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First-to-file design system
The design system is a system for protecting the creation of new designs and securing their exclusive rights for a certain period of time. This article provides a detailed explanation of the law regarding the first-to-file system for designs and its application.
Design system and first-to-file system
The design system grants exclusive rights for a certain period of time to the creation of new designs, and the Design Act should not allow the creation of two or more design rights for one creation. Therefore, Article 1 of the Design Act stipulates that if two or more design registration applications are filed for the same or similar designs, only the earliest applicant can obtain a design registration (first-to-file system).
Under this Article, if two or more applications for design registration are filed on different dates for the same or similar design, only the earliest applicant may obtain a design registration for that design (Article 1, paragraph 2). If two or more applications for design registration are filed on the same date for the same or similar design, only one applicant determined by agreement between the applicants may obtain a design registration (Article 2, paragraph XNUMX, first sentence). If no agreement is reached or can not be held, none of the applicants may obtain a design registration for that design (Article XNUMX, paragraph XNUMX, second sentence).
If two or more applications for design registration for the same or similar designs are filed on the same day, the Commissioner of the Japan Patent Office will order the applicants to enter into negotiations within a specified period and to notify the applicants of the results (Article 4, paragraph 5). If the applicants do not notify the Commissioner of the results of the negotiations, the Commissioner of the Japan Patent Office may deem the negotiations to have been unsuccessful (Article XNUMX, paragraph XNUMX).
Judgment on the requirement of first filing
The judgment on the first application requirement is important when the examiner applies the provisions on first application set out in Article 9 of the Design Act. The basic principles for the judgment are as follows:
The examiner will apply the first-to-file provisions set forth in Article 9 of the Design Act when the design registration application (hereinafter referred to as the "application") being examined and another application satisfy all of the following conditions.
1. The other application satisfies both of the following (i) and (ii):
(i) The other application must be an earlier application or a contemporaneous application.
(ii) It is an application for a design registration in respect of which another application is treated as a prior application.
2. The design in this application and the design in the other application are identical or similar.
Types of design applications that are treated as prior applications
A design registration application that falls under any of the following conditions will be treated as a prior design registration application for the purposes of applying Article 9, paragraph 1 of the Design Act.
| 1. | A design application in which the establishment has been registered. |
| 2. | A design registration application for which an identical or similar design filed on the same day has been refused or rejected if no agreement has been reached under Article 9, paragraph 2 of the Design Act or if no agreement can be held. |
Types of design applications that are not treated as prior or contemporaneous applications
Any design registration application that falls under any of the following items 1 to 4 will be deemed to have never existed for the purposes of applying Article 9, paragraphs 1 and 2 of the Design Act.
- Abandoned design applications
- Withdrawn design applications
- Rejected design applications
- A design application for which a decision to refuse has been made or a trial decision has been finalized
However, this does not apply to design registration applications falling under 2 (above) of [Types of design registration applications treated as prior applications].
Handling multiple design applications filed on different dates
"Handling of identical designs"
If multiple applications for the same design are filed on different dates, only the first applicant will be granted the design registration, and subsequent applicants will be refused under Article 9, paragraph 1 of the Design Act.
"Handling of Similar Designs"
In the case of an application by another person: Only the first applicant can obtain a design registration. Subsequent applicants will be refused under Section 9(1) of the Designs Act.
In the case of applications by the same applicant: The first application may be registered, and the later application may be registered as a related design, so please consider using the related design system. However, if the later application does not meet the requirements for a related design, it will be rejected under Article 9, paragraph 1 of the Design Act.
Handling multiple design applications filed on the same day
"Handling of identical designs"
If two or more applications for design registration are filed on the same date for the same design, the application falls under the provisions of the first sentence of Article 9, Paragraph 2 of the Design Act and is subject to a consultation order. As a result of the consultation, only one of the applicants will be able to obtain a design registration.
If the results of the consultation are not notified within the specified period, all design registration applications related to the consultation will be rejected pursuant to the second sentence of Article 9, Paragraph 2 of the Design Act.
"Handling of Similar Designs"
In the case of a design application filed by another person:
If two or more applications for similar designs are filed on the same date by different persons, this falls under the provisions of the first sentence of Article 9, Paragraph 2 of the Design Act and is subject to a consultation order. As a result of the consultation, only one of the applicants will be able to obtain a design registration.
If the results of the consultation are not notified within the specified period, all design registration applications related to the consultation will be rejected pursuant to the second sentence of Article 9, Paragraph 2 of the Design Act.
In the case of design applications filed by the same applicant:
If two or more similar designs are applied for by the same applicant on the same date, this falls under the provisions of the first sentence of Article 9, Paragraph 2 of the Design Act and is subject to a consultation order. In principle, designs cannot be registered by any applicant other than the one determined by the consultation, but if the applicant is the same and a consultation order is received, the designs can be registered as related designs if they meet the requirements for related designs.
If the results of the consultation are not notified within the specified period, all design registration applications related to the consultation will be rejected pursuant to the second sentence of Article 9, Paragraph 2 of the Design Act.
[Reference] Even if a design is a whole and a partial design, they may be judged to be similar designs. (2019 Design Examination Guidelines Partial Revision)
Summary
This article explains the law regarding the first-to-file system for designs and its application. The first-to-file system under Article 9 of the Design Act applies when there are two or more applications for design registration for the same or similar designs, and only the earliest applicant can obtain a design registration.
Examiners apply the first-filed rule when the design application and other applications under examination meet certain conditions. We also introduced the types of design applications that will be treated as first-filed applications and the types of design applications that will not be treated as first-filed or contemporaneous applications.
In addition to the requirements for prior application introduced here, the requirements for design registration include novelty, ease of creation, and industrial applicability.
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