Covering an extensive range of intellectual property rights
The following approaches can be considered for protecting the structure of an article as intellectual property: protection by patent from a technical perspective and protection by design from a design perspective.
However, protection by patent or by design has its advantages and disadvantages. For example, although patent rights have a wide scope of rights, their scope is likely to be limited as a result of amendments being made during examination or an opinion being made in a written opinion. In addition, it is quite possible that the patent right may be nullified. Design rights, on the other hand, have a high rate of registration and they are less likely to be nullified, but the scope of design rights tends to be interpreted narrowly.
Given this, more rigorous rights protection can be expected if patent rights and design rights are skillfully combined. For example, you can implement a measure aimed at acquiring broad-ranging rights for your product through a patent, while also covering the shape of the product, which has questionable patentability due to weakness in terms of novelty and inventive steps from a technical perspective, by acquiring the design rights.
While novelty and inventive steps are required under Japan’s Patent Law, its Design Law does not require sophisticated design qualities as a requirement for design registration. As a result, a functional shape can be protected under Japan’s Design Law. Furthermore, there are many cases where a technology that lacks novelty or inventive steps in terms of the technical concept realizes a shape that has never existed before, thereby satisfying the requirements for novelty and creative difficulty under Japan’s Design Law.
In such cases, protecting the shape of the product through design rights may in fact prevent a third party offering the same type of product from entering the market. By securing a wide scope of rights by using partial design and related design in particular, you may be able to protect your product more effectively.
At LEXIA, we offer multifaceted protection solutions by extracting a product’s technical points from a patent perspective and extracting its design points from a design perspective through close collaboration and discussions between patent attorneys in our Patent Division and other patent attorneys in our Design Division, all of whom have a wealth of practical experience.