What is accelerated examination of designs?

What is accelerated examination of designs?

What is the accelerated examination system for designs?

The request for accelerated examination is a system designed to shorten the waiting time from filing an application to receiving notification of the examination results.

By filing an accelerated examination request at the same time as or after filing a design application, you can receive the examination results three to five months earlier.

Although there are many benefits to this system, certain conditions must be met in order to receive the accelerated examination. We will explain each condition in order below.

Advantages of Accelerated Examination

Shortening of review period

Normally, it takes about 6 to 8 months after filing a design application for the examination result (notice of reasons for refusal or decision to grant) to be received. If you request an accelerated examination, the examination result will often be received within 3 months of requesting the accelerated examination.

The JPO's targets for the fiscal year published in 2 also state that "for cases eligible for accelerated examination, the average period from the request for accelerated examination to the notification of first examination will be within three months."

Accelerated rights acquisition for products with short life cycles

Early patent protection is important for seasonal products such as umbrellas that you want to start selling during the rainy season, and for products such as clothing whose designs change frequently. By obtaining design rights before the design goes out of fashion, you can have a monopoly on selling products related to that design when it becomes popular.

The accelerated examination system can be extremely useful for items that would be meaningless if the deadline was missed.

Early detection of legal risks

It is also useful when you want the review results early to find out whether there are any legal risks before starting manufacturing or sales of a new product.

Even if you receive a notice of refusal due to the existence of a prior design, you can start considering filing a separate application or a separate design because you know the prior design that is the reason for refusal. This also serves as a risk hedge to prevent you from selling products using designs that infringe on the rights of others.

Early Exercise

Prior to registration of the design, rights cannot be enforced against anyone who is using the design without permission.

In the case of patents or trademarks, even before the patent or trademark is registered, if certain conditions are met, such as publication of the application and a warning, it may be possible to claim monetary compensation from those who use or practice the invention without permission.

However, under the design system, the contents of a design are only made public after registration. Since an unauthorized implementer can only recognize that the design he or she is implementing is related to another person's design application after the design registration, he or she cannot make a monetary claim before the design registration.

Therefore, when you become aware of the existence of an unauthorized user, it is important to obtain rights early, especially for designs, because early rights acquisition enables you to exercise your rights early and reduces damages accordingly.

License Agreement Basics

Under the Design Act, it is possible to reserve a license (provisional non-exclusive license) even before registration. However, if the design is not registered, this provisional non-exclusive license will lapse.

If the subject of the license disappears, the license will be lost, so it is common to enter into a license agreement after the right has been established. For this reason, accelerated examination is useful even if you are in a hurry to enter into a license agreement.

Judgment on whether or not to file a foreign application

If you claim priority when filing a foreign application based on a Japanese design application, the priority period is six months from the date of the Japanese application. By utilizing the accelerated examination system, you can obtain the examination result six months before the priority claim deadline.

In other words, you can choose the country in which to file your application after knowing the results of the examination in Japan. Even if your Japanese design application is rejected, you can consider whether or not to file a foreign application depending on the examination results and the reasons for refusal, which can reduce the wasteful costs of filing a foreign application.

cost

There is no fee for filing an accelerated examination request with the Japan Patent Office. If you request an agent to file an accelerated examination request, you will be charged the agent's fees.

Disadvantages of accelerated examination (points to note)

Possibility of obstructing improved designs

After registration, the design will be published in the Design Gazette and made public throughout the world. If the design is published after the accelerated examination, it will become a prior design to the improved design that is subsequently filed.

In other words, the novelty and duplicability of the improved design will be denied on the grounds that the design was registered through accelerated examination, and you will receive a notice of refusal.

To avoid this, when filing an improvement design application, you will need to consider whether to utilize the related design system.

Beware of application formats that are not covered

Design applications filed under the multiple design filing system, which became available in 2019, and in which an application number is not assigned to each design, are not eligible for accelerated examination.

After you receive an application number notice with an application number for each design, you will be able to file a request for accelerated examination for each design.

A multiple design application is an application in which multiple designs are described in a single application form, and before receiving the application number notification, the application is assigned a procedural number of Design XXX-1XXX.

In addition, designs related to buildings, image designs, and interior designs, which have also become eligible for protection since 2019, are also not eligible for accelerated examination because the Japan Patent Office requires time-consuming and careful judgment when examining them.

Design applications eligible for accelerated examination

Design applications that fall under either (1) or (2) below are eligible for accelerated examination.

(1) Applications related to the implementation of which urgent consideration is required for granting of rights

• The applicant or its licensee,
• The design has already been implemented or is in the process of being implemented to a considerable extent;
• The invention falls under any of the following (a) to (c) and requires urgent patent protection.

(A) It is clear that a third party is working on the design or a design similar to the design without authorization, or is making considerable preparations to work the design

(i) If a third party has given a warning about the implementation or preparatory act of the design.

(c) When a license is sought from a third party for the design of the application.

In other words, it is aimed at people who, in their relationships with others, need to know the results of the screening quickly.

"Working a design" here means the acts of manufacturing, using, transferring, leasing or importing an article related to a design within Japan, or offering to transfer or lease such an article (including displaying it for the purpose of transfer or lease) (Article 2, Paragraph 3 of the Design Act).

In addition, "preparation for implementation has progressed to a considerable extent" means that preparatory work such as the manufacture of articles related to the design has begun based on a specific plan.

(2) Foreign-related applications

• The applicant has filed the design in a country or region other than Japan.

International design applications filed under the Hague Convention that designate Japan and countries other than Japan also meet this condition.

Documents required for application

Explanation of circumstances concerning accelerated examination

(1) When applying for accelerated examination because the application is an urgent implementation-related application for which the patent is to be granted

i) Explanation of implementation status
Identification of the act of implementation (preparatory act for implementation): State whether the act of implementation by the applicant or licensee corresponds to the manufacture, use, assignment, lease or import, or offer for assignment or lease (including display for the purpose of assignment or lease) of an article relating to the design.
- Start time: Indicate when the implementation action (preparatory action for implementation) started.
- The documentation: for example, a catalogue in which the design is published.
ii) A description of the emergency situation
We will explain in detail which situation corresponds to (a) to (c) above.
iii) Prior Design Search
A prior design search is conducted on Japanese registered design publications and publicly known designs to determine whether there are any similar designs within the design classification to which the item to which the design of the application belongs.
Submit the publication or publicly known materials of the prior design found in the search as evidence (submission of the publication is not necessary if the registration number is stated).
If no prior design is found during the search, design materials showing the general design level that forms the background of the design of the application should be attached.

(2) When seeking accelerated examination due to a foreign-related application

i) Indication of applications filed with patent offices other than Japan
- Name of foreign patent office: Enter the name of the foreign patent office that filed the same design as the design filed in Japan (e.g., the United States Patent and Trademark Office).
- Application date: Enter the application date to the foreign patent office.
・Application number: Enter the application number of the design application filed with the foreign patent office. If the official application number is unknown at the time of requesting accelerated examination, it can be omitted, but as soon as the application number is known, a "Explanation of Circumstances Concerning Accelerated Examination" must be submitted.
- Display of evidence: Enter the names of documents such as gazettes and application receipts issued by foreign patent offices and submit them as evidence.
ii) Prior Design Search
Same as (1) iii) above.

In addition, you will need to include the name of the applicant, the name of the agent, a description of the design(s) of your pending design application (your other design application(s) filed on the same day as the filing date of the current application and falling within the design classification to which the article related to the design of that application belongs), etc.

Supplemental Statement of Circumstances Concerning Accelerated Examination

If you wish to supplement the "Explanation of Circumstances Concerning Accelerated Examination" that you have submitted, you may do so by submitting a "Supplementary Explanation of Circumstances Concerning Accelerated Examination."

power of attorney

If you request an agent, and you will be using the agent from the time of filing the request for accelerated examination, you will need a power of attorney for the agent.
If the application is also filed through an agent, and the agent is also making the request for accelerated examination, a power of attorney is not required.

Requesting an expedited examination of an international design application

An international application that is deemed to be a design application filed with the Japan Patent Office (international design application), in other words, an international design application filed under the Hague Convention that designates Japan, may also be subject to accelerated examination under conditions similar to those for domestic applications.

The main things to pay attention to are:

• A request for accelerated examination may only be made after international publication.
• If you wish to request an accelerated examination through an agent, you will need a power of attorney.
• The examination results of international design registration applications are notified to applicants via the International Bureau of WIPO, so notification of the examination results is slower than for regular domestic applications.
• Applications for accelerated examination cannot be made online, but must be submitted in person or by mail. In such cases, it may take longer than usual for the JPO to select eligible cases, and examination results may take longer than three months, whereas for regular domestic applications, the results would be available within three months.
• When applying for accelerated examination other than when immediate publication is selected, care must be taken with the timing.

Reference sites for more details

Please refer to the JPO website for further information.

• For those who want to know the outline of the system

Overview of the accelerated design examination and trial system
Accelerated Examination of International Design Applications

• Those who would like to know more about the contents of supplementary explanations for accelerated examination, etc.

Guidelines for Accelerated Examination and Accelerated Proceedings of Design Applications

Incidentally,Examination Scheduleis published on the website of the Japan Patent Office.
Please use this as a reference when applying for accelerated examination.

For those in need

I would like to take advantage of the accelerated examination system, but I'm not sure if I will be eligible.
I would like to receive an accelerated examination, but I would like some advice on how to qualify for it.
I don't have time to conduct a prior design search.
The information written on the document is difficult to understand.

We receive various consultations such as the above. In such cases, we provide appropriate advice and take the necessary procedures.

If you have any problems with your request for expedited examination, please feel free to contact us.