Recent years have seen significant changes in the design law field in Japan, in a bid to propel global cooperation and harmonization. In 2018, the Design Act was revised to extend the grace period. In 2019, the Examination Guidelines were revised to relax the requirements for drawings and the Design Act was further revised to introduce a number of fundamental reforms in order to strengthen innovation and branding. These reforms included an expansion in the scope of protection, a change in the duration of design rights, the enhancement of the related design system, the introduction of collective applications for multiple designs and others. An overview of the reforms to the design law is set forth below.
The grace period (namely, the period of time for applying for an “exception to lack of novelty”) was extended from six months to one year starting from June 2018. A Japanese design application will now no longer be rejected for lack of novelty due to disclosures occurring during the one-year period prior to filing in Japan, as long as the applicant takes the appropriate procedure to apply for such exception.
In design applications, it was previously mandatory to provide six (6) views of articles for which a design right was being sought. Since May 2019, however, it is now no longer strictly necessary to submit six (6) views, and one (1) view alone can be sufficient if it suitably identifies the design. The following is an example introduced in the JPO’s Examination Guidelines wherein the back view was not submitted (the article is a frame).
A GUI is a mechanism for exchanging information between users and equipment, and is provided in the form of graphical images (“GUI images”). Prior to April 1, 2020, only those GUI images that were stored and indicated on the screen of an article such as a PC, smartphone or tablet were protected. The 2019 revision of the Design Act has now expanded the scope of protection to cover GUI images which are not stored (e.g., images provided via the Internet). Furthermore, images projected onto non-display devices (e.g., roads or walls) are now also protected. However, it should still be noted that protection will not be provided to images which have no functional relationship to the article of the design, such as paintings, characters, etc. which are for aesthetic purposes only.
Real estate and immovable property did not previously fall under the definition of an “article” for a design right, and this resulted in buildings (except for prefabricated houses) not being protectable. However, the revised Act now also provides protection to building designs. The types of protectable designs include not only the exterior design of buildings but also the interior designs of shops, restaurants and offices, etc.
Under the revised Design Act, the duration of a design right has been extended to twenty-five (25) years from the date of filing, from the previous duration of twenty (20) years from the date of registration.
Design law in Japan has conventionally provided a unique system for protecting a group of designs related to each other in the name of a “related design,” as an exception for double patenting.
Under the previous version of the Design Act, the period within which related design applications could be filed, was until the publication date for the registration of the principal design. However, in recent years, an increasing number of companies have been establishing their brands by continuously using consistent design concepts, and there have been some cases where the period until the registration of the publication of the principal design was not sufficient to achieve adequate protection.
Under the revised version of the Design Act, such period has been extended to within ten (10) years from the filing date of the principal design, and designs which are similar only to the related design (not just to the principal design) have become protectable. With this reform, an applicant such as an automobile manufacturer can expect to be able to protect a series of designs applied to changes in a car model sticking to a consistent design concept over the years.
Under the previous version of the Design Act, it was required that one application contain only one design (embodiment), so it was necessary to file divisional applications or separate applications for each embodiment. Under the revised Design Act, however, applicants are no longer required to file divisional application(s) if multiple designs are collectively contained in one application. Instead, the JPO will conduct an examination on each of the designs in the application and issue a design registration for each registrable design.
The revised Design Act also provides other significant changes, including the elimination of the article classification table, clarification of the level of creativity, introduction of a partial design concept for a set of articles, expansion of the acts that fall under indirect infringement, expansion of remedy procedures, and review of the methods for presuming damage.