Geneva Act (Hague Agreement)

• 15-1. What should I be aware of when I apply for industrial design registration under the Hague Agreement designating Japan？
• 15-2. Can overseas residents conduct procedures directly before the JPO by submitting documents or sending e-mails for international applications under the Hague Agreement?
• 15-3. Are accelerated examinations at the JPO available for international applications designating Japan under the Hague Agreement?
• 15-4. At the time I filed an international application claiming priority, I did not include the priority certificate nor indicate the Digital Access Service (DAS) access code for my application. Am I allowed to submit the certificate or the DAS access code later to the JPO?
• 15-5. What is the "IMPORTANT NOTICE FOR HAGUE USERS"?
• 15-6. What is the "FINAL NOTICE"?
• 15-7. I received an "IMPORTANT NOTICE FOR HAGUE USERS" or "FINAL NOTICE." What are the reasons for this?
• 15-8. I did not make a declaration of exception to lack of novelty at the time of filing. Am I allowed to make such declaration later to the JPO?
• 15-9. How can I respond to a "Notification of Refusal" under the Hague Agreement?
• 15-10. What will happen if I do not respond to a Notification of Refusal?
• 15-11. In what ways can I get hold of cited documents specified in the Notification of Refusal I received?
• 15-12. To whom are notices sent from the JPO?
• 15-13. When design protection could not be granted in Japan or if I withdrew the designation of Japan for my international application, is there any way to get the paid fees refunded?
• 15-14. How is the duration of protection calculated for designs filed in Japan through international application process under the Hague Agreement?

 15-1.What should I be aware of when I apply for industrial design registration under the Hague Agreement designating Japan？

When you file an international application designating Japan under the Hague Agreement, there are things you should be aware of pertaining to items to be included in DM1 or items to be input in eHague.

For more details, please refer to I. International application in ”Notes for the Designation of Japan in an International Design Application under the Geneva Act of the Hague Agreement (PDF)”.

In particular, for priority claims and items involving documents of exceptions to lack of novelty, please make sure to refer to ”Notes when submitting documents of exception in regard to lack of novelty, and when submitting priority documents, at the time of filing international design applications”.

 15-2. Can overseas residents conduct procedures directly before the JPO by submitting documents or sending e-mails for their international applications?

As provided under Article 8 of the Patent Act of Japan, if the applicants are neither residents nor domiciled in Japan, they cannot conduct procedures directly before the JPO. In addition, as the designated contracting party, the JPO does not accept any procedures by e-mail. Therefore, you must undertake procedures before the JPO through a representative who is domiciled or a resident in Japan, and the JPO must be notified of the appointed representative.

See FAQ 1-6: "How can I get a list of patent attorneys in Japan?"

In addition to this, there are certain rules for you to follow when conducting procedures before the JPO for international applications under the Hague Agreement.

For more details, please refer to 1. Basic rules of procedures undertaken to the JPO of IV. Others in ”Notes for the Designation of Japan in an International Design Application under the Geneva Act of the Hague Agreement (PDF)”,

 15-3. Are accelerated examinations at the JPO available for international applications designating Japan under the Hague Agreement?

Yes, an application for design registration filed through international application process under the Hague Agreement can be subject to accelerated examination at the JPO.

The requirements to qualify for accelerated examination are almost the same as those applied to a national application filed in Japan.

For more details, please refer to "Operation Concerning Accelerated Examination of International Applications for Design Registration."

 15-4. At the time I filed an international application claiming priority, I did not include the priority certificate nor indicate the Digital Access Service (DAS) access code for my application. Am I allowed to submit the certificate or the DAS code later to the JPO?

You can submit the priority certificate or the DAS access code to the JPO, if it is within three months after the international publication, i.e., your international registration is published in the International Designs Bulletin.

For more details, please refer to 1 of II. National procedures to be done after publication of the international registration in ”Notes for the Designation of Japan in an International Design Application under the Geneva Act of the Hague Agreement (PDF)”

 15-5. What is the "IMPORTANT NOTICE FOR HAGUE USERS"?

The IMPORTANT NOTICE FOR HAGUE USERS is a letter for users of the Hague system, which is sent within several weeks from the date of international publication. With this notice, the JPO notifies the applicants that they need to submit priority certificates.

If you receive this notice and want to make your priority claim effective in Japan, you need to submit the priority certificate or a written amendment to indicate the DAS access code to the JPO within three months from the date when your international registration was published.

 15-6. What is the "FINAL NOTICE"?

The FINAL NOTICE is a notice issued by the JPO to applicants or their representatives in Japan when priority certificates have not been submitted for their international applications making priority claims or priority certificates could not be obtained from DAS within three months from the date of international publication. Those who received this notice can submit priority certificates or written amendments to indicate DAS access codes to the JPO only within two months from the dispatch date of the notice. If the applicants have not conducted required procedures, their priority claims would become invalid in the designated country, i.e., Japan.

 15-7. I received an "IMPORTANT NOTICE FOR HAGUE USERS" or "FINAL NOTICE." What are the reasons for this?

Here are some major possible reasons:

• You did not submit the priority certificate nor indicate the DAS access code at the time of filing an international application.
• Since the information on the priority claim included in your international application did not satisfy the requirements of DAS, the JPO was not able to obtain the priority certificate.
• The priority certificate submitted at the time of filing your international application did not satisfy the formality requirements of the JPO.
• Although the legitimate priority certificate had already been submitted or the JPO had been able to obtain it through DAS, the NOTICE crossed in the mail because of the timing.

If you want to check the reason why the NOTICE was sent, please feel free to contact us at the contact point specified in the NOTICE.

 15-8. I did not make a declaration of exception to lack of novelty at the time of filing. Am I allowed to make such declaration later to the JPO?

You can make a declaration of exception to lack of novelty to the JPO within 30 days from the date when the international registration was published.

When making a declaration to seek exceptions to lack of novelty for international applications, please be sure to submit certificates for exceptions to lack of novelty. The deadline for submitting the certificates is within 30 days from the date when the international registration was published.

For more details, please refer to (5) Declaration of exception to lack of novelty of I. International application and 2 of II. National procedures to be done after publication of the international registration in ”Notes for the Designation of Japan in an International Design Application under the Geneva Act of the Hague Agreement (PDF)”.

 15-9. How can I respond to a "Notification of Refusal" under the Hague Agreement?

Please refer to III. Response to the notification of refusal in ”Notes for the Designation of Japan in an International Design Application under the Geneva Act of the Hague Agreement (PDF)”.

 15-10. What will happen if I don’t respond to a “Notification of Refusal”?

If you do not respond at all to the notification of refusal issued by the JPO, or if you do not resolve the reasons of refusal stated therein, the international application designated to Japan will be refused. In such cases, the JPO will send you a “Decision of Refusal”.

If you receive such document, you may request the JPO for a trial within three months from the date on which “Decision of Refusal” was received.

If you are not domiciled or a resident in Japan and have not appointed a representative, the period mentioned above is within three months from the date on which the Decision of Refusal was dispatched.

In this case, a request for a trial will have to be made through your representative who resides in Japan.

 15-11. In what ways can I get hold of cited documents specified in the ”Notification of Refusal” I received?

• When cited documents are included in the bulletins published by the JPO:
  By using an online database called the Japan Platform for Patent Information or the J-PlatPat, users can view the bulletins published by the JPO for patents, utility models, designs, and trademarks free of charge. Please access “the J-PlatPat”(External link)
• When cited documents are included in information on the Internet:
  Please refer to the URL specified in the Notification of Refusal you received. Some reference materials can be viewed free of charge by using the J-PlatPat stated above.
• When cited documents are included in official bulletins issued by foreign IP offices:
  Users can view such documents free of charge by using design bulletin database of foreign IP offices.

 15-12. To whom notices issued by the JPO are sent?

Destination of documents are as follows:

　　　　

	Notices	From:	Via:	To:
1	IMPORTANT NOTICE FOR HAGUE USERS (Service notice)	Japan Patent Office (JPO)	-	Applicant (Not sent to representative for WIPO International Bureau (IB) nor for JPO)
2	NOTIFICATION OF REFUSAL (First notice of refusal for reasons) STATEMENT OF GRANT OF INDUSTRIAL DESIGNS	JPO	WIPO International Bureau (IB)	Applicant or representative for IB (Not sent to representative for JPO)
3	FINAL NOTICE (Legal notice) NOTIFICATION OF REASONS FOR REFUSAL (Notices after the first) DECISION OF REGISTRATION DECISION OF REFUSAL CERTIFICATION OF DESIGN REGISTRATION	JPO	-	Applicant or representative for JPO (Not sent to representative for IB)

 15-13. When design protection could not be granted in Japan or if I withdrew the designation of Japan for my international application, is there any way to get the paid fees refunded?

For cases that fall under any of the followings, if you request refund within a specified period of time, the amount equivalent to registration fees in Japan out of the individual designation fees at the international application stage can be refunded.

• When the examiner’s decision or trial decision of refusal has become final and binding in Japan
• When international applications were withdrawn in Japan due to a renunciation or limitation (only in case the withdrawal was after the international publication and protection was not granted)

For more details, please refer to 2. Request for refund of the individual designation fee of IV. Others in ”Notes for the Designation of Japan in an International Design Application under the Geneva Act of the Hague Agreement (PDF)”.

 15-14. How is the duration of protection calculated for designs filed in Japan through international application process under the Hague Agreement?

Please refer to 3. Duration of protection for industrial designs of IV. Others in “Notes for the Designation of Japan in an International Design Application under the Geneva Act of the Hague Agreement (PDF)”