Operation Concerning Accelerated Examination of International Applications for Design Registration

Design Division
Patent and Design Examination Department

1. Outline

The Geneva Act of the Hague Agreement entered into force on May 13, 2015, from which Japan can be designated in an international application.

An international application deemed to be an application for design registration filed with the JPO (hereinafter referred to as “international application for design registration”) can be subject to accelerated examination under almost the same condition as applied to a national application.
However, please note that there are some differences in when and how an applicant may file a request for accelerated examination, and how an applicant should write the column of “Explanation of the Needs for Accelerated Examination,” compared with the regular request procedure for a national application.

It takes more time to send a first notice of examination result for international applications than for national applications, since it is sent to the applicant, etc. through the International Bureau of the WIPO. Yet, the JPO will make every effort to process it and send a first notice of examination result as quickly as possible.

Please note that a request for accelerated examination concerning an international application for design registration cannot be filed online. Only if a request for accelerated examination is filed online, the application can be subject to the “Operation of Accelerated Examination System for Design Applications Supporting Anti-Counterfeiting Measures,” which aims to give a first notice of examination result within one month from the date of filing a request for accelerated examination. Therefore, an international application for design registration is not covered by the above operation. However, the JPO will make every effort to process it and to give a first notice of examination result as soon as possible.

2. Points to be noted when requesting for accelerated examination

• (1) Since an international application designating Japan is deemed as an application for design registration filed with the JPO (international application for design registration) upon international registration and international publication (Design Act 60-6 (1)), an applicant, etc. may request for accelerated examination concerning an international application for design registration (a submission of a “Written Explanation of the Needs for Accelerated Examination”) on and after international publication.
  
  
• (2) Where the applicant of the international application for design registration is an overseas resident, having an address nor domicile in Japan, he/she may not file a request for accelerated examination directly with the JPO just as a national application, but may file it through a representative domiciled or resident in Japan (“design administrator”) .
  
  
• (3) An applicant cannot file a request online for accelerated examination concerning an international application for design registration, and therefore, they need to file it on paper.
  
  
• (4) A document for a request for accelerated examination concerning an international application for design registration (“Written Explanation of the Needs for Accelerated Examination“, etc.) needs to be prepared and filed per design.

3. Points to be noted on how to describe the “Written Explanation of the Needs for Accelerated Examination”, etc

• (1) The“Written Explanation of the Needs for Accelerated Examination” and the “Supplementary Written Explanation of the Needs for Accelerated Examination” should be written in Japanese.
  
  
• (2) Following the column of “Domicile or Residence,” please insert the column of “Domicile or Residence in Original Language”; following the column of “Name,” please insert the column of “Name in Original Language.” These should be written exactly as in the International Register.
  
  
• (3) In principle, an applicant who filed an international application for design registration is not informed of the application number (given by the JPO) before a first notice of examination result is issued. For this reason, instead of the application number, you need to write the “international registration number” and the “number of the design”. Yet, in cases where you know the application number, you only need to simply write the application number as you do in a national application without writing the “international registration number” and the “number of the design.”
  
  
• (4)Any ID number (given by the JPO) may not be written in the form of the “Written Explanation of the Needs for Accelerated Examination”.
  
  
• (5) An international application for design registration designating Japan and other states/intergovernmental organizations is eligible for accelerated examination as “internationally-related application”. In such a case, since a “copy of the publication,” etc. that the JPO receives contains the information about all designated Contracting Parties in the international application, the applicant may omit to submit the documents showing the fact that the applicant filed an application with foreign IP offices other than the JPO, and also omit to describe “names of foreign IP offices”, “filing date” and “application numbers.”

* “Internationally-filed application”: an application for design registration that have been filed with both the JPO and foreign IP offices other than the JPO.

* Please note that an international application for design registration based on an international application designating Japan alone is not treated as “internationally-filed application.”

4. Example of “Written Explanation of the Needs for Accelerated Examination”

The “Written Explanation of the Needs for Accelerated Examination” for an international application for design registration can be prepared almost in the same way as a national application with some exceptions. In detail, please refer to this page (Japanese version only) .

[Last updated 6 July 2015]

Contact

Policy Planning and Research Section, Design Division, Patent and Design Examination Department TEL: +81-3-3581-1101 ex.2907 E-mail:PA1530@jpo.go.jp