1 Summary of the Revision of the Design Examination Standard for by guym13

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									Summary of the Revision of the Design Examination Standard

         for Designs Containing a Graphic Image

                       (Draft version)



1.   Basic   ideas   underlying   the   revision   of   Design

     Examination Standards


Under the Japanese Design Act, Article 2(2) provides that

“The shape, patterns or colors, or any combination thereof,

of a part of an article……, 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.” As

provided in this Article, a graphic image itself is not

to be regarded as a protectable subject matter but to be

protected as a part of an article under the Japanese Design

Act. Before the revision of the Japanese Design Act in 2006,

figures or graphic images displayed on a liquid crystal

display had already been protected in limited way. It can

be said that the definition of “designs containing a

graphic image” under the Japanese Design Act has become

extended as having newly introduced Article 2(2) in which



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additional definition regarding “designs containing a

graphic image” is stipulated.



After the Japan Paten Office (hereinafter referred to as

the “JPO”) published the current Design Examination

Standards, which revised on March, 2007, many mentioned

that more specific standards should be established.


The JPO is going to introduce more detailed stipulation

so as to make clear the basic ideas underlying its

examination practices.



2.    Detailed points of discussion



(1)    Point   1:    Interpretation     of    the   wording   newly

       incorporated into Article 2(2) of the Japanese Design

       Act



a) “Operation” referred to in Article 2(2)



According to 74.1(2) and 74.1.1.1(1) of the current Design

Examination Standards, “operation” referred to in Article

2(2)   of    the    Japanese   Design   Act    means   to   provide

directions/ instructions so as to put the article into work



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state according to its functions.



For making the above stipulation clearer, firstly, the

following stipulations are going to be added:



“If the graphic image does not contain any elements

relating to ‘operation’ or if the graphic image concerned

merely indicates the state of the article working, these

graphic images should not be considered as a graphic image

for the ‘operation’ of the articles.”



As well as,

“Concerning the term ‘operation’ here, if one operation

can be interpreted (in a way of relatively broader meaning)

based on looking at all the graphic images as a whole, that

should be regarded as meeting the necessary requirement.

In other words, such interpretation does not necessarily

extend to identifying how one operation is actually

corresponding   with   each   of   elements   regarding   the

concerned graphic images concerned.”



b) “its functions” referred to in Article 2(2)

According to 74.1(3) of the current Design Examination

Standards, the term “its functions” is stipulated as “those


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functions that could be generally assumed from the

article.”



To make the stipulation “the functions that could be

generally assumed from the article” more understandable

to users, some examples as stated below are going to be

listed in the Design Examination Standards:



“Take a telephone, for example, since the article is a

telephone, its function can be defined as a means to

verbally    communicate   with   the   other   end   of   the

communication line.”



“For an article having two or more functions, each of the

functions can be considered as ‘its functions.’ Take a

camera phone, for example, ‘its functions’ can be defined

as   verbal   communications,    picture-taking,     picture

displaying and sending / receiving of e-mail messages.”


“For a design with a function that is not generally

assumable from the article concerned, such function should

be stated in the design application. That is, even if the

function regarding the concerned design can not be

generally assumed from its article, if the applicant states



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necessary explanations in the design application, it is

possible for the applicant to receive a design protection

concerning the graphic image as it has certain function

to enables the article to perform the said function.”


c) The meaning of “a state in which the article is enabled
to perform its functions”, which is stipulated in the
provision of Article 2(2) of the Japanese Design Act


The note to 74.1(3) of the current Design Examination

Standards stipulates as “Here, the phrase ‘a state in which

the article is enabled to perform’ means that a state in

which the article is in readiness to perform its functions,

and thus the scope of protection does not include a state

in which the article is actually working according to its

functions.   (The   following       is   omitted)”   The   similar

stipulation is also included in 74.4.1.1.1(2) of the Design

Examination Standards.



With respect to “a state in which the article is enabled

to perform,” some examples are going to be added to the

Design Examination Standards:



“For instance, if the article is a ticket-vending machine,

the state in which the article is enabled to perform should


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be interpreted as the timing of just before completing its

ticket issuing.”



“As for an optical disc record reproduction machine, which

function is to reproduce images, the state in which the

article is enabled to perform should be interpreted as the

timing of just before its digital contents are made audible

or visible.”



“As for an automated teller machine, which function is to

transfer money, the state in which the article is enabled

to perform should be interpreted as the timing of just

before completing the procedure of bank transferring.”



As well as,

“In the case that an article has two or more functions,

even if one graphic image has already been at the state

of performing its function, so long as the design concerned

obtains another graphic image which is to be used for

performing its another new function, such graphic image

should be regarded as the subject to enable the article

to perform its functions and should be registered.



(2)   Point 2:   “One application per design(Article 7 of


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     Japanese design Act)” provision applicable to designs

     containing graphic images



Regarding a graphic image which changes its appearance and

is displayed in different forms, the following stipulation

is going to be added to the Design Examination Standards:

“With respect to a design including graphic images, in

principle, one design application should carry one graphic

image”



The following stipulation is going to be added:

“Even if there are two or more graphic images in one

application, if the concerned subject satisfies the

following two conditions at the same time, these plural

graphic images should be regarded as “one design”: (i) if

these graphic images are to be used together to enable the

article to perform one particular function, and (ii) in

light of the comparison between the former and latter

graphic image, if it is possible to see that the latter

graphic image maintains the elements of the former graphic

image in their shape, patterns or colors, which is

determined based on the fact that the latter graphic image

has no extra elements or fewer elements (in other words,

the subject matter changes very subtlety).”


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If the filed subject is so called “animation,” which is

technically a series of graphic images that are slightly

different from each other, then such a series of graphic

images are to be regarded as constituting two or more

graphic images, and design examiners will determine

whether these graphic images should be regarded as “one

design.”



Some examples are going to be added to the Design

Examination Standards so as to convey a more specific idea

about what types of designs, containing two or more graphic

images are to be regarded as “one design.”



(3)   Other amendments



a) In the case that a filed design containing a graphic

  image which shows contents(i.e., one scene from a TV show,

  a movie, or an Internet website) that are independent

  from the article



There are various types of designs containing one graphic

image or multiple graphic images. A typical design is one

which contains a still image from a movie or the like.


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There are other possible examples. For instance, many video

recorders use a graphic image for timer recording that can

appear on a TV screen while a TV program is being watched.

Such design can contain not only a graphic image that is

to be used for the operation concerned, but also a mere

clip from a movie, etc. (i.e., something that can be

considered content itself, such as a still image from a

movie on a full screen), which is independent from the

article per se.



Although the above mentioned design containing such

graphic images, in total, is used for an operation, the

content per se is independent from the article. Therefore,

the stipulation below is going to be added to the Design

Examination Standards: “a portion of ‘a content’ should

not be treated as an element constituting ‘a design’ under

the Design Act.”



Regarding those elements that do not constitute “a design,”

in the normal process of the formality examination, “an

invitation to correct” is issued for such elements.

However, it is not appropriate to determine whether the

filed design contains “any content” during the formality

examination, as the formality examination is a simple check


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for some improper descriptions. ”An invitation to correct”

should be based on the consideration of all descriptions

and drawings in the design application.



Therefore, regarding the case of “a design containing ‘a

content’ that is independent from the article,” such a

determination   should   be    make   in   the   substantive

examination, and then, a notification of reasons for

refusal will be sent, saying; “With respect to a design

containing ‘a content’ that is independent from the article,

even though, the design as a whole can be regarded as being

used for the article’s operation, the applicant should be

notified of the reason for refusal under the Article 3 of

the Design Act.”



In line with this case, if the applicant submits an

amendment in which (i) “the portion of ‘the content’ which

is independent from the article,” is expunged from the

design’s drawings, and (ii) a new reference drawing

containing the said portion is added, and the applicants

states that the said portion is just an indication of “a

content,” any such amendment should not be regarded to have

changed the ‘the gist of the design.’




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b) Designs containing a graphic image involving a third

  party’s trademark or goods marketed by a third party



With respect to a design containing a graphic image, if

the graphic image includes a figure or any other element

that involves a third party’s trademark or goods marketed

by a third party, the graphic image might cause confusion

in connection with an article pertaining to a business of

the third party.



Article    5   of   the   Japanese   Design   Act   provides

“unregistrable designs.” This provision should also be

applied to the case above, just like the other traditional

designs. More specifically, a notification of the reason

for refusal under Article 5(ii) of the Japanese Design Act

is to be sent to the applicant. If the reason the applicant

is notified still remains intact, the application will be

refused.



A graphic image tends to include a figure or any other

element that involves a third party’s trademark or goods

marketed by a third party. Considering the fact above, as

a precautionary measure, a stipulation regarding this

provision of Article 5(ii) is going to be added to 74.6


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of the current Design Examination Standards.



c) Stipulation on game machines



Regarding game machines, in 74.4.1.1.2(2) of the current

Design   Examination   Standards,   it   has   already   been

stipulated that; “graphic images used for game (as a

software, or computer program per se) are NOT subject to

design protection because they always appear on a display

screen in a state where the functions of the article, i.e.

the game per se, is being working.” As well as, “graphic

images used for game machines are subject to design

protection”



The same stipulation above is going to be added to the note

to 74.1(2) of the current Design Examination Standards.




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