Appeal No. 2018-001387
Article: Portable light Article: Light
The subject design was judged to be substantially identical to the basic design, and thus the priority should be accepted and the basic design should not be cited against the subject design.
At the examination stage, the Examiner denied the priority based on the reason that the subject design is not substantially the same as the basic design (which means the design in the basic application for claiming priority) due to the discrepancies of the drawings. On the other hand, the Appeal Examiners admitted the sameness and priority. The thin lines in the subject design specifies the shape of the three-dimensional surface while the lines (wire frames) other than lines showing the shapes in the basic design indicates the manner of change in face. There is only a difference in the way of showing the designs, and hence the designs should be substantially identical to each other.
Regarding the articles, the article “Light” includes “Portable light”, and this difference is caused by the difference in the law of each country. Therefore, the articles should be identical.
The drawings of the basic design represent wire frames, which are caused by converting computer graphics drawings to the line drawings. How wire frames are treated is not defined in the Japanese design law and examination guidelines.
Based on the subject decision, the priority should be accepted regardless of the differences in the way of showing the designs. However, when applying for a design in Japan, I recommend filing exactly the same drawings as the drawings in the basic application in order to safely claim the priority and to avoid unnecessary Office Actions. I would say that the scope of protection by filling drawings with wire frames would not be different from that by filling the drawings without wire frames in light of the present decision. So, it is not necessary to take a risk.
otaku otamal Ⓡ otamal r decision design regi taichi okamura registration design patent