APAA e-Newsletter (Issue No. 37, October 2023)

Amendment to the Law Regarding Exceptions to Loss of Novelty of Design

Tetsuya Fuse, FUSE Intellectual Property firm (Japan)

1. Introduction

The Law on Exceptions to Loss of Novelty of Industrial Designs will be revised.  The current system of the law requires certification for each publicly known act and imposes an excessive burden on applicants.  In other words, under the current law, when the same design is advertised on the web, presented at an exhibition, distributed in a catalog, advertised in a leaflet or actually sold, proof of each action is required.  In addition, if variations such as different colors are published, all published designs must be certified. Hence, for example, if 1,000 direct mail messages disclosing products are sent, it is necessary to provide a list of all the recipients. Further, when new products are announced using SNS, it is necessary to submit more than 100 certificates.

Regarding designs, it is common for a decision on application to be made as a result of market reaction at an exhibition. In recent years, there has been an increase in opportunities to disclose designs prior to application, such as for product development using crowdfunding. The practice of proving all disclosure facts has thus deviated from the purpose of industrial revitalization.

2. Details of the revision

The revision of the law will improve the above-mentioned flaws. The main points are as follows:

(1) When the same or similar design is publicly known more than once, so long as the first publicly known fact is proven, it is unnecessary to prove the second and subsequent publicly known facts.

(2) The earliest publicly known timing is determined not by “hour and minute” but by “day”.

As a result of the above amendment, (1) requires only the first publication to be certified when the same design is published by various means or when a similar design variation is published. In previous patent trials, a patent was invalidated on the basis that the certificate submitted evidenced sale in Coop A, but not sale in Coop B. If such a case occurred in a design matter, registration would not be invalidated under the revised system.

In addition, regarding (2), for example, when nationwide chain retail stores start sales on the same day, there is no need to undergo the laborious task of identifying the first action by the exact time and minute.

3. Points to note

This revision of the law is beneficial in reducing unnecessary burden on users, but there are some points to keep in mind.

(I) Certification itself is required.

Even after the amendment, it is still necessary to apply for the application to be subject to the loss of novelty exception at the time of filing and submit a certificate within 30 days from the filing date. In other words, unlike Europe, the United States and South Korea, it is not the system that the applicant can be excused from submitting certification at the time of application, neither will the applicant be permitted to submit the certification only at the time of later conflict.

(II) All other publicly known designs shall be certified.

Certification of the second and subsequent publicly known acts is not required only when they are identical or similar to the first publicly known design.  Therefore, if the applicant determines that the second and subsequent publicly known designs are similar to the first publicly known design and hence omits the proof, and it is then determined to be dissimilar in the course of examination, there is a risk that the second and subsequent publicly known designs may be cited for ease of creation. There are many cases where one must be careful about the interpretation such as the relation between the finished product and the parts contained in it (not similar to each other).

However, it seems that cases like “The fur coat case” (Intellectual Property High Court Hei-29 (Gyoke) 10234) will benefit from the revision of this law.

(III) Even if the first publicly known fact is discovered later, additional proof cannot be made.

Even if an applicant certifies a design as the first published design, but subsequently finds the existence of a design previously published, the applicant cannot provide proof of the true first published design after the statutory period.

(IV) The amendment of the Design Law only.

This time, the Design Law is being revised, and with the exception of loss of novelty for patents and utility models, it is necessary to prove all publicly known acts in the future.

4) Conclusion

The revised bill was passed by the diet session in 2023, and the new law is expected to come into effect next spring. Following the revision of the law, the actual operation of the system will be determined in accordance with the examination standards and guidelines. Therefore, it is desirable to properly understand the system operation and utilize it for the protection and utilization of designs.