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2006 Amendments to Japanese Design Law

The amendments described in the following Paragraphs 1 through 6 became effective on April 1, 2006, and those described in the following Paragraph 7 became effective on September 1, 2006.

(Design Law)

1. Extension of design right term:

The current fifteen year design right term will be extended to twenty years from the registration date. This will affect applications filed on or after April 1, 2007. The amount of the 11th to 20th annuities will be 33,800 yen per year (the same amount as the current 11th and subsequent annuities).

Practical Notes:

1) You should be careful about the annuity payment management of your design portfolio depending on the applicable term (i.e., 15 years or 20 years). The applicable term will vary depending on whether the filing date is before the implementation date or thereafter.

2) When you evaluate validity of a design right in a design search or an infringement analysis, you should correctly identify the applicable design right term.

2. Expansion of registrable design - screen design:

The following sentence will be added to the definition of “design”:

“A shape, pattern or color of part of an article or any combination thereof includes a picture provided by an image display for the operation (limited to the operation for keeping the article concerned in an operative condition for consummating its function) of the article and that it is shown on the article concerned or the article used as an integral part thereof “.

Practical Notes:

Screen image designs to be displayed for the purpose of achieving the use and functions of an article (the following Examples 1 to 3) or screen image designs to be displayed on a general-purpose display machine connected to an article ( Example 4 below) will be registrable as a partial design. However, this does not apply to a screen image design for computer software ( Examples 5 and 6 below) and images that are displayed through the Internet on a personal computer (Example 7 below).

 

* Subjects to be protected after the amendment

Example 1: A screen image design for a set up screen for a digital camera
Example 2: A screen image design for a screen to select a person to call for a mobile phone
Example 3: A screen image design for a screen to select images to be printed for a photo printer
Example 4: A screen image design for an operation screen for a video recording/reproducing machine

Example 1
Example 2
Example 3
Example 4

 

* Subjects not to be protected after the amendment

Example 5: A DVD operation screen image to be displayed on a computer display
Example 6: A screen image design for accounting software to be displayed on a computer display
Example 7: A screen image design accessed via the Internet for display on a computer display

Example 5
Example 6
Example 7

 

3. Clarification of criteria for evaluating similarity of designs:

With respect to evaluation of similarity of designs, the following will be put in the statutory form: “Similarity between a registered design and other designs is evaluated based on an aesthetic impression on consumers’ sense of sight”.That is, it will be clarified that similarity of designs shall be evaluated from the viewpoint of consumers including traders and that it shall be based on an aesthetic impression on consumers’ sense of sight.

Practical Note:

In a practical sense, there will be no big changes. * However, since it will be clarified that similarity of designs is evaluated from the viewpoint of consumers, arguments from the viewpoint of a creator should be avoided in a response to an office action.

*The Japan Patent Office’s position is that this criterion merely follows past Supreme Court’s cases and that there will not be any changes from the current criterion. However, due to the addition of the term “consumers” in the statutory form, there are concerns that the aspect of protecting creators is being ignored.

4. Reconsideration of the related design system:

An application for a related design can be filed up to issuance of publication of a principal design registration. This also applies to a principal design that is the subject of a secret design. Note that so long as a related design application is filed after the date of implementation, it does not matter when a principal design is filed.

Practical Notes:

1) We will have more opportunities to file related design applications to obtain broader rights. In order to establish a broad and valid right, however, we think it better to file a related design application at the same time the filing of a principal design application. This is because there is a possibility that a related design application may be rejected due to (i) the existence of a third party’s design which has become publicly known after the filing of the principal design application or (ii) issuance of publication of the principal design in a foreign country, if a corresponding design application has been filed abroad. Therefore, the late-filing of related design applications should be understood as a supplementary measure to deal with design changes after filing the principal design application or with failure to file necessary related design applications at the time of filing the principal design application.

2) You should review all non-published design applications, including those filed before the implementation date to confirm whether a related design application should be filed.

3) You should determine whether to file a related design application after receiving a notice of allowance of registration and before paying the registration fee.

4) If an exclusive license is recorded on a principal design registration, a related design cannot be registered.In this case, the recorded exclusive license must be removed from the register before filing related design applications or after receiving a refusal for related design applications. After registering related designs, exclusive licenses must be recorded against the principal design registration and all the related design registrations.

5. Reconsideration of Article 3 bis of Design Law:

An application for a part of a prior design will be allowed, provided that the applicants are the same, until issuance of publication of a prior design registration. For example, under the amended design law, if a prior application relates to a whole article, an application for a part of the whole article can be filed until issuance of publication of the prior design registration. This also applies to a principal design that is the subject of a secret design. Note that so long as a partial design application is filed after the date of implementation date, it does not matter when a prior design application is filed.

Practical Notes:

1) As in the case of a related design application, we think it better to file a partial design application at the same time of filing a design application relating to the whole article. You should consider this provision as a supplementary measure to deal with design changes or with failure to file necessary partial design applications.

2) You should review all the non-published design applications, including those filed before the implementation date to reconfirm whether a partial design application should be filed.

3) You should determine whether to file a partial design application after receiving a notice of allowance for registration and before paying the registration fee.

6. Additional time for filing a request for a secret design:

A request for a secret design will be able to be filed at the time of paying the first annual fee in addition to at the time of filing. This will affect applications filed on or after April 1, 2007.

Practical Notes:

1) Due to the acceleration of examination process, it is possible for a registered design be published before the applicant’s release of the corresponding product. If you wish to delay issuance of publication, you may consider filing a request for a secret design, although you should consider the disadvantages caused thereby. When filing such a request, you should also consider the necessity for filing such requests with respect to the principal, related, partial and other relevant design application.

2) You must decide whether to file a request for a secret design after receiving a notice of allowance for registration and before paying the registration fee. We will ask you whether to file such a request when we send you the notice of allowance.

7. Extension of time for submitting a certification in support of exceptions to lack of novelty of design:

The period for submitting supporting documents has been extended from the current fourteen days from the filing date to thirty days from the filing date. This affects applications filed on or after the implementation date of September 1, 2006.