DESIGN LAW REFOM IN 2014

Tomohiro(Tom) NakamuraKonishi & Nakamura

Co-Chair, International ｌ CommitteeJapan Trademark Association(JTA)

MUST TO KNOW

NICE TO KNOW

AIPLA Annual Meeting 2014Pre-Meeting with Japan Practice

Committee

2

OVERVIEW

1• Join Hague Agreement• Op. starts on Mid-April 2014 (expected)

2

• Relax Requirement of Design of Digital Image ----- Continue Discussion!

• Stopgap: Will Amend Guideline of Exam.

3

MUST TO KNOW

4

Hague

Direct

JPO

TOKYO

GENEVE

A US company Has Two Routes to Come.

WIPO Web

Japan (US)S. Korea

USApplicant

WIPO

International Bureau

Not ThroughUSPTO

No Need US Application

LOOK HAGUE FLOW

WIPOInternational

BureauFile R

eceived

Registered

Published

6-months

LOOK HAGUE FLOW

Fo

rmality

Ch

eck

Published

WIPOInt’l Bureau

Japan

S. Korea

Singapore

exam

exam

exam

Notification of Allow

anceLOOK HAGUE FLOW

8

NOVELTY GRACE PERIODDON’T MISS STATEMENT

9

NATIONAL HAGUE

6-months Grace Period Allowable

MUST STATE simultaneously When Filing. You retained JP counsel, so he/she advise you.

MUST STATE simultaneously or after an International Filing within certain period since publication. You don’t retain JP counsel, you must be aware.

MUST Supplement Evidence of Disclosure within 30-days

MUST supplement evidence of disclosure within certain time

10

NOVELTY GRACE PERIODMUST STATE EVERY DISCLOSURE

H07 Gyo KE 159 Connector Case

1st DisclosureJune 4, 2012

Filed Nov. 9, 2012

Dec. 10, 2012 Evidence

3

2nd DisclosureJuly 18, 2012

Not identical to 1st disclosure design

Judges said no need statement on 2nd disclosure. But……..

7

Appeal for Reexamination 2011-14081

1st Disclosure in USSept 8, 2009

2nd Disclosure in JapanNov 2, 2009

Filed Mar 1, 2012

Mar 15, 2012EvidenceNot identical to 1st

disclosure design

Judges said no need statement on 2nd disclosure. But……..

13

NATIONAL FILING-

FASTER THAN HAGUE&

KEEP CONFIDENTIALITY

14

NATIONAL HAGUE

FA 6.0 months average

Enforceable Right Standing

Published

THEN

File & Register Immediately

Published by WIPO

Examine by JPO

6 Months

Enforceable Right Stand

No Enforceable Right in Japan

Remain Confidential

6 Months

Deferment Up to 36 months if request

15

STRICTERDRAWING PRACTICES

16

Hague Official Gazette

HOW DEAL BY

EXAMINERIF EXTEND TO JAPAN?

18

A1 •Refuse Designation of Japan

A2 •Send Provisional Refusal; Lacking Formality of Drawings.

A3 •Send Provisional Refusal; Lacking Substantial Requirement “Design is Ambiguous”.

Drawing: You Answer…

19

A3: Supplement drawings, completing 6-dimention of design.

20

A1 •Refuse Designation of Japan

A2 •Send Provisional Refusal, Then Must Divide Design Each

A3 • Go Through without Objection!

Unity of Appl icati on. You Answer…

21

A3:　 Examiner ex-officio divides design by design.

DM72794

DM72794-1

DM72794-2

DM72794-3

Examiner X

Examiner Y

Examiner Z

Grant

Refuse

Grant

22

Identi fy Arti cle Design Appl ied for

CAN YOU USE SUCH CLAIM IN

NATINAL APLICATION with JPO?

CLAIMThe ornamental design for a surface configuration of a vehicle, toy and/or other replicas, as shown and described.

23

A1 •You Can.

A2 •You Can’t.

Identi fy Arti cle Design Appl ied for

What is Design?US: 35 U.S35 U.S.C. 171 Patents for designsWhoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.JP: Design Act Article 2(1) "Design" in this Act shall mean the shape, patterns or colors, or any combination thereof, of an article (including a part of an article, the same shall apply hereinafter except in Article 8), which creates an aesthetic impression through the eye.

24

NICE TO KNOW

25

ANNUITY MANAGEABILTY

26

Hague:Lump-Sum in 5-years, RenewablePay In-Advance, and Refundable

Direct:Every 1-year, Pay After Grant

27

MULTIPLE DESIGN

29

JPO Accepts, (Not Send Objection) ButGovernment Fee Multiplies.

30

COMPUTER GENERATED DESIGN

HowProtect

in Japan?

31

COMPUTER GENERATED DESIGN

Locarno ClassificationClass 32 Graphic symbols and logos, surface patterns, ornamentation

Hague: Applicable in Class 32

How is in National Phase?

32

COMPUTER GENERATED DESIGN

Dinosaur Prince of Design Act“Design is Shape, Pattern,

Ornamentation, Color etc for Industrial Products” Article 2-1

Japan: Objection!

33

Computer Generated Design

Industrial Products

34

COMPUTER GENERATED DESIGN

Acceptable******Design

for Cell Phone

35

COMPUTER GENERATED DESIGN

How Protect

DownloadableApplication?

36

NO WAY EXCEPTDesign for Cell Phone

Unenforceableto DVD PLAYERSusing same computer generated design, or consider Contributory Infringement.

37

Hardware Manufacture

Software Industry

JPO

38

Continue Discussion,As Stopgap

Amend Guideline of Examination

39

Article 2(2) of Design ActThe shape, patterns or colors, or any combination thereof, of a part of an article as used in the preceding paragraph shall include those in a graphic image on a screen that is provided for use in the operation of the article (limited to the operations carried out in order to enable the article to perform its functions) and is displayed on the article itself or another article that is used with the article in an integrated manner.

My Idea: A Guideline reads:A graphic image on a screen includes those generated by post-installed software after purchasing articles.

40

Thank you!

CONTACTTom Nakamura, Konishi & Nakamura

Tel: +81 52 229 1070 Fax: +81 52 229 1074nakamura@ipworld.jp