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First of all, what is priority?
The priority system is a system in which, after filing an application for, for example, a design in one country, when filing applications in other countries, if certain conditions are met, the novelty and prior application are judged based on the filing date of the first application in that country. Since designs lose their novelty through their own public disclosure, just like patents, the priority system is important.
The basis of the priority system is an international treaty called the Paris Convention, which stipulates the following regarding priority:
Subsequent applications filed in other countries of the Union shall not be prejudiced by reason of acts performed in the interim, such as the filing of other applications, the publication or exploitation of the invention, the sale of articles relating to the design, or the use of the mark, nor shall such acts give rise to any right or right of use of third parties. (Excerpt from Article 4B of the Paris Convention)
In other words, if a person who files an application in one country (country 1) also files an application for the same design in another country (country 2), the application will be deemed to have been filed in the second country on the filing date (priority date) of the first country for purposes of determining novelty and prior application.
This makes it possible to avoid the application in the second country being rejected for lack of novelty even if the application in the first country is published. Also, even if a third party files an application for the same or similar design in a second country after the application in the first country, the application claiming priority will be treated as the earlier application, so the application will not be rejected on the grounds of the third party's design application.
This is an important system in fields such as patents and designs, where disclosure causes the invention to lose its novelty and makes it generally impossible to obtain rights.
*The TRIPS Agreement stipulates that the Paris Convention must be observed, so even countries that are not party to the Paris Convention may be able to claim priority based on this agreement.
There are similar cases other than the TRIPS Agreement, and such priority rights are collectively called "priority rights under the Paris Convention." The conditions for claiming priority rights under the Paris Convention are the same as those for priority rights under the Paris Convention, so we will not explain them here.
Conditions under which priority can be claimed
So what should you do to effectively claim priority?
(1) The application must be made by a person who can claim priority.
Priority can be claimed by a person who is a national of a country that is a member of the Paris Convention and who has filed a regular application in that country, or his/her successor in title.
Major countries such as Japan, the United States, and China are signatories to the Paris Convention, so it is possible to file an application claiming priority in most countries.
(2) The application must be filed within the priority period.
Important point 1: The priority period for designs is six months
The period during which you can claim priority and file an application is six months from the filing date of the first country. In principle, this period is one year for patents, so be careful not to confuse the two.
(1) It must be based on a legitimate first-country application.
An application that can serve as the basis for a priority claim must be a regular application in the first country. An application that has been able to establish a filing date in the first country based on the laws and regulations of that country is considered to be a regular application.
Therefore, an application that has not been accepted by the Japan Patent Office due to incomplete documents or other reasons and for which the filing date has not been confirmed cannot be used as the basis for a priority claim.
In addition, the first application must be the earliest application. In other words, a chain of priority claims, such as an application in a second country and then an application in a third country claiming priority, is not permitted.
(4) Carrying out procedures to claim priority
Important point 2: Priority certificate or access code must be submitted
When filing the application in the second country, you must submit a document indicating the name of the first country and the priority date.
In addition, a document issued by the government of the first country stating the facts of the underlying application, known as a priority certificate, must be submitted within three months of filing.
If your application is based on a Japanese application, you can request a priority certificate from the Japanese Patent Office. However, it takes one week from the time of request to the time of issuance, even if you request online, and more than one month if you request by mail, so we recommend that you apply early.
However, the operation of priority certificates differs from country to country. For example, in the United States, if the information of the basic application is described in the application form at the time of filing, the priority certificate can be submitted during the examination period and can be submitted at any time up until the payment of the registration fee. In addition, in Europe, the priority certificate must be submitted within three months of filing, but in the case of electronic applications, it can be submitted by scanned data. In addition, there is no need to submit a translation unless requested by the office.
Digital Access Service (DAS)
In addition, it is possible to omit the submission of a priority certificate by recording information about the basic application, such as the application number, and a code called an access code in the application form when filing a foreign application.
This is a system called the Digital Access Service (DAS), which allows the exchange of basic application information between national patent offices based on the access code. However, there are some countries where the access code cannot be used, so in those cases it is necessary to obtain and submit a priority certificate as described above.
If your application in Japan is filed online, the access code will be issued and printed on the receipt (application number notification).
If the above-mentioned timing and procedural requirements are not met, the priority claim will be invalid.
(5) The design must be identical to the design in the underlying application.
Important point 3: Identity with the underlying application is required
Even if conditions (1) to (4) are met, priority will not be granted to a design other than the basic application.
The designs in the first and second applications must be the same.
It is important to be aware that the interpretation of "same" differs from country to country. In particular, when it comes to drawings, laws and regulations differ from country to country, and even if a method of expressing a design is recognized in Japan, it may not be recognized in a foreign country.
In other words, if the drawings are modified to reflect the operations of the second country, they may not be recognized as identical and the priority right may no longer be valid.
Therefore, when filing an application in Japan, it is necessary to consider measures such as filing in advance with drawings that take into account the application in foreign countries.
Below, we will briefly explain the drawing practices of major countries.
United States (United States of America)
The application must be based on line drawings. The unevenness and transparency of the appearance must be expressed by shading in accordance with the US examination standards.
Also, if the unevenness of the appearance can be expressed by a perspective view or shading, etc., submitting a cross-sectional view is usually refrained from. This is because cross-sectional views are also subject to rights interpretation, and adding a cross-sectional view may narrow the scope of rights. Reference views are also subject to rights interpretation, so careful consideration is required when submitting a reference view. In addition to line drawings, computer graphics and photographs are exceptionally permitted. However, whether or not computer graphics and photographs are permitted is at the discretion of the examiner, and there are conditions, such as photographs being permitted only when the creative work cannot be expressed by line drawings.
People's Republic of China
Since the partial design system was introduced in 2021, it is generally considered that the drawings will be the same as those in Japan. (In the case of three-dimensional objects, it is recommended to submit a perspective view.)
However, unlike in Japan, image designs and interior designs are not recognized as subject matter of protection. For example, in the case of an image design, when filing an application in Japan, you will need to consider whether or not to apply for it as part of an article such as a smartphone.
The systems of other countries are explained below.
·column:Foreign design system
Above, we have outlined the priority system for designs and the conditions under which a priority claim can be granted.
The following are particularly important conditions that you should be aware of:
Important point 1: The period for claiming priority for a design is six months
Important point 2: In principle, a priority certificate must be submitted
Important point 3: Identity with the underlying application is required
Finally
As an international patent office, we provide prompt and high-quality intellectual services, including filing applications in foreign countries. If you are considering filing an application that claims priority in a foreign country, please feel free to contact us.
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