table of contents
Disclosure of designs and exceptions to loss of novelty, secret designs
Key Points
- In principle, designs are not made public before filing.
- If it is unavoidable to make the design public before filing, apply using the system that applies exceptions to the lack of novelty.
- If you wish to keep the contents of your design rights secret for a certain period of time after registration, use the secret design system.
1. When publishing a design before or after filing an application
- Is it okay to publish the design before filing? -
One of the requirements for design registration is novelty, and in principle, designs that have become publicly known prior to filing an application cannot be registered. Therefore, it is important not to disclose a design prior to filing an application.
However, even if a design is unavoidably disclosed before filing an application, if an application is filed within one year of the first disclosure under the exceptions to loss of novelty, the disclosure will be excluded from the material used to determine novelty.
In order to apply for the Exceptions to Lack of Novelty, a document stating that you wish to apply for the Exceptions to Lack of Novelty must be submitted to the Commissioner of the Japan Patent Office at the time of filing, and a document (certificate) certifying that you are able to apply for the Exceptions to Lack of Novelty within 30 days from the filing date.
For details on exception procedures for loss of novelty, please see below.
· "Regarding exception procedures for loss of novelty'
If you wish to apply for exceptions to lack of novelty, you must pay attention to the following points, and it will take time and effort to obtain a patent attorney's fee. We recommend that you file your application before publishing your design.
- Please note that if a design loses novelty due to publication in domestic or foreign patent, trademark, design, etc. gazettes, exceptions to loss of novelty cannot be applied. (Example: A design is published in a foreign design gazette before filing a design application in Japan.)
However, if a priority claim is made lawfully and the design is published in the Foreign Design Gazette after the priority date, there is no loss of novelty and so there is no problem.
- Unlike priority rights, the reference date for determining novelty does not apply retroactively. Since the provisions for exceptions to lack of novelty differ from country to country, even if the provisions for exceptions to lack of novelty apply in Japan, when filing a foreign application, the requirements for exceptions to lack of novelty must be met in the application country, and if the requirements are not met, the design may not be registered due to lack of novelty.
【reference】Publication of a design against the will of the person entitled to design registration
Even if your design has been published against your will, you can apply for the exceptions to lack of novelty by filing an application within one year of the publication of the design. In this case, you do not need to submit a document stating that you wish to apply for the exceptions to lack of novelty at the time of filing the application, and you do not need to submit a certificate.
When you find out about the disclosure, you can claim in your written report that the disclosure was against your will. Additionally, you can claim that the publication was against your will when you receive a notice of reasons for refusal.
【reference】Related design applications
When filing a related design application, the exceptions to lack of novelty do not apply to the following: (Article 10, Paragraph 2 and Paragraph 8 of the Design Act, Design Examination Standards)
- A design that is identical or similar to the basic design of the design for which a related design is to be registered, and that has become publicly known since the filing of the basic design
- A design that is identical or similar to a related design related to the basic design of the design for which a related design is to be registered, and that has become publicly known since the filing of the corresponding related design
- A design that is identical or similar to the basic design and related designs related to the basic design of the design for which a related design is to be registered, and to which the provisions of exceptions to loss of novelty apply in the basic design or related designs related to the basic design.
2. If the design is to be published after registration
-What if I want to keep the design secret without disclosing it until the new product is announced? -
Unlike patents and trademarks, a design gazette is not published until a design is registered, and a design gazette is issued after it is registered.
However, since designs are registered on average 8 to 9 months after filing, if you do not want to disclose the design in the Design Gazette after registration, you can use the secret design system to keep the design secret for up to three years without publishing it in the Design Gazette. For example, if a registration decision is made before a new product is announced, you can use the secret design system to keep the design secret without publishing it in the Design Gazette until the new product is announced.
A secret design can be requested at the time of filing the application, or after the decision to register, a secret design can be requested at the same time as the first year's registration fee is paid.
《Requirements for requesting a secret design》
The requirements for requesting a secret design are as follows.
- The applicant makes the request. In the case of a joint application, the request must be made by all the joint applicants.
- Request for a period of up to three years at the time of application or payment of the first year's registration fee
- Payment of fee (5,100 yen)
【reference】After filing a secret design request, it is possible to extend or shorten the period. You must submit a request for change to the secret design period to the Japan Patent Office about one month before the period expires. There is no fee charged by the Japan Patent Office for the request to change the period.
【reference】Public notice of secret design
For designs for which a secret design is requested, the "Design Bulletin" issued after registration will not include articles related to the design, design classification, creator, description of the design, drawings, photographs, models, etc. . Therefore, it is impossible for third parties to know what kind of design rights have been acquired.
【reference】Viewing secret designs
A confidential design may only be viewed in the following cases:
- When the consent of the design right holder is obtained
- When a party or participant in an examination, trial, retrial, or lawsuit for a design that is the same as or similar to the design makes a request.
- When there is a request from the court
- When an interested party presents a prescribed document to the Commissioner of the Patent Office and makes a request.
《Precautions when using the secret design system》
i) Subsequent application exclusion effect
During the secrecy period, the design is not made public, so unless it is implemented, the design does not fall under the publicly known design as provided for in Article 3 of the Design Act, and it is important to note that later applications cannot be excluded. For example, if the secret design of the earlier application is a partial design and the later application design is a whole design, the later application design that is identical/similar to the design published in the earlier application drawing will be rejected upon issuance of the gazette, but the later application filed during the secrecy period will not be rejected, so the design including the part may be registered. However, if the later application design is registered, it cannot be implemented if it uses the earlier application design under Article 26. (If the earlier application design is a whole design, the later application will be rejected when the gazette is issued under Article 3-2 of the Design Act.)
ii) Precautions when exercising rights
If a design right holder's design right is infringed, he/she has the right to request an injunction, claim compensation for damages, request measures to restore credibility, and request return of unjust profits from the infringer.
If the infringed design is a design that is under secrecy, state the details of the design (name and address of the design right holder, application date, application number, registration date, registration number, application, drawings attached to the application, etc.) A request for an injunction cannot be filed unless a warning is issued by presenting a written document certified by the Commissioner of the Patent Office.
Additionally, there is a presumption of negligence for acts that infringe on design rights, but there is an exception for secret designs. Therefore, when making a claim for damages, the right holder has the burden of proving intentional negligence. Since the content of a secret design is not immediately announced even after the right is created, it would be harsh to presume that the person who infringed the design right was at fault, and it is necessary to prevent third parties from suffering unexpected disadvantages. This is to do.
Care must be taken when exercising rights related to secret designs.
Finally
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