Exceptions to Lack of Novelty of Design and "Proving Document"

1. Outline of the Provision of Exceptions to Lack of Novelty of Design

Under the Japanese design registration system, a design registration shall not be granted for designs which have been published prior to the filing of a design registration application, in principle. However, strict application of this principle to all cases could bear an unfavorable result. Moreover, it could be said that such practice does not serve the purpose of the Design Act, which is to contribute to the development of the industry.

Given this fact, Exceptions to Lack of Novelty of Design is stipulated in the Design Act Article 4 which treats a design as one that does not lose novelty due to a previous publication, if the design has been published under specific conditions and a design registration application has been filed within 12 months from the date of publication.

* Matters to be taken into consideration

It should be noted that Article 4 is an exception to the principle where a design registration shall not be granted to designs disclosed prior to the filing of a design registration application. Even in cases where your application is covered by Article 4, if, for example, a third party had filed a design registration application for the same or similar design or had published such design prior to the filing date of your design registration application, then you can't obtain a design registration for your design. Therefore it is strongly recommended that the design registration application should be filed as early as possible.

At the same time, if you have plans to file an application overseas, it is also necessary to give considerations to the exceptions to lack of novelty in each country.

2. Procedural requirements to seek the application of Article 4

An applicant for a design registration who is seeking the application of Paragraph (2) is required to take the following three procedures as listed in (a) to (c).

(a) To file a design registration application for the design made public as a result of an act of the right holder(s) within one year from the date of publication (Paragraph (2)).
(b) To submit a document stating to the effect that the applicant is seeking the application of Article 4, at the time of filing of the design registration application (Paragraph (3)).*¹
(c) To submit a document proving the fact that the design meets the requirements for the application of Article 4, within 30 days from the date of filing of the design registration application (Paragraph (3)). *² *³

*¹ In the case of international application filed for the Geneva act of the Hague Agreement concerning the international registration of industrial designs, an applicant can make a statement either by putting check marks on the item 15 in the from DM/1 (equivalent to "Declaration Concerning Exception to Lack of Novelty" in eHague), or by submitting this document to the Japan Patent Office within 30 days from the date of international publication.
*² In the case of international application filed for the Geneva act of the Hague Agreement concerning the international registration of industrial designs by September 30, 2021, an applicant has to submit this document to the Japan Patent Office within 30 days from the date of international publication.
*³ In the case of international application filed for the Geneva act of the Hague Agreement concerning the international registration of industrial designs on or after October 1, 2021, an applicant may attach this document to DM/1 or submit the document alone to the Japan Patent Office within 30 days from the date of international publication.

3. Outline of the "Proving Document" provided for in Article 4, Paragraph (3)

Since there is no prescribed contents or forms for the "Proving Document" legally required by Article 4, Paragraph (3) of Design Act, certificates to be submitted may contain various contents or forms. However, In order to be granted Exception of Lack of Novelty, "Proving Document" must prove the following:

- A design registration application has been filed for the design within one year from the date on which the design was published. (Fact of Publication, See3.1)
- The design was published as a result of an act of the right holder(s), and the right holder(s) filed the design registration application. (Facts of Succession to the Right to Obtain a Patent, etc., See 3.2)

If the "Proving Document" is found insufficient in proving that the design published before the design registration application is a design to which Article 4, Paragraph (2) of the Design Act is applicable, there is a possibility that the application of Paragraph (2) shall be denied and a notification of reasons for refusal or an invalidation trial decision denying the novelty or creative difficulty of the design pertaining to the design registration application based on such published design shall be made. Nevertheless, in such case, the applicant may submit supplementary materials, such as objective evidentiary material or a certificate by a third party, to attest the truth of the matters stated in the certificate previously prepared and submitted by him/her through a written opinion or written report, even after 30 days have passed from the filing date of the design registration application.

3.1 Statement for the "Facts of Publication"

In order to prove that a design registration application has been filed within one year from the date on which the design was published, it is recommended to make statements on the following items:

(i) Date of publication
(ii) Place of publication
(iii) Name(s) of the person(s) who published the design
(iv) Contents of the design published (attach the photograph(s) or image(s) to specify the subject to be proved)

3.2 Statement for the "Facts of Succession to the Right to Obtain a Patent, etc."

In order to prove that the design was published as a result of an act of the right holder(s), and the right holder(s) filed the design registration application, it is recommended to make statements on the following items:

(i) Creator(s) of the design published;
(ii) Person(s) having the right to obtain a design registration at the time of the act causing the publication of the design (Right holder(s) at the time of the act);
(iii) Applicant(s) for a design registration (the person(s) stated in the application);
(iv) Person(s) who published the design (the person(s) is the same as the one in 3.1 (iii) above);
(v) Succession to the right to obtain a design registration;
(The fact that the right has been transferred to the person stated in item (iii) from the person stated in item (i) via the person stated in item (ii), etc.)
(vi) Relationship between the right holder(s) at the time of the act and the person(s) who published the design (State that the person(s) who published the design in (iv) made the publication of the design as a result of the act of the right holder(s) at the time of the act in (ii)).

4. Example Collections

The following is an example of description according to the typical situation of publishing a design.

[Last updated 9 November 2021]

Design Examination Standards Office

Japan Patent Office

E-mail: PA1D00@jpo.go.jp

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