JPO publishes the overseas guide "Secrets for Success in Obtaining Design Patents in Japan"

Since Japan joined the Hague Agreement in 2015, the number of foreigners applying for design patents in Japan has increased year by year. Recently, the Japan Patent Office (JPO) published the overseas guide "The Secret to Successfully Obtaining Design Patent Rights in Japan" to help overseas users successfully obtain design patent rights in Japan.

The content of the guide is divided into two parts: introduction and checklist. It includes an overview of Japan's design patent system and the latest revised regulations on Japan's design patent system. It also introduces the differences between the application process to the JPO and the application process through the Hague international registration channel, as well as priority claims. It uses actual or hypothetical cases of design registration to illustrate or serve as error examples in graphic form, and also provides some tips on applying for designs in Japan so that users can clearly understand the relevant regulations.

1. Introduction

The guide provides an in-depth analysis of the problems that foreign applicants often encounter when applying for design patents in recent years, and provides important guiding principles for successful applications. The manual also includes the latest revisions to Japan's design patent regulations and examination standards.

1. Overview of Japan’s design patent system

Design patent applications in Japan are subject to substantive examination, and applicants should have a thorough understanding of the entire application process, including recent revisions to the Design Patent Act.

2. Differences between direct application and Hague application

There are two options for applying for a design patent in Japan: you can file an application directly with the JPO or through the Hague International Registration System with Japan as a designated country. Before deciding which method to use, it is recommended to evaluate the cost-effectiveness of the two methods, especially in terms of translation costs, agent fees, and the complexity of the application process.

• Direct application: While maintaining high-quality substantive examination, it takes an average of about 6 months from application submission to the first examination opinion. After the design patent is successfully registered, it will be published in the JPO Official Gazette. If the design is rejected, it will not be made public.
• Hague Convention Application: After designating Japan under the Hague Convention, you can receive the first examination opinion within 12 months after the publication of the international registration in accordance with the provisions of the Hague Agreement. Regardless of whether the patent is authorized in Japan, it will be announced on the WIPO website before the examination in Japan.

2. Checklist

In April 2020, the JPO revised the protection objects of Japan's Design Patent Law, adding physical pictures and images, as well as the exterior shape and interior decoration design of buildings as protection objects, and extended the patent right of appearance patents to 25 years.

• Ensure that the shape is clear: In order to register a design patent in Japan, the purpose and function of the object, building, or picture related to the design patent, the object for which the design patent is to be registered, and the shape, pattern, and color of the object, building, or picture for which the design patent is to be registered must be specifically derived from the application and the drawings. Even with a six-sided drawing, the shape may not be clear.
• The related designs have been revised and expanded, and the application period for related design patents has been extended from "until the official announcement date of the main design patent (approximately 8 months)" to "10 years from the application date of the basic design patent ."
• In Japan, design patent applications must be filed for each design individually, but if there are multiple works on the image, they are sometimes recognized as one design.
• Based on the priority of the Paris Convention, the design patent application in Japan must be the same as the design patent application in the first country.
• The JPO has revised and relaxed the procedures for applying the non-loss of novelty:
  • To register a design patent, you must submit an application to the JPO within one year after voluntary disclosure.
  • When submitting a direct application to the JPO, you must submit a written document requesting the application of the exception to the loss of novelty of the design patent, or clearly indicate this statement on the application form. (If this procedure is not completed when applying, this provision cannot be applied even if a "written certificate" is submitted)
  • Written evidence that the requirements are met must be submitted within 30 days of filing the application with the JPO
• Remedies: There are various procedures required for applying for design patent registration in Japan, including claiming priority under the Paris Convention, applying for exceptions to loss of novelty, responding to a notice of reasons for refusal, etc. Even if the deadline for submitting relevant documents has passed, there are remedies.
• The formalities for priority restoration remedies are as follows:
  • Failure to file an application in Japan during the priority period must be unintentional
  • The application must be filed in Japan within 2 months after the priority period expires.
  • The restoration statement and supporting documents must be submitted within 2 months after the priority period expires.
  • A restoration fee of 24,500 yen must be paid
  • The amendment also expands the remedial measures, such as extending the response period for the notice of reasons for refusal, etc.
• Revisions to the exceptions to loss of novelty, relaxation and remedies for errors in formalities, and related restoration requirements:
  • If there is an error in the "documentary certification", you can resubmit it within 30 days from the date of application. Even if it has been more than 30 days, if it is an obvious clerical error, you can add a statement in the comment form or application form.
  • The "written document indicating the request for application of the exception to loss of novelty of design patents" submitted at the time of application to the JPO cannot be supplemented later.
  • If the "documentary proof" cannot be submitted due to reasons that cannot be attributed, it can be submitted within 2 months from the date when the reasons disappear or within 6 months after the deadline for submitting the "written proof".

Yezhima has released the full text of the guide on its official website, and users are welcome to download it.