There are two approaches to acquire design or trademark rights in Japan: one is to directly file an application with the Japan Patent Office (JPO), and another is to file an international application* designating Japan with the International Bureau. Under the current law, in order for applicants of international applications designating Japan to have their designs or trademarks registered in Japan, they are required to take a special procedure in addition to the procedure in international applications designating other countries. There have been many cases where applicants who are not used to this special procedure fail to take the required procedure and thereby fail to acquire rights, which could have been acquired otherwise.

In order to reduce the occurrence of such cases, Japanese law (Design Act and Trademark Act) relating to international applications has been revised. This newsletter introduces the recent revision.

 

 

It is a system where applicants file a single application with the International Bureau of the WIPO to achieve comparable effects to filing individual applications in multiple designated countries. Filing an international application is completed in a single procedure, but whether to grant or refuse registration is determined by the Patent Office in each designated country.

In this newsletter, international design applications are those stipulated in Article 1(vii) of Geneva Act of the Hague Agreement and include Japan as a designated contracting state (hereinafter also referred to as “international design registration application(s) designating Japan”). Moreover, international trademark applications are those stipulated in Article 2(2) of the Madrid Agreement and include Japan as a territorial extension (hereinafter such international application designating Japan as a territorial extension will be also referred to as “international trademark registration application(s)”).

 

 

 

The date of enforcement of the revised Design Act relating to “Additional Opportunity to Submit” in this item: within six months from May 21, 2021.

 

For an international design registration application designating Japan to be eligible for Exception to Lack of Novelty, it is necessary to submit documents certifying, for example, that the design has been opened to the public as a result of an act of the person having the right to obtain a design registration (hereinafter “the person” described in this sentence is simply referred to as “applicant”) within a period prescribed by law. The current revision will provide an additional opportunity to submit such certifying documents.

 

 

 

A design publicly disclosed prior to a filing of a design registration application no longer possesses a Novelty, and thus cannot be registered in principle. There are, however, provisions in some countries under which a design lacking a Novelty as a result of an act of the applicant (such as displaying the design at an exhibition, issuing a publication disclosing the design, and presenting the design on a website) is treated as if the design had not lost its Novelty. A similar provision also exists in Japan. Nevertheless, no design is treated as if it had not lost its Novelty in Japan unless documents that certify the loss of Novelty as a result of an act of the applicant are submitted under the specified conditions.

 

Current Rule (Before Revision): In order to seek the application of Exception to Lack of Novelty in Japan, applicants of international design registration applications designating Japan must submit certifying documents for seeking the application of Exception to Lack of Novelty within 30 days from the date of international publication (in principle, the date of international publication is six months after the filing date of the international application) to the Commissioner of the JPO through a representative in Japan.

 

 

 

Problem: As shown in (i) and (ii) in FIG. 1 above, application documents of an international design registration application are submitted to the International Bureau of the WIPO at the time of filing the application ((i) in FIG. 1), whereas certifying documents for seeking the application of Exception to Lack of Novelty must be submitted to the JPO within 30 days from the date of international publication through a representative in Japan appointed by the applicant ((ii) in FIG. 1). Application documents and certifying documents are, thus, submitted at different timings and to different offices. There have been cases where applicants outside Japan missed the deadlines for submitting certifying documents because they had not known the above-described rule, or unintentionally missed the deadlines despite their awareness of the rule. As a result, Exception to Lack of Novelty was not applied to their applications, and the applications were thereby rejected based on the applicants’ own acts of disclosing.

 

After Revision: In addition to the way of submission prior to the revision ((ii) in FIG. 1 above), applicants outside Japan are permitted to submit certifying documents for seeking the application of Exception to Lack of Novelty to the International Bureau of the WIPO either online or by post simultaneously with submission of international applications ((i’) in FIG. 2 below). In other words, there will be an additional opportunity to submit certifying documents for seeking the application of Exception to Lack of Novelty.

(FIG. 2 below only shows that, after the enforcement of the revised Design Act, it will be possible to submit certifying documents simultaneously with an international application, and the certifying documents submitted in this way will be electronically sent to the JPO together with the application documents of the international application. However, there will be actually two different timings when certifying documents can be submitted after the enforcement of the revised Design Acts: one is simultaneously with filing of an international application ((i’) in FIG. 2), and another is within 30 days after international publication ((ii) in FIG. 1).)

 

 

Under the current rule, when certifying documents for seeking the application of Exception to Lack of Novelty are prepared in a non-Japanese language to submit to the JPO, a Japanese translation of the certifying documents and a cover letter must be submitted together. The JPO is now considering whether, after the revision, to require submission of a Japanese translation in the cases where certifying documents are submitted simultaneously with filing of an international application, and, even if the JPO requires submission of the Japanese translation, whether to permit submission of the Japanese translation at a later date.

 

Under the current rule, it is not just a few international design registration applications designating Japan in which the procedure to seek the application of Exception to Lack of Novelty was not appropriately taken and thereby the applications have been rejected based on lack of Novelty resulted from the act of disclosing by the applicants themselves.

This revision seems to be able to reduce the occurrence of such cases.

 

However, in order to submit certifying documents for seeking the application of Exception to Lack of Novelty simultaneously with filing of an international application, it is, off course, necessary to prepare certifying documents by the time of filing the international application. Applicants need to file applications as soon as possible under the first-to-file system, but it takes time to prepare the certifying documents. Even in the cases where applicants manage to submit certifying documents for seeking the application of Exception to Lack of Novelty at the time of filing international applications, if there are other facts of disclosing in public besides those described in the submitted certifying documents, the designs cannot be appropriately registered in Japan in principle unless the additional facts are described in certifying documents and submitted at an appropriate time. Accordingly, we take the view that the conventional way of submitting certifying documents, in other words, submitting the documents within 30 days from international publication will still have a high value even after the enforcement of the revised Design Act.

 

Moreover, in the case of submitting certifying documents for seeking the application of Exception to Lack of Novelty simultaneously with filing of international applications, it is advisable to submit certifying documents that are prepared in conformity to the examination practice in Japan both in formal and substantive aspects so that the subsequent examination process at the JPO would be smooth.

If you have any questions about the formal and substantive requirements of the certifying documents, please contact us. As mentioned above, there are two possible timings to submit certifying documents: the timing (i’) shown in FIG. 2 and the timing (ii) shown in FIG. 1. You can contact us for consultation regarding certifying documents either before or after filing an international application.

 

 

 

The date of enforcement of the revised Trademark Act relating to “change in the method of payment” in this item: within two years from May 21, 2021.

 

Current Rule (Before Revision): In the cases of international trademark registration applications designating Japan, applicants are required, in order to have the trademarks registered in Japan, to pay the fee in two separate payments at the filing of the international trademark registration applications and right after the issuance of decisions to grant (see FIG. 3 below).

 

 

Problem: There are now only three Patent Offices (the Japanese, Brazilian, and Cuban Patent Offices) that require payment of the fee at two different stages. Thus, there are about 700 cases a year that are deemed to be withdrawn due to failures to make the second payment by applicants outside Japan who are not used to the two-step payment.

 

After Revision: The method of payment for international trademark registration applications designating Japan will be changed to a payment in a lump sum at the time of filing international applications as in international trademark registration applications designating other countries (see FIG. 4 below).