A. OBJECTIVES OF REVISION
 
Strengthen and expand design protection

Deregulation of design drawing specifications

2. ITEMS OF REVISION

1. Parts of articles can be registered as partial designs (Article 2-1)

1. Standards of creativity raised (Article 3-2)
2. Rejection of subsequent design applications identical or similar to registered prior design applications (Article 3-bis)
3. Registerable group design types expanded (Article 8)
4. Prior design applications not eventually registered prior cannot prevent registration of subsequent applications (Article 9-3)
5. Statutory non-exclusive licenses to be recorded for previously rejected designs similar to registered designs (Article 29-3)
6. Associated Design System to replace Similar Design System (Article 10)
7. Standard damages for infringement to be raised (Article 39-1)
8. Infringement subject to prosecution even without a complaint (Article 69)
9. Tightening of corporate liability for design right infringement (Article 74)
10. International diversity of design drawings to be recognized simplifying application process
11. Indication of creative design characteristics to be recognized (voluntary)

2. IMPORTANT POINTS ABOUT THE DESIGN LAW REVISION

1. Similar designs can be registered, as long as they are filed on the same day

Prior to filing an application for a design (complete design, partial design, associated design, or group design), the range of similarity to the design to be filed must be determined and it must be decided whether design rights for similar designs should be obtained. All subsequent applications for designs similar to a previously filed design will be rejected and design rights for such similar designs can not be obtained.

 

2. Claiming Priority

1. In applications claiming Priority, the filing date of the country first filed in will be taken as the date of prior application. Consequently, if the filing dates for the principal and associated designs are the same in the country of first filing, then the respective applications in Japan will be considered to have the same filing date, even if the filing dates for said respective applications differ.
2. In cases where the Applicant wishes to file in Japan for related similar designs claiming Priority, it is necessary to ensure that the filing dates in the first foreign country of application on which Priority is to be claimed are the same.

1. Complete and partial designs; group designs and designs of articles constituting the group

Applications for partial designs must be filed prior to the filing of an application for a complete design and applications for designs of constituent articles of a group must be filed prior to the filing of a group design application. Unless filed in this order, the applications will be rejected.

 

2. Applications for designs similar to one's own registered design cannot be filed as of January 1, 1999

We recommend that current design right holders determine if their rights would be strengthened by registering similar designs and, if necessary, file applications for such similar designs before the end of December 1998 (please note that most offices, including ours, will be closed from December 29^th for the New Year's Holidays).

 

3. Designs rejected under the current Design Law may be registerable

2. SCOPE OF REVISIONS

1. Article 2(1) - Parts of articles can be registered as partial designs. (New)

1. The design of part of an article can be registered as a "partial design" by generally indicating the complete article with broken lines and the creative section or part of the complete article for which registration is sought by means of clear, solid lines in the design drawings.
2. In principle, "complete designs" and "partial designs" will be deemed dissimilar.

Comments

1. Please note that applications for partial designs must be filed prior to an application for the complete design and must all have the same filing date. If the complete design is filed before the partial designs, all the partial design applications will be rejected under the new 3-bis provisions of the Revised Design Law.
2. The scope of the registered design (objective scope of the design right) will be clearly defined, an advantage for the Proprietor that should be widely used.
3. However, when a constituent part alone becomes the object of business dealings where a portion of an article is a constituent part of that article, since the constituent part will be recognized as an "article" per se, it may be advantageous for one to apply for and obtain the design rights for the constituent part alone as a complete "article".

1. Article 3(2) - Standards for Judging "Creativity" to be raised (Revised)

 

Summary

This revision raises the standards for judging creativity, so the registration of designs requiring little creativity will become more difficult than for highly creative ones.

 

Comments

The conventional criteria for creativity was "well known (to anyone) in Japan", but the revised criteria will become "publicly known internationally". In addition, the meaning of "known", in contrast to the Patent Law, is not just "knowable", but "actually known".

 

2. Article 3-bis - Later applications deemed identical or similar to portions of prior registered designs will be rejected. (New)

Summary

Designs deemed identical or similar to prior registered designs will be rejected, even if the creators or applicants are the same. However, both designs will be allowed for registration if the filing dates are the same.

Comments

a) Examples:

1. An application for a partial design is rejected because it is deemed identical or similar to a portion of a prior complete design;
2. An application for a constituent article of a prior group design is rejected because it is deemed identical or similar to a portion of the group design;
3. An application for a portion of a finished product is rejected because it is deemed identical or similar to a part of the finished product.

1. File on the same date;
2. Reverse the order of filing in the above examples, namely:

• file the partial design before the complete design,
• file for the articles constituting the group before the group design,
• file the partial design before the finished product design

1. Article 8 - Registerable group design types will be expanded (Revised)

Summary

The conventional specified scope of protection for system designs such as dinner sets and thirteen other types will be expanded to strengthen the protection afforded to systematic designs comprised of a number of articles which give an overall impression of unity. Examples include kitchen sets, underwear, toothbrushes, office equipment, audio systems, gateposts, fences, tables and sofas, etc.

Comments

1. The specified "group" as a whole will be recognized as one design right, with no design rights for the separate constituent articles. Consequently, it may be more beneficial to obtain design rights for each constituent article as in the past.
2. Using the group design registration system may be of merit where the separate constituent articles lack novelty or creativity, or where registration of the constituent articles could be difficult because of similarity to other designs but the overall group would be allowable for registration.
3. Applications will be rejected if the group (all articles) is applied for prior to an application for the constituent articles of said group.

1. Article 9(3) - Prior design applications that are not registered cannot prevent the registration of subsequent applications. (New provision)

 

Summary

Prior design applications not eventually registered (i.e. those rejected, refused, abandoned or withdrawn) cannot prevent registration of identical or similar subsequent design applications (Article 9-3).

 

Comments

Applications rejected in the past because of undisclosed prior design applications that were not registered will be registerable if re-filed under the revised law. We therefore recommend that Applicants reevaluate previously rejected applications.

 

2. Article 29-bis - Statutory non-exclusive licenses will be recorded against registered design rights similar to designs rejected previously. (New )

Summary

Statutory non-exclusive licenses (i.e., not requiring the conclusion of a contract between the respective parties) for subsequently registered designs will be recognized for prior Applicants whose designs were rejected. Consequently, reduction to practice by such Applicant will not constitute infringement of the subsequent Proprietor's acquired design rights.

Comments

a) The conditions for implementation of statutory non-exclusive licenses are:

1. The prior application must have been made in good faith (i.e., the Applicant was unaware of the subsequent Applicant's design);
2. The design of the prior application was rejected under Art. 3(1) and is identical or similar to the subsequent design of the applicant;
3. At the time of recording the subsequent design application, the prior applicant has reduced or is preparing to reduce the design to practice in Japan.

2. If a rejected design is to be reduced to practice, the existence and availability of evidence proving that the aforementioned conditions have been satisfied must be ensured in order to rebut any subsequent questions about said reduction.

1. Article 10 - Associated Design System Established in Place of Similar Design System (New)

Applications filed by an Applicant for similar designs with the same filing date will be allowed for registration. If the filing dates differ from one another, then the subsequent application for a design similar to the prior application will be rejected.

Summary

This Associated Design System allows the registration of similar designs where one of the designs is designated as the principal design and the remaining designs as associated designs similar to the principal design (only in cases where the filing dates of the principal design and associated designs are the same). Designs similar only to the associated designs and not the principal design cannot be registered.

The design rights associated with principal and associated designs are exactly the same as normal design rights, apart from the following exceptions:

1. Before applying, it is important to consider carefully whether registrations for similar designs are necessary, as similar designs cannot be registered at a later date.
2. In applications claiming Priority, the filing date of the country first filed in will be taken as the priority date. Consequently, if priority dates for the principal and associated designs are the same, then the respective applications in Japan will be considered to have the same filing date, even if their actual filing dates differ.
3. Where the Applicant wishes to file in Japan for related similar designs claiming priority, the priority filing dates must be the same.

1. Article 39(1) - Standard damages for infringement will be raised (New)

Summary

With the revision, damages will be calculated by multiplying the number of items actually transferred by the infringer by the amount of profit reasonably expected by the Proprietor or exclusive licensee if they sold the items themselves. However, damages can not exceed the working capabilities of the Proprietor or exclusive licensee.

 

Comments

In calculating damages, determination of "working capabilities" will have a substantial effect on the final sum. Consequently, we recommend filing design applications in the name of a company instead of an individual, because a company will have a higher working capability than an individual.

 

2. Article 69 - Infringement will be subject to prosecution even without a complaint. (Revision)

 

Comments

Under the revision, infringement will be recognized as a crime at the time of infringement. Where the infringer is a company, both the company employee who committed the crime and the company itself will be deemed to have committed the crime. Careful note should be made of this provision.

 

3. Article 74 - Corporate liability for design infringement tightened (Revision)

1. A maximum penalty of one hundred million yen (\100,000,000) will be imposed on corporations (companies) infringing upon another party's design rights.
2. In addition, demands for compensatory damages under Civil Law can of course also be made, which will likely exacerbate actual damages paid for infringement.

1. Application process to be simplified by recognizing the international diversity of design drawing preparation.

 

Summary

Acceptable methods of representing designs will to become relatively freer.

 

Comments

Many design drawings filed in other countries will be accepted as is in Japan, thereby reducing associated costs and facilitating design drawing preparation.

 

2. Indication of creative design characteristics to be recognized (New)

Documents laid out in a set format outlining a design's characteristics may be submitted any time before examination is completed, and will be published in the Design Gazette.

Comments

As a result of this provision, an Applicant can indicate the creative portion of a design, thereby clarifying the object of examination. In addition, we have been informed that the written contents of the characteristics will not affect the interpretation of the scope of the resulting design rights.

Important

Whilst the Design Law Revision has been approved, accurate information and material regarding the associated changes is scarce, despite the fact that the Revision is due to come into effect shortly. Accordingly, there is still much uncertainty surrounding the revisions.

 As the foregoing has been compiled under the present circumstances, and it is therefore possible that discrepancies may exist with the final working standards and any consolidated opinions and interpretations thereof that may be announced in the near future, we ask for your understanding and hope that this reference material will be of assistance to you in understanding the basics of the coming Design Law Revision.