excluding the case where the transfer of a

design right pertaining to the design registration has been registered based on

the request under Article 26-2(1)); 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 invalidation trial of design registration;

provided, however, that where a request for invalidation trial 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 a

person who has the right to obtain a design registration pertaining to the said

design registration may file a request for invalidation trial of design registration.

(3) A request for invalidation trial of design registration may be filed even after the

lapse of the design right.

(4) Where a request for invalidation trial of design registration has been filed, the

chief administrative judge shall notify the exclusive licensee of the design right

and other persons who have any registered rights relating to the design

registration.

(Trial to invalidate a design registration)

Article 49 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.

(Application mutatis mutandis of provisions on examination)

Article 50 (1) Article 17-2 and Article 17-3 shall apply mutatis mutandis to an

appeal against an examiner's decision of refusal. In this case, the term "three

months" in Article 17-2(3) and 17-3(1) shall be deemed to be replaced with "thirty

days," and the term "files a request for an appeal 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 appeal 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 appeal against the examiner's decision of refusal.

(Special provisions for appeal against examiner's ruling dismissing an

amendment)

Article 51 Where appeal decision is made to rescind an examiner's ruling in appeal

against the examiner's ruling dismissing an amendment, the decision made in the

appeal decision shall be binding upon the examiner with respect to the case.

(Application mutatis mutandis of provisions of the Patent Act)

Article 52 Articles 131(1) and (2), 131-2 (excluding items paragraphs (1)(iii) and

(2)(i)) to 134, 135 to 154, 155(1) and (2), 156(1), (3) and (4), 157, 158, 160(1) and (2),

161, and 167 to 170 (request for appeal/trial, administrative judge, procedures of

appeal/trial, relation to litigation and costs of appeal/trial) of the Patent Act shall

apply mutatis mutandis to appeal/trial. In this case, the term ", in appeal/trial

other than invalidation trial, notify" in Article 156(1) shall be deemed to be

replaced with "notify" the term "appeal against the examiner's decision of refusal"

in Article 161 and the term "appeal against an examiner's decision of refusal and

correction trial" in Article 169(3) of the said Act shall be deemed to be replaced

with "an appeal against an examiner's decision of refusal and appeal against an

examiner's ruling dismissing an amendment."

Chapter VI Retrial and Litigation (Article 53 to Article 60-2)

(Request for retrial)

Article 53 (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.

(Restriction on effect of design right restored by retrial)

Article 55 (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.

(Application mutatis mutandis of provisions on trial)

Article 57 (1) Article 50(1) and (3) shall apply mutatis mutandis to a retrial

against a final and binding trial decision in appeal 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 appeal against an examiner's ruling dismissing an amendment.

(Application mutatis mutandis of provisions of the Patent Act)

Article 58 (1) Articles 173 and 174(5) 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(1), (3) and (4), 157, 158, 160, the main clause of

167-2, 168, 169(3) to (6), and 170 of the Patent Act shall apply mutatis mutandis

to a retrial against a final and binding trial decision in appeal against an

examiner's decision of refusal. In this case, the term "appeal 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 "appeal 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(1), (3) and (4), 157, the main clause of 167-2,

168, 169(3) to (6), and 170 of the Patent Act shall apply mutatis mutandis to a

retrial against a final and binding appeal/trial decision in appeal against an

examiner's ruling dismissing an amendment. In this case, the term "appeal

against an examiner's decision of refusal and correction trial" in Article 169(3) of

the said Act shall be deemed to be replaced with "appeal against an examiner's

ruling dismissing an amendment."

(4) Article 174(3) of the Patent Act shall apply mutatis mutandis to retrial against a

final and binding trial decision in invalidation trial of design registration

(Actions against appeal/trial decisions, etc.)

Article 59 (1) The Tokyo High Court shall have exclusive jurisdiction over any

action against appeal/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

appeal/trial or a retrial.

(2) Articles 178(2) to (6) (Statute of limitations for filing an action, etc.), 179

(Appropriate party as defendant), 180(1) (Notice of institution of action) and

180-2 to 182 (Opinion of the Commissioner of the Patent Office in litigation

rescinding the appeal/trial decision, rescission of the appeal/trial decision or

ruling and delivery of original copy of judgment) of the Patent Act shall apply

mutatis mutandis to an action under the preceding paragraph. In this case, the

term "necessary for identifying claims pertaining to an action with respect to

which" in Article 182(ii) shall be deemed to be replaced with "stating that"

(Action against amount of compensation)

Article 60 (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.

(Relationship between (administrative) objection and litigation)

Article 60-2 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 VI-2 Special Provisions based on Geneva Act of the Hague Agreement

concerning the International Registration of Industrial Designs

(Article 60-3 to Article 60-23)

Section 1 Application for International Registration

(Application for International registration)

Article 60-3 (1) A Japanese national or a foreign national domiciled or resident (or,

in the case of a juridical person, with a business office) in Japan may file to the

Commissioner of the Patent Office an international application as provided in

Article 1(vii) of Geneva Act of the Hauge Agreement concerning the International

Registration of Industrial Designs (hereinafter referred to as "Geneva Act")

(hereinafter referred to as "international application"). In this case, where the

requirements as provided by Ordinance of the Ministry of Economy, Trade and

Industry are satisfied, two or more persons may jointly file an international

application.

(2) A person filing an international application under the preceding paragraph

(hereinafter referred to as "application for international registration") shall submit an

application written in a foreign language and necessary materials as provided by

Ordinance of the Ministry of Economy, Trade and Industry.

(Application mutatis mutandis of provisions related to applications for design

registration)

Article 60-4 The provisions of Articles 17(3) (limited to the part pertaining to (iii))

and 18(1) of the Patent Act as applied mutatis mutandis under Article 68(2) of

this Act shall apply mutatis mutandis to the application for international

registration.

(Delegation to Ordinance of the Ministry of Economy, Trade and Industry)

Article 60-5 In addition to those prescribed in the preceding two Articles, details of

matters necessary for enforcing Geneva Act and the rules under Geneva Act

relating to application for international registration shall be prescribed by

Ordinance of the Ministry of Economy, Trade and Industry.

Section 2 Special Provisions Concerning International Applications for

Design Registration (Article 60-6 to Article 60-23)

(Application for design registration based on International Application)

Article 60-6 (1) An international application designating Japan as a designated

Contracting Party under Article 1 (xix) of Geneva Act, where publication of an

international registration under Article 1 (vi) of Geneva Act (hereinafter referred

to as "international registration") pertaining to the International Application

(hereinafter referred to as "international publication") have been made under

Article 10(3)(a) of Geneva Act shall be deemed to be an application for design

registration filed on an international registration date under Article 10(2) of

Geneva Act (hereinafter referred to as "date of the international registration").

(2) For the purpose of application of the preceding paragraph to an international

application including two or more designs, "an application for design registration

filed" in the said paragraph shall read "an application for design registration filed

for each design that is the subject of an international registration".

(3) Matters listed in the left columns of the following table recorded on

International Register under Article 1(viii) of Geneva Act (hereinafter referred to

as "International Register") pertaining to an international application deemed to

be an application for design registration under paragraph (1) (including cases of

replacing under the preceding paragraph) (hereinafter referred to as

"international application for design registration") shall be deemed to be the

matters listed in the right columns of the said table stated in an application

submitted under Article 6(1) of this Act.

the name, and domicile or residence of

the registered person of an international

registration;

the name, and domicile or residence of

the applicant for design registration;

the name and the domicile of a person

who has created a design that is the

subject of an international registration;

the name, and the domicile or residence

of a person who has created a design;

one or more products that constitute a

design that is the subject of an

international registration, or one or

more products that will use a design

that is the subject of an international

registration;

the article to the design;

(4) The design recorded on International Register concerning international

applications for design registration shall be deemed to be a design for which

registration is requested, which is depicted in the drawing submitted under

Article 6(1) of this Act.

(Special provision for exception to lack of novelty of design)

Article 60-7 Notwithstanding Article 4(3), an applicant of an international

application for design registration who requests the application of Article 4(2)

may submit to the Commissioner of the Patent Office, after the date of

international publication, but not later than the time limit as provided in

Ordinance of the Ministry of Economy, Trade and Industry, a document stating

thereof and a document proving the fact that the design which has fallen under

items (i) and (ii) of Article 3(1) is a design to which Article 4(2) may be applicable.

(Special provision for registration of related designs)

Article 60-8 For the purpose of application of Article 10(1) in the case where either

or both of the application for design registration of a principal design and the

application for design registration of a related design are international

applications for design registration, "or under Article 43-3(1) or (2)" in the said

paragraph shall read "or under Article 43-3(1) or (2), or Article 6(1)(a) of Geneva

Act."

(Special provision for secret designs)

Article 60-9 Article 14 shall not apply to the applicant of an international

application for design registration.

(Special provisions for procedures for a priority claim under the Paris Convention,

etc.)

Article 60-10 (1) Articles 43(1) to (4), (8) and (9) (including its mutatis mutandis

application in Article 43-3(3) of Patent Act to be applied mutatis mutandis in

Article 15(1)) and 43-3(2) of Patent Act to be applied mutatis mutandis in Article

15(1) shall not apply to international applications for design registration.

(2) Article 43(2) to (4), (8) and (9) of Patent Act shall apply mutatis mutandis to a

person who has made a declaration of priority under Article 6(1)(a) of Geneva Act.

In this case "within one year and four months from the earliest of the following

dates" in Article 43(2) of the said Act shall be deemed to be replaced with "within

the time limit provided by Ordinance of the Ministry of Economy, Trade and

Industry," and "a person who has received notice under paragraph (6)" and "the

preceding paragraph" in Article 43(8) shall be deemed to be replaced with "a

person who submits documents under paragraph (2)" and "the said paragraph,”

respectively.

(Special provisions for the right to obtain a design registration)

Article 60-11 (1) For the purpose of application of Article 34(4) of Patent Act as

applied mutatis mutandis under Article 15(2) of this Act to an international

application for design registration, "except in the case of general successions

including inheritance, ... the Commissioner of the Patent Office " in the said

paragraph shall read "the International Bureau under Article 1(xxviii) of Geneva

Act".

(2) Article 34(5) and (6) as applied mutatis mutandis under Article 15(2) of this Act

shall not apply to the international application for design registration.

(Effect etc., of international publication)

Article 60-12 (1) After the international publication, where the applicant of an

international application for design registration has given warning with

documents stating the design in the international application for design

registration, the applicant of the international application for design registration

may claim compensation against a person who has worked the design in the

international application for design registration or designs similar thereto, as a

business after the warning, prior to the registration establishing a design right,

and the amount of compensation shall be equivalent to the amount the applicant

would be entitled to receive for the working of the registered design or designs

similar thereto if the design in the international application for design

registration was the registered design. Even where the said warning has not been

given, the same shall apply to a person who worked the design in the

international application for design registration or designs similar thereto as a

business prior to the registration establishing a design right, with knowledge of

the design having been claimed in the international application for design

registration that the international publication has been effected.

(2) Paragraphs (2) to (6) of Article 65 of Patent Act shall apply mutatis mutandis to

the exercise of the right to claim compensation under the preceding paragraph. In

this case, "after the laying open" in paragraph (5) of the said Article shall be

replaced with "after international publication", and "Articles 101, 104 to 104-3,

105, 105-2, 105-4 to 105-7 and "in paragraph (6) of the said Article shall be

replaced with "Articles 104-2 to 105-2 and 105-4 to 105-6 of Patent Act as applied

mutatis mutandis under Articles 38 and 41 of Design Act, and Patent Act as

applied mutatis mutandis under Article 52 of Design Act."

(Special provision for registration of establishment of a design right)

Article 60-13 For the purpose of application of Article 20(2) of this Act to an

international application for design registration, "payment of the registration fee

for the first year under Article 42(1)" in the said paragraph shall read "decision or

the appeal decision to the effect that the design is to be registered."

(Effect by extinguishment of international registration)

Article 60-14 (1) Where international registration on which an international

application for design registration is based is extinguished, the international

application for design registration shall be deemed to have been withdrawn.

(2) A design right obtained the registration establishment under Article 20(2) to be

applied mutatis mutandis in the preceding paragraph (hereinafter referred to as

"design right based on international registration") shall be deemed to have been

extinguished where the international registration is extinguished.

(2) Effects of the preceding two paragraphs shall be taken as of the date on which

the said international registration is extinguished from the International

(Special provision for pertaining to transfer of a design right of a related design)

Article 60-15 For the purpose of application of Article 22(2) to the design right of a

principal design based on international registration, "Article 44(4)" in the said

paragraph shall read "Article 60-14(2)."

(Special provision for establishment of an exclusive license on the design right of

a related design)

Article 60-16 For the purpose of application of Article 27(3) to the design right of a

principal design based on international registration, "Article 44(4)" in the said

paragraph shall read "Article 60-14(2)."

(Special provisions for waiving a design right)

Article 60-17 (1) A person who has a design right based on international

registration may waive the design right.

(2) Article 97(1) of Patent Act as applied mutatis mutandis under Article 36 shall

not apply to the design right based on international registration.

(Special provisions for the effect of a design right registration)

Article 60-18 (1) Transfer, modification due to trust, lapse due to abandonment, or

restriction on disposition of a design right based on international registration

must be registered to take effect.

(2) Article 98(1)(i) and (2) of Patent Act as applied mutatis mutandis under Article

36 shall not apply to the design right based on international registration.

(Special provisions for registration in the design registry)

Article 60-19 (1) For the purpose of application of Article 61(1)(i) to a design right

based on international registration, "establishment, transfer, modification due to

trust, lapse, restoration or restriction on disposition of a design right" in the said

paragraph shall read "establishment, modification due to trust, extinguishment

(limited to extinguishment upon expiration of the duration), or restriction on

disposition of a design right."

(2) Transfer or extinguishment (excluding extinguishment upon expiration of the

duration) of a design right based on international registration depends on the

place at which the design right is registered in the International Register.

(Special provision for Design Bulletin)

Article 60-20 For the purpose of application of Article 66(2)(i) to a design right

based on international registration, "excluding extinguishment under Article

44(4)) or the restoration thereof (limited to restoration under Article44-2(2)" in

the said item shall read "excluding extinguishment under Article 60-14(2)

(limited to extinguishment due to the fact that renewal under Article 17(2) of

Geneva Act was not made))."

(Individual designation fee of international applications for design registration)

Article 60-21 (1) A person filing international applications for design registration

shall pay, as the individual designation fee under Article 17(2) of Geneva Act

(hereinafter referred to as individual designation fee, the amounts equivalent to

74,600 yen per case to the International Bureau under Article 1(xxviii) of Geneva

Act (referred to as "International Bureau" in the following paragraph).

(2) A person making renewal under Article 7(2) of Geneva Act with regard to the

international registration on which an international application for design

registration or a design right based on the international registration is based

(excluding renewal made after fifteen years has elapsed from the date of the

international registration) shall pay, as the individual designation fee, the

amounts equivalent to 84,500 yen per case to International Bureau.

(2) Articles 42 to 45 and 67(2) (limited to the part listed in item (i) of Appended

Table) shall not apply to a design right based on an international application for

design registration or an international registration.

(Refund of individual designation fee)

Article 60-22 (1) Where an international application for design registration has

been withdrawn, or decision of refusal or trial decision to the international

application for design registration has become final and binding, amounts as

provided in Cabinet Order shall be refunded upon the request of the person who

paid the individual designation fee to be paid under paragraph (1) or (2) of the

preceding Article.

(2) No request for refunding the individual designation fee under the preceding

paragraph may be filed after the expiration of six months from the date on which

the international application for design registration has been withdrawn, or

decision of refusal or trial decision to the international application for design

registration has become final and binding.

(3) Notwithstanding paragraph (1), where, due to reasons beyond the control of a

person who files request for refund of the individual designation fee under the

said paragraph, the person is unable to file the request within the time limit as

provided in the preceding paragraph, the person may 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.

(Delegation to Ordinance of the Ministry of Economy, Trade and Industry)

Article 60-23 In addition to those prescribed in Articles 60-6 to 60-22, details of

matters necessary for enforcing Geneva Act and the rules under Geneva Act shall

be prescribed by Ordinance of the Ministry of Economy, Trade and Industry.

Chapter VII Miscellaneous Provisions (Article 60-24 to Article 68)

(Amendment of proceedings)

Article 60-24 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, appeal/trial or retrial.

(Registration in the design registry)

Article 61 (1) The following matters shall be registered in the design registry

maintained in the Patent Office:

(i) the establishment, transfer, modification due to trust, lapse, restoration or

restriction on disposition, of a design right;

(ii) the establishment, maintenance, transfer, modification, lapse or restriction on

disposal, of an exclusive license; and

(iii) the establishment, transfer, modification, lapse or restriction on disposal, of a

right of pledge on a design right or 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.

(Issuance of certificate of design registration)

Article 62 (1) The Commissioner of the Patent Office shall issue the certificate of

design registration to the holder of the design right where the establishment of a

design right has been registered or transfer of the design right has been

registered based on the request under Article 26-2(1).

(2) Re-issuance of the certificate of design registration shall be prescribed by

Ordinance of the Ministry of Economy, Trade and Industry.

(Request for certificate, etc)

Article 63 (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 appeal against an examiner's decision of refusal or

appeal 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 invalidation trial 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 order or morality.

(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.

(Mark of Design Registration)

Article 64 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 an 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.

(Prohibition of false marking)

Article 65 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.

(Design Bulletin)

Article 66 (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 Article44-2(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

appeal/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 appeal/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.

(Fees)

Article 67 (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 who file applications for international registration;

(v) persons filing a request for the re-issuance of the certificate of design

registration;

(vi) persons filing a request for the issuance of a certificate under Article 63(1);

(vii) persons filing a request for the issuance of a certified copy of documents or an

extract of documents under Article 63(1):

(viii) persons filing a request to allow the inspection or copying of documents,

model or specimen under Article 63(1); and

(ix) 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 an Ordinance of the Ministry of Economy, Trade

and Industry; provided, however, that where so provided by an 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.

(9) Notwithstanding paragraph (7), where, due to reasons beyond the control of a

person who files request for refund of fees under the said paragraph, the person is

unable to file the request within the time limit as provided in the preceding

paragraph, the person may 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.

(Application mutatis mutandis of provisions of the Patent Act)

Article 68 (1) The provisions of Articles 3, 4 and 5(1),(2) (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 "Articles 46-2(1)(iii), 108(1), 121(1) or

173(1)" in Article 4 of the Patent Act shall be deemed to be replaced with "Articles

43(1), 46(1) or Article 47(1), or Article 173(1) applied mutatis mutandis in 58(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 an appeal against an

examiner's decision of refusal and appeal 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

appeal against an examiner's decision of refusal and appeal 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 appeals under Administrative Appeal Act) of the

Patent Act shall apply mutatis mutandis to a ruling to dismiss an amendment, an

examiner's decision, an appeal/trial decision, or a ruling to dismiss a written

request for appeal/trial or retrial, or dispositions against which no appeal lies in

accordance with this Act.

Chapter VIII Penal Provisions (Article 69 to Article 77)

(Crime of infringement)

Article 69 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.

(Crime of fraud)

Article 70 Any person who has obtained a design registration or appeal/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.

(Crime of false marking)

Article 71 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.

(Crime of perjury, etc.)

Article 72 (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 appeal/trial decision has

become final and binding, the punishment may be reduced or exculpated.

(Crime of divulging secrets)

Article 73 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.

(Crime of breach of protective order)

Article 73-2 (1) A person who fails to comply with an order given under Article

105-4(1) of the Patent Act (including its mutatis mutandis application in Article

65(6) of the said Act to be applied mutatis mutandis in Article 60-12(2)) 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.

(Dual liability)

Article 74 (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.

(Civil fine)

Article 75 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(3) 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.

Supplementary provisions (Extract)

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 under Article 14(1)

5,100 yen per case

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 appeal/trial or retrial 55,000 yen per case

7 A person applying for intervention in appeal/trial or retrial

55,000 yen per case

اليابان

JP207

Design Act (Act No. 125 of April 13, 1959, as amended up to Act No. 55 of July 10, 2015)