Quick Review of Geneva Act of Hague Agreement Design Law Practice in Japan & Expected Changes
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Transcript of 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
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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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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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Quick Review of Geneva Act
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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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
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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
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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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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
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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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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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Design Law Practice In Japan & Expected Changes
JPO Announced Nothing Solid To Date
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Design Law Practice In Japan & Expected Changes
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
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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 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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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
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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 examinationProbably JPO will prepare its own database for international
applications
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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 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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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
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Design Law Practice In Japan & Expected Changes
Statistics Design Applications filed in JPO and USPTO
How many applications came to Japan from foreign countries
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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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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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