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Quick Review of Geneva Act of Hague Agreement Design Law Practice in Japan & Expected Changes

Japanese Design Law Practice - Is Japan ready to join Hague Agreement? – Shigeyuki Nagaoka 2013 J PAA -AIPLA Premeeting October 22-23, 2013 Washington D.C., USA. PART 1. PART 2. PART 3. Quick Review of Geneva Act of Hague Agreement Design Law Practice in Japan & Expected Changes

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Quick Review of Geneva Act of Hague Agreement Design Law Practice in Japan & Expected Changes

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  1. Japanese Design Law Practice - Is Japan ready to join Hague Agreement? –Shigeyuki Nagaoka2013 JPAA-AIPLA PremeetingOctober 22-23, 2013Washington D.C., USA

  2. PART 1 PART 2 PART 3 Quick Review of Geneva Act of Hague Agreement Design Law Practice in Japan & Expected Changes Practical Tips 2

  3. PART 1 • Quick Review of Geneva Act • Signed in 1999 • Became effective in 2003 • Geneva Act is encouraging “Substantive Examination Countries” to join • US will become a party to the Geneva Act very soon • Korea is already a party to the Geneva Act • China started the study • Is Japan joining? 3

  4. PART 1 • Quick Review of Geneva Act • Can include 100 industrial designs in a single application (Act. 5(4)) • Can include more than one product if they belong to a single international class • Locarno Classification is used • Locarno Classification includes thirty-two classes • Class 32: Graphic Symbols and Logos, Surface Patterns, Ornamentation • Renewal and transfer can be made at IB 4

  5. PART 1 • Quick Review of Geneva Act • Necessary Information in Application Form • Information about applicants • Drawings of industrial design(s) or photograph(s) • Names of products • Countries to be designated • Optional Information • Priority claim • Request for deferring International Publication (Act 5(5)) 5

  6. PART 1 • Quick Review of Geneva Act • Required if a designated country requires • Names and addresses of creators • Description of the drawings or photographs • Description of characterizing portions of the industrial design • Claims 6

  7. PART 1 • Quick Review of Geneva Act • Specimen may be filed instead of drawings • Drawings must be furnished three months before international publication • Designated country cannot reject an international application for formality reasons (R-9) • However, the designated country can reject the international application when the drawings are insufficient 7

  8. PART 1 • Quick Review of Geneva Act • Applicant does not have to file a design application in his own country before filing an international application • Can file an international application in IB • Can file it without patent attorneys • Optional use of an intervening Office between an applicant and IB • “Office Presenting the Request” • IB accords a filing date if all requirements are met, and makes registration immediately • The filing date is the registration date (Act. 10(2)(a)) 8

  9. PART 1 • Quick Review of Geneva Act • If substantive examination is carried out in the designated country • Office sends an Office Action to an applicant when Office finds substantive deficiencies • Office cannot issue an Office Action for formality reasons • Office must issue an Office Action in six or twelve months from the international publication (R-19(1)) • Applicant can submit an amendment and argument to the Office 9

  10. PART 1 • Quick Review of Geneva Act • Term of Protection • 15 (5+5+5) years from the international filing date (Act. 17) • Can be longer if the designated country gives a longer term (e.g., 25 years of protection in EU) • International Publication • International publication after registration • Application is confidential until international publication (Act 10(4)) 10

  11. PART 1 • Quick Review of Geneva Act • Timing of International Publication • International publication takes place six months after international registration (Act 11) • Can ask an early publication (R-17(1)) • Can defer the international publication up to 30 months from the filing date or priority date (R-16(1)) • Designated countries decide an upper limit on the deferment Singapore: zero Denmark: six months Estonia: twelve months • The least deferment is given if designated countries give different upper limits 11

  12. PART 1 • Quick Review of Geneva Act • Is “unity” an formality issue or not? • Unity is a formality issue • However, designated country can issue an Office Action if the designated country declares so (Act 13(1)) • Art. 13 stipulates “Special Requirements Concerning Unity of Design” • Does an applicant have to check which countries have declared the special requirements before filing an international application? 12

  13. PART 2 • Design Law Practice In Japan & Expected Changes • JPO set up a special committee for Geneva Act • No backlog issue in Japan • JPO examination can proceed fast • Positive voices are heard 13

  14. PART 2 • Design Law Practice In Japan & Expected Changes JPO Announced Nothing Solid To Date 14

  15. PART 2 • Design Law Practice In Japan & Expected Changes • Current Design Law Practice in Japan • Only accepts a single industrial design in one application • Only accepts a single product in one application • Requires six drawings • Accepts photographs and specimen • Requires a description of the product if size and/or material is unique • Does not require claims • Does not use Locarno Classification • Requires representation of a Japanese patent attorney if applicant’s address is outside Japan 15

  16. PART 2 • Design Law Practice In Japan & Expected Changes • Current Design Law Practice in Japan • Application form must be written in Japanese language • Creator’s name and address must be indicated in an application form • Substantive examination • First-to-file system • Grace period • No fast track • Office Actions are issued to 20-30% of applications • No publication before registration • 20 years of protection 16

  17. PART 2 • Design Law Practice In Japan & Expected Changes • Current Design Law Practice in Japan • Partial design application • Associated design application • Secret application • Set-product design application • Divisional application • Conversion between a design application and a patent application 17

  18. PART 2 • Design Law Practice In Japan & Expected Changes • Expected Changes • Probably JPO will revise the Design Law to accept a design application that includes more than one industrial design • Probably JPO will become an “Office Presenting the Request” • Probably JPO will allow deferral of the international publication • Probably JPO will provide a fast track examination • Probably JPO will prepare its own database for international applications 18

  19. PART 2 • Design Law Practice In Japan & Expected Changes • Expected Changes • Probably JPO will allow “Self Designation” • Probably Japan will ratify Locarno Agreement • Applicant may file an English-language amendment, but JPO will probably require a Japanese-language argument • Probably JPO will issue an Office Action in 12 months from the international publication • Probably JPO will make its own register by copying the registration information from the international register 19

  20. PART 3 • Design Law Practice In Japan & Expected Changes • Expected Changes • Probably JPO will apply a grace period practice to international applications • Probably JPO will apply the “associated design” practice to international applications • Probably JPO will apply the “partial design” practice to international applications • Probably JPO will give 20-year protection for international applications 20

  21. PART 3 • Design Law Practice In Japan & Expected Changes • Statistics • Design Applications filed in JPO and USPTO • How many applications came to Japan from foreign countries 21

  22. PART 3 • Practical Tips • International registration means nothing with regard to Japan • Publication of design takes place even before a protection is given • Cannot control the timing of international publication even if a request for deferral is made • Office Action is open to the public • JPO will not reject drawings for formality reasons 22

  23. PART 3 • Practical Tips • Priority document must be filed with JPO in a certain period from the international publication • Applicant will become a proprietor in Japan after the copying of the international register into the JPO register is finished • Cannot register a license agreement in the international register • Cannot register a security right in the international register 23

  24. PART 2 • Practical Tips • Computer-generated icons and interfaces • If an applicant wants protections for the same icon for three products (e.g., mobile phone, tablet computer and desk-top computer) under the current Japanese design law, three separate applications must be filed. Geneva Act will relax this practice. 24

  25. Arigato Gozaimashita Nagaoka Shigeyuki LEXT, P.C. Tokyo, Japan s-nagaoka@fujipat.com 25

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