Japanese Design Law Practice - Is Japan ready to join Hague Agreement? – Shigeyuki Nagaoka 2013 JPAA-AIPLA Premeeting October 22-23, 2013 Washington D.C., USA 1

Quick Review of Geneva Act of Hague Agreement Design Law Practice in Japan & Expected Changes Practical Tips 2 PART 1 PART 2 2 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? 3 PART 1 3

 Quick Review of Geneva Act 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 used Locarno Classification includes thirty-two classes Class 32: Graphic Symbols and Logos, Surface Patterns, Ornamentation Renewal and transfer can be made at IB 4 PART 1 4

 Quick Review of Geneva Act Necessary Information in Application Form Information about applicants Drawings of industrial design(s) or photograph(s) Names of products Countries to be designated Optional Information Priority claim Request for deferring International Publication (Act 5(5)) 5 PART 1 5

 Quick Review of Geneva Act 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 6 PART 1 6

 Quick Review of Geneva Act 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 7 PART 1 7

 Quick Review of Geneva Act 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 immediately The filing date is the registration date (Act. 10(2)(a)) 8 PART 1 8

 Quick Review of Geneva Act 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 9 PART 1 9

 Quick Review of Geneva Act Term of Protection 15 (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 Publication International publication after registration Application is confidential until international publication (Act 10(4)) 10 PART 1 10

 Quick Review of Geneva Act Timing of International Publication International 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 months The least deferment is given if designated countries give different upper limits 11 PART 1 11

 Quick Review of Geneva Act 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? 12 PART 1 12

 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 13 PART 2 13

 Design Law Practice In Japan & Expected Changes JPO Announced Nothing Solid To Date 14 PART 2 14

 Design Law Practice In Japan & Expected Changes Current Design Law Practice in Japan  Only accepts a single industrial design in one application  Only accepts a single product in one application  Requires six drawings  Accepts photographs and specimen  Requires a description of the product if size and/or material is unique  Does not require claims  Does not use Locarno Classification  Requires representation of a Japanese patent attorney if applicant’s address is outside Japan 15 PART 2 15

 Design Law Practice In Japan & Expected Changes Current Design Law Practice in Japan  Application form must be written in Japanese language  Creator’s name and address must be indicated in an application form  Substantive examination  First-to-file system  Grace period  No fast track  Office Actions are issued to 20-30% of applications  No publication before registration  20 years of protection 16 PART 2 16

 Design Law Practice In Japan & Expected Changes Current Design Law Practice in Japan  Partial design application  Associated design application  Secret application  Set-product design application  Divisional application  Conversion between a design application and a patent application 17 PART 2 17

 Design Law Practice In Japan & Expected Changes 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 examination  Probably JPO will prepare its own database for international applications 18 PART 2 18

 Design Law Practice In Japan & Expected Changes 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 argument  Probably JPO will issue an Office Action in 12 months from the international publication  Probably JPO will make its own register by copying the registration information from the international register 19 PART 2 19

 Design Law Practice In Japan & Expected Changes 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 applications 20 PART 3 20

 Design Law Practice In Japan & Expected Changes Statistics  Design Applications filed in JPO and USPTO  How many applications came to Japan from foreign countries 21 PART JPO33,56930,87531,75630,80532,391 USPTO27,78225,80629,05930,46732, From US1,2121,0561,0841,3111, % From EU1, ,1351,1261, %

 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 22 PART 3 22

 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 23 PART 3 23

 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. 24 PART 2 24

Arigato Gozaimashita Nagaoka Shigeyuki LEXT, P.C. Tokyo, Japan 25