In the USA, a Design must be “any new, original and ornamental design for an article of manufacture” (35 U.S. Code § 171[a], emphasis added), but icons and other images may be registered if treated as part of a manufactured article.[1; Keisen article here] In Japan, however, the nuance is different, particularly since April 2020, when the amended Design Act enabled registration of Graphic Image (displayed or projected), Building (of structures), and Interior (of structures) Designs.
Designs do not always need to be part of a manufactured article in Japan. They may be something projected or embodied in an overall design, even on a screen, now. This time we take a look more at Graphic Image Designs so that you can file to protect your images, and be aware of possible infringement risks, in Japan.
What Kind of Graphic Images Can Be Protected as a Design?
The JPO gives a sampling of registered Designs including graphic images, including these.[2]
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Certainly, a graphic image can be registered as part of another object more in line with the older form of Design Patent, but now Designs with graphic images without such an article can be patented–as these and more examples show.[2, 3]
There can be (1) a “graphic image for operation” of a device such as a user interface or an icon, or (2) “graphic image for display” that appears according to some actions a user performs, such as information displayed in a graphic image. Also, the previously possible “design including a graphic image on a part of an article etc.” remains an option, if your or another’s design is involved with an actual article or (under the revised Act) a building.[4]
What Adjustments Do I Need for My Graphic/Image Design Registered in ~ to Work in Japan?
Some requirements as far as presentation of a Design registration application may differ between your country and Japan. For example, see differences in how application drawings may appear in our article on icons as Designs. It is best to get expert advice on this, from a Japanese patent attorney.
Any Warnings?
Things you would not be able to register in other countries might be protected in Japan. So do not miss opportunities to protect graphic images you make for decorative and helpful purposes, if there is risk of their being used by others. On the other hand, a thorough search by Japanese IP professionals will help make sure you do not unwittingly infringe on a graphic/image design of someone else there.
Published: March 10, 2022. Revised: March 31, 2022.
* The information provided on this website is for informational purposes only and is not intended as legal advice.
** For questions or consultation, please contact us for more information.
Taro Yaguchi
Sources
[1] Text of 35 U.S. Code § 171, “Patents for Designs.” https://www.law.cornell.edu/uscode/text/35/171 Accessed March 10, 2022. See also United States Patent and Trademark Office, “Improper Subject Matter for Design Patents” in “Design Patent Application Guide.” Accessed March 10, 2022.
[2] Japan Patent Office. “改正意匠法に基づく新たな保護対象（画像・建築物・内装）の意匠登録事例について [Examples of new registered designs (graphic images, buildings, interiors) under the revised Design Act].” January 4, 2022. Updated March 9, 2022. Accessed March 10, 2022.
[3] Details in this report: Japan Patent Office. “画像の意匠登録事例集 [Samples of graphic image designs].” https://www.jpo.go.jp/system/laws/rule/guideline/design/document/kaisei_hogo/gazo.pdf Updated March 9, 2022. Accessed March 10, 2022.
[4] Japan Patent Office. “Design Including a Graphic Image” https://www.jpo.go.jp/e/system/laws/rule/guideline/design/shinsa_kijun/document/index/0401.pdf no date. In Examination Guidelines for Design, updated April 20, 2021. Accessed March 10, 2022.
Header image by Lukas Bieri from Pixabay
