Domestic design system

Regarding exception procedures for loss of novelty

Regarding exception procedures for loss of novelty

In order to obtain a design registration, the design must be novel and difficult to create.

Therefore, in principle, a design that has been published prior to the filing of a design application cannot be granted a design registration.
However, as an emergency measure, in cases where preparation of the application is not completed in time and the design is first disclosed at an exhibition, or sales are started on the Internet and the design is made public, it is possible to apply the exceptions to loss of novelty.

If the provisions for exceptions to lack of novelty are applied, the applied design will not be rejected on the grounds of lack of novelty or ease of creation, based on the facts of disclosure stated in the certificate submitted to the Japan Patent Office.

Warnings

■Designs published in public gazettes such as the Design Gazette, Patent Gazette and Foreign Gazette are not subject to the exceptions.
■Unlike priority rights, the filing date (reference date) is not retroactive, so if a third party discloses or applies for the design or a similar design before the application is filed, the design may not be registered.
■Since the contents of the grace period for loss of novelty differ from country to country, even if a design is registered in Japan under the grace period, it may not be registered overseas because the design has lost novelty. (e.g. India, China, Malaysia, Vietnam, etc.)

Requirements for application of exceptions to loss of novelty
In order to qualify for the exceptions to loss of novelty (Article 4, Paragraph 2 of the Design Act), all of the following requirements (1) to (3) must be met.
(*We will not go into the explanation of "unwilled disclosure" (Article 4, Paragraph 1 of the same law) here.)

(1) The design has come to fall under either ① or ② below as a result of the actions of a person who has the right to obtain a design registration (the creator of the design or his/her successor).

 

① A design that was publicly known in Japan or abroad prior to the filing of the design registration application.

② A design that was described in a publication distributed in Japan or abroad or that was made available to the public through an electric telecommunications line prior to the filing of an application for design registration.

 

(2) A person who has the right to obtain a design registration for the design in (1) above has filed an application for a design registration.

(3) A design registration application must be filed within one year from the date on which the design in (1) above was first made public.

* (Source) Japan Patent Office Design Examination Guidelines

Specific procedures
In order to apply for the exception to loss of novelty, you must complete the following procedures (a) to (c).
(a) An application for registration of the design must be filed within one year from the date of publication of the design.
(b) When filing an application for design registration, submit a document stating that you are seeking application of the exceptions to lack of novelty of the design. (This can be substituted by adding a column for [Special Notes] to the application form and clearly stating that you are seeking application of the said provisions.)
(c) To submit, within 30 days from the date of filing of the application for industrial design registration, a document certifying that the requirements for application of the exceptions to lack of novelty of industrial design are met.

(Source) Q&A on Exceptions to Lack of Novelty of Designs, December 2020, Japan Patent Office

The certificate includes:
1) The date on which the design became publicly known, 2) the location where it was published (URL if on the Internet), 3) the publisher, and 4) the details of the published design. Also, state the relationship between the published design, the applicant, and the publisher.

In addition, for design applications filed on or after January 2024, 1, if there are multiple identical or similar published designs that have become publicly known due to the actions of a person who has the right to obtain a design registration, the exceptions to loss of novelty will also apply to identical or similar designs published after that date, even if the “fact of publication” of each design is not proven, as long as the “document certifying” any one of the acts performed on the earliest date is stated in the “certifying document.”

Therefore, in the diagram below, if after publishing A, you publish A' which is similar to A, if you submit a certificate for A, certification for A' will not be required.

* (Reference) Japan Patent Office Design Examination Guidelines R5.3

*If you are filing a related design application, be sure to apply for the exceptions to loss of novelty.

* (Source) Japan Patent Office Design Examination Guidelines

advice
Even if you accidentally disclose your design before filing, you still have a chance to register it within one year. If you consult with us, our patent attorneys will prepare an appropriate certificate after conducting an interview regarding the fact of disclosure, the details of the succession of rights, and the relationship between the disclosed design and the design you wish to register. Also, if you wish to file a foreign application, please do not give up and consult us, as some countries have grace periods.

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