Foreign design system

Important points to note when filing foreign design applications

Important points to note when filing foreign design applications

1. What is a design (subject of protection)?

When a design patent is obtained in Japan, most people assume that their design has been approved as excellent by the government, and that they will be able to obtain design patents in other countries as well.

However, no matter how wonderful and novel a design is, it may not be possible to obtain design rights in foreign countries. This is because the definition of "design," which is the subject of design rights, differs from country to country. For example, designs consisting of images only, which have been newly recognized as "designs" in Japan, are not recognized in China. Conversely, there are countries that recognize patterns themselves, characters, logos, etc., which are not recognized as "designs" in Japan, as "designs."

When filing a design application in a foreign country, you must thoroughly check before filing whether the design is recognized as a "design" in that country.

2. Application Period

When filing a design application in a foreign country for a design that has been applied for/registered in Japan, it is normal to claim priority under the Paris Convention based on the design application/registered in Japan. If priority is recognized, the requirements for registration such as novelty and ease of creation are judged based on the application date in Japan, which gives an advantage in the examination process.

However, the Paris Convention stipulates that the period during which priority can be claimed in the country of application is six months from the date of the basic application. When filing a foreign application, it is necessary to check whether this time requirement is met. *For patents, the period during which priority can be claimed is one year from the first application. Please note that the period for designs is shorter than that for patents.

3. Whether or not there is an examination

In Japan, when a design application is filed, an examiner examines whether the design meets the requirements for registration before it is registered. In other words, the examiner considers whether the applied design is novel (new), whether it could have been easily created, etc. For example, if the applied design is deemed to be similar to a design that existed before the application, the design will not be granted a design right.

However, in some countries, there are few substantive examinations, or only some of the registration requirements are examined, or some examinations are not conducted depending on the type of product. In the absence of substantive examination, a design can be registered if it satisfies the formal requirements, but if it is found after registration that it does not meet the registration requirements, the design right may be revoked in an invalidation trial, making the rights unstable.

In addition, the length of time until registration and the possibility of registering a design will vary depending on whether or not an examination is conducted, so you need to check the examination system of the country in which you plan to file.

4. Novelty

Since a design is the appearance of an item, it loses its novelty as soon as it is seen by the public. In addition, since designs are fashionable, exhibitions are often held to gauge sales, and if a design is made public at an exhibition, it will lose its novelty and it will be impossible to obtain a design right. As a relief measure for such cases, Japan has a provision called the Loss of Novelty Exception, and if certain requirements are met, the design will be examined as if it had not lost novelty even if it had lost novelty.

However, what happens if a design registered in Japan under the exception to loss of novelty is filed in a foreign country? Some countries, such as the United States and Europe, do not require any special procedures to apply for the exception to loss of novelty at the time of filing if it is within a certain period of time after loss of novelty, while other countries, such as China, have very strict judgments on the application of the exception to loss of novelty.

Therefore, even if a design has been applied for/registered in Japan under the application of the exceptions to loss of novelty, when filing an application in a foreign country, it is necessary to check whether the exceptions to loss of novelty in the country in which the application is intended to be filed can be applied.

Also, please note that if exceptions to loss of novelty apply in a foreign country, the provisions are different from those for claiming priority.

5. Related designs

When filing a foreign application for a design that has been applied for as a related design in Japan, it is necessary to check whether that country has a related design system. Taiwan and South Korea have related design systems, but Europe does not. China does not have a related design system, but it does have a similar design system. In the United States, designs are protected under patent law as design patents, and if they are included in a single inventive concept, they can be included in the same application as examples. This may seem a bit strange to us Japanese.

6. Filing of multiple design applications

In Japan, the revised Design Act of 3 has made it possible to file multiple design applications as of April 4, 1. A multiple design application is a system that allows two or more designs to be included in a single application. In Europe, if the Locarno classification is the same, up to 1 designs can be included in a single application when filing electronically. Korea also has a multiple design registration application system, where up to 2 designs can be included in a single application as long as the items belong to the same class. (In Japan, as long as the limit is 99 designs, there is no limit on the scope of designs, such as identity in the Locarno classification or similarity of designs.)

If the requirements for filing a multiple design application are met and there are no disadvantages compared to filing a single application for a single design, and if there are advantages such as savings in application costs, it may be worth considering.

7. Partial designs

The United States and Europe have partial design systems, but China does not. In addition, there are countries such as India where partial design registration is permitted in practice, but is limited to parts that are manufactured and sold independently, and other countries that require different requirements from Japan. When applying for a design filed as a partial design in Japan in a country that does not have a partial design system, it is necessary to consider what kind of application should be made to protect the distinctive parts.
In addition, when filing an application in a country that does not have a partial design system, there is a method of filing an application as a whole design by correcting the "other parts" shown in dashed lines in the drawing to solid lines, etc. Even in this case, it seems that a priority claim is allowed in most countries that do not have a partial design system, but just to be sure, it is advisable to check in advance whether a priority claim is allowed.

8. About the application form

You should also check the system of the country of application and consider whether the description of the article related to the design that you wrote in the application form when filing in Japan should be written as is in the application form for the foreign application, whether you should amend it, or whether it is better not to write anything at all. This is because you need to consider what description will give you sufficient protection or will make the scope of your rights as wide as possible.

In addition, there are countries, such as China, where the "main points of the creation" must be described, and there are countries, such as Europe, where the name of the "article to which the design relates" is not taken into consideration when determining the scope of design rights.

9. Regarding submitted drawings

There are various rules for the drawings to be submitted depending on the country. In Europe, there is a limit to the number of drawings to be submitted, but there is a relatively free way of expressing the drawings, and for example, photos of the characteristic parts of a store can be submitted. In Taiwan, if the design is three-dimensional, a perspective view must be submitted. In the United States, it is not permitted to show transparent parts with hatching or light ink, and submitting a cross-sectional view may narrow the scope of the rights. In India, reference drawings showing the state of use are not permitted.

As shown above, there are considerable differences between countries, so for applications that are planned to be filed abroad from the beginning, it is desirable to prepare drawings in accordance with the regulations of that country when filing in Japan. However, if this is not the case, consideration is required before filing abroad. This is because if the drawings are modified, the identity of the design may not be recognized and priority claim may not be possible. You must consider whether to submit drawings modified to comply with the regulations of that country when filing abroad, or to file abroad using the drawings as they are in the Japanese application and then modify the drawings if you receive reasons for rejection. In the United States, the judgment on the identity of designs is thought to be relatively lenient when determining whether to claim priority, but strict when making amendments, so it is considered better to modify the drawings when filing in the United States.

10. About photos and CG

If you file a design application in Japan using photographs or CG, you must also check whether the country in which you file your foreign application allows the submission of photographs or CG. You must also consider whether you can claim priority if you file a design application in Japan using photographs or CG and then create and submit drawings for the foreign application.

As mentioned above, even though the term "design" is used in general, the definition of design and the subject of protection differ from country to country, and the laws under which designs are protected also vary, such as the Design Act and the Patent Act in the United States. Design systems also differ from country to country, such as the partial design system and the related design system. When filing a foreign application under a protection system that differs from country to country, it is necessary to satisfy the design registration requirements of that country, maintain the identity of the design, and maintain the validity of the priority claim. For this reason, it is necessary to thoroughly check the legal systems of each country and carefully consider what kind of foreign design application to file.

At our firm, we support your foreign applications in the most optimal way to protect your designs, by cooperating with experienced patent attorneys and local agents in various countries. If you are having trouble with your foreign applications, please feel free to contact us.

The need for foreign design applications

1. Ensure implementation in countries where products are exported or sold

Territoriality (the principle that the scope of application of each country's laws is limited to its own territory)

Design rights are established on a country-by-country basis, and in principle, their effect extends only to the country in which they are registered. If a design right is obtained in Japan, its effect extends only within Japan. Therefore, in order to ensure the implementation of a design in foreign countries such as China and the United States, it is necessary to obtain design rights in each of those countries.

Because design rights are established independently in each country, even if you have obtained design rights in Japan, if someone else obtains a design right in a foreign country for a design that is identical or similar to your design, if you export your product with that design right from Japan to the foreign country, it will be an infringement of the design right of the other person in that country, and you may be at risk of being sued for injunctions and damages.

Independence of national designs

Since design rights are examined* and registered in accordance with the domestic laws of each country, even if a design applied for in Japan is rejected or expires, a design applied for and registered in a foreign country will not be invalid or expire. Conversely, just because a design right is registered in Japan does not necessarily mean that it will also be registered in a foreign country.

*There are some countries in Europe where no screening is required.

2. Eliminate counterfeit products in each country where the products are exported or sold

Even if you discover that counterfeit products are being manufactured and sold in a foreign country, if you have not obtained design rights in that country, you cannot issue an injunction based on design rights. In order to prevent such problems, it is necessary to obtain design rights in countries to which you plan to export your products and in countries where counterfeit products are on the market.

Main route

1. Direct application

You can file applications directly in each country in which you wish to obtain a design right.

In the case of direct applications, application documents must be prepared in the language and format of each country to which the application is filed, and post-application management (procedures for change of address, renewal procedures, etc.) must also be done separately for each country, which has the disadvantage of being time-consuming.

In addition, when filing design applications in multiple countries, if you file in a country or region (such as the EU) where the application is published immediately after filing, the novelty will be lost there, so it is necessary to plan the application based on the assumption that you will claim priority.

2. International Design Applications under the Hague Agreement

The Hague Agreement is a system for international applications and registrations of designs that centralizes the application procedures that occur in each country, enabling you to obtain the same results as if you had applied in each designated country by filing a single application with the International Bureau.

≪ Merit ≫

Applicants can file in a single language of their choice from English, French, or Spanish, reducing the burden of translation. As with international trademark applications under the Madrid Protocol (hereinafter referred to as "Madrid Protocol applications"), there is no need to file through a local agent, reducing costs*1. In countries that do not require examination, registration is granted within 6 or 12 months of international publication, and in countries that require substantive examination, the examination result (registration or refusal) is issued at the latest within 12 months. In addition, registrations can be renewed all at once, making renewal management easier.

*1 However, if you wish to respond to a refusal notice, you will need to designate a local representative.

The procedure has also been simplified in that there is no need to go through national phase procedures, as with international patent applications (PCT), and there is no need to base the application on a Japanese application, as with Madrid Protocol trademark applications.

Disadvantages

Applications cannot be filed in Japanese. In principle, the design will be published in the International Gazette six months after the date of international registration (extendable in some countries, up to 6 months in Japan*30), regardless of whether it is registered or not. At this time, not only the contents of the rejected application but also the reasons for refusal and the contents of similar prior designs that were cited are published, which is a major disadvantage in terms of design application strategy (on the other hand, in principle, only registered designs are published in Japanese applications). Unlike Japanese applications, there is no secret design system (designs are not published for up to three years after registration).

*2 If the designated countries include a country that does not grant an extension of the publication period, the extension will not be granted unless the designation of that country is withdrawn.

More information about Hague design applications here.

3. Design applications under the European Community design system

Filing an application under the European Community Design System allows you to obtain protection in all European Community member states with a single application.

Because the rights are centralized, there are some disadvantages, such as the fact that if the registration is revoked it will lose its effect throughout the European Community, and that centralized rights cannot be transferred on a national basis. However, there are also advantages, such as a significant cost advantage over filing directly in each country, and the ease of renewal management, etc.

For more information about the European Community Design System here.

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