quick review of geneva act of hague agreement design law practice in japan & expected changes

Japanese Design Law Practice - Is Japan ready to join Hague Agreement? –

Shigeyuki Nagaoka

2013 JPAA-AIPLA PremeetingOctober 22-23, 2013

Washington D.C., USA 1

Quick Review of Geneva Act of Hague Agreement

Design Law Practice in Japan & Expected Changes

Practical Tips2

PART 1

PART 2

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PART 3

Quick Review of Geneva Act

Signed in 1999

Became effective in 2003

Geneva Act is encouraging “Substantive Examination Countries” to join

US will become a party to the Geneva Act very soon

Korea is already a party to the Geneva Act

China started the study

Is Japan joining?

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PART 1

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Can include 100 industrial designs in a single application (Act. 5(4)) Can include more than one product if they belong to a single

international class

Locarno Classification is usedLocarno Classification includes thirty-two classesClass 32: Graphic Symbols and Logos, Surface Patterns,

Ornamentation

Renewal and transfer can be made at IB

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PART 1

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Necessary Information in Application Form Information about applicantsDrawings of industrial design(s) or photograph(s)Names of productsCountries to be designated

Optional Information Priority claimRequest for deferring International Publication (Act 5(5))

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Required if a designated country requires

Names and addresses of creators

Description of the drawings or photographs

Description of characterizing portions of the industrial design

Claims

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PART 1

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Specimen may be filed instead of drawings Drawings must be furnished three months before international

publication

Designated country cannot reject an international application for formality reasons (R-9)However, the designated country can reject the international

application when the drawings are insufficient

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Applicant does not have to file a design application in his own country before filing an international application

Can file an international application in IB Can file it without patent attorneys

Optional use of an intervening Office between an applicant and IB “Office Presenting the Request”

IB accords a filing date if all requirements are met, and makes registration immediatelyThe filing date is the registration date (Act. 10(2)(a))

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If substantive examination is carried out in the designated country

Office sends an Office Action to an applicant when Office finds substantive deficiencies

Office cannot issue an Office Action for formality reasons

Office must issue an Office Action in six or twelve months from the international publication (R-19(1))

Applicant can submit an amendment and argument to the Office

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PART 1

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Term of Protection15 (5+5+5) years from the international filing date (Act. 17)Can be longer if the designated country gives a longer term (e.g.,

25 years of protection in EU)

International PublicationInternational publication after registrationApplication is confidential until international publication (Act

10(4))10

PART 1

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Timing of International PublicationInternational publication takes place six months after international registration (Act 11)Can ask an early publication (R-17(1))Can defer the international publication up to 30 months from the filing date or priority date (R-16(1))Designated countries decide an upper limit on the deferment Singapore: zero Denmark: six months Estonia: twelve monthsThe least deferment is given if designated countries give different upper limits

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Is “unity” an formality issue or not?

Unity is a formality issue

However, designated country can issue an Office Action if the designated country declares so (Act 13(1))

Art. 13 stipulates “Special Requirements Concerning Unity of Design”

Does an applicant have to check which countries have declared the special requirements before filing an international application?

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PART 1

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Design Law Practice In Japan & Expected Changes

JPO set up a special committee for Geneva Act

No backlog issue in Japan

JPO examination can proceed fast

Positive voices are heard

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PART 2

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JPO Announced Nothing Solid To Date

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PART 2

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Current Design Law Practice in Japan

Only accepts a single industrial design in one applicationOnly accepts a single product in one applicationRequires six drawingsAccepts photographs and specimenRequires a description of the product if size and/or material is

uniqueDoes not require claims Does not use Locarno ClassificationRequires representation of a Japanese patent attorney if applicant’s

address is outside Japan15

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Application form must be written in Japanese language Creator’s name and address must be indicated in an application formSubstantive examination First-to-file systemGrace periodNo fast track Office Actions are issued to 20-30% of applicationsNo publication before registration 20 years of protection 16

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Partial design application

Associated design application

Secret application

Set-product design application

Divisional application

Conversion between a design application and a patent application

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Expected Changes

Probably JPO will revise the Design Law to accept a design application that includes more than one industrial design

Probably JPO will become an “Office Presenting the Request”

Probably JPO will allow deferral of the international publication

Probably JPO will provide a fast track examinationProbably JPO will prepare its own database for international

applications

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Expected Changes

Probably JPO will allow “Self Designation”Probably Japan will ratify Locarno Agreement Applicant may file an English-language amendment, but JPO will

probably require a Japanese-language argumentProbably JPO will issue an Office Action in 12 months from the

international publicationProbably JPO will make its own register by copying the registration

information from the international register

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PART 2

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Expected Changes

Probably JPO will apply a grace period practice to international applications

Probably JPO will apply the “associated design” practice to international applications

Probably JPO will apply the “partial design” practice to international applications

Probably JPO will give 20-year protection for international applications20

PART 3

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Statistics Design Applications filed in JPO and USPTO

How many applications came to Japan from foreign countries

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PART 3

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2008 2009 2010 2011 2012

JPO 33,569 30,875 31,756 30,805 32,391

USPTO 27,782 25,806 29,059 30,467 32,799

2008 2009 2010 2011 2012

From US 1,212 1,056 1,084 1,311 1,323 29.7%

From EU 1,412 888 1,135 1,126 1,269 28.5%

Practical Tips

International registration means nothing with regard to Japan

Publication of design takes place even before a protection is given

Cannot control the timing of international publication even if a request for deferral is made

Office Action is open to the public

JPO will not reject drawings for formality reasons

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Practical Tips

Priority document must be filed with JPO in a certain period from the international publication

Applicant will become a proprietor in Japan after the copying of the international register into the JPO register is finished

Cannot register a license agreement in the international register

Cannot register a security right in the international register

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Practical Tips

Computer-generated icons and interfaces If an applicant wants protections for the same icon for three

products (e.g., mobile phone, tablet computer and desk-top computer) under the current Japanese design law, three separate applications must be filed. Geneva Act will relax this practice.

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PART 2

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Arigato Gozaimashita

Nagaoka ShigeyukiLEXT, P.C.

Tokyo, [email protected] 2525

quick review of geneva act of hague agreement design law practice in japan & expected changes

Documents

international publication

quick review of geneva

international registration

international publication

international filing

international applicationcan

geneva actchina

single application act