Major revision of the Design Law

Utilizing the related design system

Utilizing the related design system

The related design system has been significantly revised due to the 2019 Design Act amendment. The main points of the amendment are as follows:

① The period during which related designs can be filed has been significantly extended (within 1 years from the filing date of the basic design*10).

② Even if a design is identical or similar to the basic design or a related design related to the basic design, this will not be the basis for judging whether the design is novel or not.

3) Designs that are similar to related designs can only be registered.

*1 Matters that apply only to the basic design are described as "basic design", and matters that apply to other principal designs are described as "principal designs".

As mentioned above, the related design system has become one in which exceptions to loss of novelty can be applied for a long period of time, so it has become a very convenient system for companies that implement agile development methods (methods of repeatedly creating prototypes and developing products while observing market reactions), which have been adopted by many companies in recent years, and it has become possible to build design rights comprehensively over a wide range. Below, we will explain the amendments to the related design system and suggest strategic ways to use it.

 

1. Amendments to the related designs system

① The filing period has been significantly extended (within 10 years from the filing date of the basic design application).

Under the related design system before the amendment, it was necessary to file a related design application by the time the design registration bulletin for the main design was issued (approximately eight months from the application date). However, with the amendment, related designs filed within 8 years from the application date of the basic design (or the priority date, if the effect of the priority claim is recognized) will be allowed to be registered.

(From the Japan Patent Office's "Design Examination Guidelines and Examination Operations - In Response to the Revision of the Design Law in 2019")

As shown in the figure above, even if the basic design has expired, related design B can be registered if the design right of the principal design (related design A) is maintained.

On the other hand, if the design right of the principal design of related design C (related design B) is not maintained at the time of registration, related design C cannot be registered. Please note that.

Even if the application date of the basic design is before the enforcement of the revised law, it is possible to apply for a related design within 10 years from the application date of the basic design. Therefore, even designs that were abandoned before the revision because they could not be filed in time for the publication of the gazette will be allowed to be registered. (The design must meet the registration requirements, such as novelty and non-creatability.)

 

② Even if a design is identical or similar to one’s basic design or a related design related to the basic design, this is not a basis for determining novelty or ease of creation.

After the amendment, even if a design identical or similar to the basic design or related design is implemented by issuing a design bulletin for the basic design or related design related to the basic design, or by manufacturing and selling one's own products, the implementation will not prevent the registration of the related design. *2

*2 If a related design of a basic design is extinguished, a similar publicly known design will serve as the basis for determining the novelty and creative difficulty of the subsequent related design.

(From the Japan Patent Office's "Design Examination Guidelines and Examination Operations - In Response to the Revision of the Design Law in 2019")

Therefore, there will be no need to delay the implementation of the main design in order to file a related design application, and it will be possible to file related design applications depending on the sales of the design released to the market and design trends.

On the other hand, only one's own designs are excluded from the basis for judging novelty, so if a related design is similar to a design being implemented by another person, it cannot be registered.

 

③ Designs similar only to related designs

Before the amendment, designs that were similar only to related designs could not be registered, but after the amendment, even if they are not similar to the basic design, they can be registered as related designs if they are similar to the related design selected as the principal design. Therefore, designs that were previously rejected under Article 9 as being similar only to related designs can now be registered if they meet the requirements. Even if you have given up on obtaining rights in the past, please consider filing again if there is a possibility of commercialization.

 

2. How to use

① The duration of related designs will be extended to 25 years (after amendment) from the filing date of the basic design.

The duration of a related design is 25 years from the filing date of the basic design. If the basic design was applied for before the revised law came into effect (until March 2020.3.31, 20), the duration of the related design applied for before the revision will be 25 years from the registration date of the main design, but the application deadline for the related design applied for after the revision will be 5 years from the filing date of the basic design, so the expiration dates will not match and care must be taken when managing them. In addition, if the design registration before the revision is used as the basic design, the duration of the related design will continue even after the expiration of the basic design, so the exclusive right of the design related to the similar scope of the basic design can be extended by about XNUMX years.

<Examples of duration of basic designs and related designs>

 

② Secret design*3

Filing related design applications is expected to enable strategic protection of a series of designs that inherit the design concept of the basic design. On the other hand, filing related design applications makes the scope of similar designs predictable to others, which may raise concerns that others may be able to create similar products that incorporate a group of designs while avoiding infringement. In such cases, secret designs are considered to be an effective means of suppressing the predictability of others. By making a design a secret design, others cannot predict the direction of design development or whether or not a design right has been obtained, which has a deterrent effect of preventing them from selling similar products. This is thought to narrow the number of applications and to be able to promote the sale of one's own products in an advantageous manner.

*3 A secret design is a design for which a period of three years or less is specified at the time of application or payment, and after the registration of the design, any description that could identify the design, such as the design drawings, name of the article, or description of the design, is not to be disclosed in the Design Gazette during the specified period.

 

3. Finally

The application period for related design applications has been significantly extended, making them more convenient, but the idea of ​​"materials to be excluded from materials that serve as the basis for loss of novelty," which was taken as a measure to ensure their effectiveness, has become more complicated. We will provide as much advice as possible on the selection of the principal design, application requirements, and similarity to the implemented product. Please feel free to contact us if you are considering filing a related design application.

 

 

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