Episode 12

In Episode 11, we explained about designs based on functional beauty. In this case, if an item that is the subject of a design registration focuses on its function, it becomes the subject of a utility model registration.
In the United States, both designs and utility models are incorporated into the patent system and are protected as design patents and utility patents. The relationship between the two is explained by the United States Patent and Trademark Office as follows:
" In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.
While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics." (https://www.uspto.gov/web/offices/pac/mpep/s1502.html#d0e150263)
The above explanation also applies in Japan. If you create a design based on functional beauty, you should also apply for a utility model registration for that function. If you create an invention that is distinctive in its shape or configuration, you should also apply for a design registration for that shape or configuration.
If you obtain rights in both a design and a utility model, when you exercise your rights against an infringement, even if one is not recognized, there is a chance that the other will be recognized.

Episode 11

The Design Law stipulates "In this law, 'design' refers to the shape of an object, the shape of a building or a picture that evokes a feeling of beauty through the visual sense." (Article 2, paragraph 1 of the same law) .
What is this "sense of beauty"? First, there is the traditional decorative aesthetic. It is used to decorate practical objects to make them look beautiful. In contrast to this, there is functional beauty, which was born at the Bauhaus, a design school established in Weimar, Germany in 1919 after World War I. Functional beauty is the beauty that comes from an exterior that aims only at functionality and dispenses with decoration. This is the idea of ​​industrial design. Dieter Rams, a leading German industrial designer, advocated the idea of "less but better." This is the idea that a design that eliminates decoration provides a better product. Dieter Rams' thoughts are said to have influenced Jonathan Ive and created the design of the iPhone.
As a requirement for design registration, it stipulates that "Anyone who has created a design that can be used industrially can obtain a design registration for that design." (Article 3, paragraph 1 of the law). This indicates that a requirement for registering a design is that it can be mass-produced industrially. The statement "can be used for industrial purposes" indicates that products with functional beauty that exclude decoration and serve the function are eligible for design registration.
In the Japanese design examination standards, as "examples of things that create a sense of beauty by sight and things that are not recognized" it is listed as "things whose main purpose is function, effect, and effect and which convey little beauty" (Part III, Chapter 1, 2.4 (2)). In "Designs" (written by Tadashi Takada), it is stated that the interpretation and application of these examination standards require discussion (p. 86 of the same book).

Episode 10

In episode 9, we explained about trademark registration applications, but this time we will explain about appeals.
Even if you file a patent, design, or trademark application and receive a decision of refusal, you can request an appeal against the decision of refusal. In appeals against decisions of refusal, approximately 70% of requests are successful for patents, designs, and trademarks. If this appeal against the examiner's decision results in a refusal decision, a lawsuit can be filed with the Intellectual Property High Court to cancel the trial decision, but in about 80% of cases the trial decision is upheld (https://www.jpo.go.jp/resources/report/sonota-info/document/panhu/shinpan_gaiyo.pdf). Therefore, if you have the intention of acquiring rights, even if your application is rejected at the examination stage, if your budget allows, it is worthwhile to request an appeal against the decision of refusal.
In court, if you lose in the first instance, it is not uncommon to change your attorney when filing a second instance (appeal court).
The examination of applications for industrial property rights (patents, designs, trademarks) is the first instance, and the appeal against the decision of refusal is the second instance.
 If your application is rejected in the examination and you request a appeal, you have the option of changing your agent.
 However, the period for requesting an appeal against a decision of refusal is within three months from the day a certified copy of the decision is served, so if you wish to change your agent, you must request a new agent immediately after being served with a certified copy of the decision.
 In particular, when filing a request for appeal against a decision of refusal of a patent application, amendments to the scope of patent claims, etc. can be made at the same time as the request for appeal (Patent Law Article 17-2 Paragraph 1 Item 4). In this case, the case will be heard in a preliminary examination (Article 162 of the Act), so it is necessary to request a new agent immediately after the certified copy of the assessment is served in order to consider whether amendments are necessary.