Japan Amended Design Patent Law upon Acceding to the Hague Agreement
The Hague Agreement, originally signed by the members of the Paris Convention for the Protection of Industrial Design, establishes an international system for the deposit of industrial design. The Hague Agreement allows for registering an industrial design in multiple countries via one single application. The Hague Agreement was put into effect starting on May 13th 2015 in Japan, followed by amendments to Japan’s Design Patent Law on the same day.
The main points are summarized below:
1. The Hague Agreement governs the system of international registration of industrial designs. The Hague Agreement allows designs to be protected in multiple jurisdictions with just a single application.
2. Citizens of the member countries and those having residence or business establishments in the member countries are permitted to apply under the Hague Agreement for international registration of designs.
3. Design applicants may claim rights of priority in accordance with Paris Convention for the Protection of Industrial Property.
4. Unlike the Madrid Protocol, applicants applying under the Hague Agreement are not required to have their first application filed at the local office as the base application, and may apply directly with the International Bureau.
5. The date that the International Bureau of WIPO receives the application is considered to be the filing date.
6. The Hague applications can only be filed with the International Bureau established by WIPO. Applications filed and processed at the agencies of the member countries will not be admissible.
7. Applications that have satisfied the formality requirements will be granted with international registration and publication will be made six months after the international registration date; however, publication can be deferred upon request. After publication, the designs should be examined by the designated member country based on the national law. The International Bureau will then be notified in time whether the said design can be granted.
8. The protectable subject matter for designs must be industrial design products that can be manufactured. One international application of design registration can encompass 100 designs that are in the same category of the Locarno Classification.
9. An international design application may claim a 6-month international priority right, and may request for accelerate or defer publication. If a publication deferral is intended, the maximum time period for deferral is 12 months after the filing date pursuant to Amendment 1960, or 30 months in accordance with the Amendment 1999.
10. A Design patent will need to be renewed every 5 years.
Design Patent Law in Japan
11. Because the International Bureau does not conduct substantive examination, the date that the International Bureau receives the application of registration will be the date of international registration as long as the application satisfies formality. For application with incomplete documentation, the date of international registration will be the date when missing documents are completed.
12. The Hague Agreement is a protocol governing international registration procedure that does not conduct any substantive examination. Therefore, issues concerning substantive protection will need to be resolved in accordance with the law of the designated member country.
13. Since publication is compulsory through the international design protection under the Hague Agreement, design applications that need to be kept confidential are not recommended to be filed through the Hague Agreement international registration system.
14. Design patents that are infringed after the publication but before grant can also seek for damages compensation.
15. If an international design application encompasses multiple designs, each design will be deemed as one single application upon entering Japan national phase.
16. Major design and related designs can be deemed as one international design application.
17. The fee of the application for international registration needs to be paid in Swiss franc. If Japan is the designated country of protection, 582 Swiss franc needs to be paid to Japan Patent Office (JPO), which is the International Bureau in Japan.
18. If no office action or rejection is received within 12 months after the publication date of international registration, the said design will be granted with a design patent in Japan.
19. International design application will be publicly disclosed, and details concerning prosecution history will be accessible online once the said application is rejected. Applicants when devise a filing strategy may take this into consideration to prevent potential competitors from learning about the said designs.
20. It is more cost effective to acquire design protection in Japan via the Hague international application than directly filing with the JPO.
21. For any 3-dimensional design, the JPO requires diagrams of a front view, back view, top view, bottom view, left side view, and right side view. Every diagram needs to be drawn with identical proportion and adopts the methods of orthographic projection.
22. If the application for design patent only has one diagram, it is likely to be rejected for reason of “failing to specify the scope of protection,” and no revision can be made with additional diagrams. Exception can be granted to an application where the design can be sufficiently explained through one diagram by any person with common knowledge in the relevant skill of art.