Operation of Accelerated Examination System for Design Applications Supporting Anti-Counterfeiting Measures

Design Division
Patent and Design Examination Department

1.Outline

Since April 1st, 2005, the JPO has initiated a new operation of the accelerated examination system for applications for design registration supporting anti-counterfeiting measures. Under this operation, in the case where counterfeit goods using the design in an application for design registration which is pending before the JPO are on the market, the JPO starts design examination of the application immediately; if there is no particular problem in the application procedure, the JPO gives a first notice of examination result within one month from the date of filing a request for accelerated examination.

2.Before requesting accelerated examination

Various requirements must be met in order for an application to be eligible for accelerated examination under this operation. Before requesting accelerated examination, please be sure to contact the person in charge, whose details are provided below.

*Any applicant for the accelerated examination who has neither an address nor domicile in Japan is required to file a request through a representative who has either an address or domicile in Japan (e.g. Japanese patent attorney). In addition, the procedure for accelerated examination is required to be carried out in Japanese.

Contact:
Policy Planning and Research Section,
Design Division, Patent and Design
Examination Department
TEL: 03-3581-1101 (ext.2907)

3.Applications eligible for accelerated examination under this operation

Within applications for design registration eligible for accelerated examination, an application that meets the following requirements is eligible for this operation and the applicant can receive a first notice of examination result within one month from the date of filing a request for accelerated examination.

4.Operational procedure

The operation of accelerated examination system for design applications supporting anti-counterfeiting measures will carried out as follows.

Outline of Operational Procedure

(1) Contact to the JPO

When the JPO receives contact from an applicant/attorney, it confirms whether the application meets various requirements and gives an instruction about the documents, etc. to be prepared as well as the method of procedure. After confirmation is completed, you will need to file a request for accelerated examination online.

(2) Interviews held for explanation of the needs for accelerated examination

To file a request for accelerated examination under this operation, a “Written Explanation of the Needs for Accelerated Examination” is needed to be submitted to the JPO in the same way as regular accelerated examination, but instead of describing detailed statements in the column of the “Explanation of the Needs for Accelerated Examination” of the Written Explanation, and attaching evidences to it, detailed and specific explanations can be given later in interviews, etc.

The JPO will usually complete the selection procedure on whether the application is eligible for accelerated examination under this operation within one week from the date of filing a request for accelerated examination, based on the Written Explanation or what was explained in the interview, etc.

(Note1) Depending on what was explained in the interview, etc., you may be asked to submit a “Supplementary Written Explanation of the Needs for Accelerated Examination.”

(Note 2) The “Written Explanation of the Needs for Accelerated Examination” is available for inspection after the design is registered. As for the written explanation of the needs for accelerated examination, if the applicant needs to reveal trade secrets in order to clarify the circumstances of the design being worked or the urgent need, the applicant may omit the trade secrets in the document by stating that they will be clarified in an interview etc. The detailed information collected in the interview etc. will not be disclosed except the circumstance is applied to the case where it is clear that a third party has, without consent, worked, or considerably advanced the preparation for working, the design in the application or a design similar to the design in the application.

(3) Communication/notice of the selection results

In the regular operation of the accelerated examination system, if an application is determined as being “not eligible” for accelerated examination, a notice of the selection results is given, but not for one “eligible” for accelerated examination. Under this operation, however, whatever the selection result, the JPO will quickly make contact by telephone to communicate it. If the application is determined as being “not eligible” for accelerated examination, a notice of the selection results with the reason will arrive in due course.

(Note) Please make sure that you provide contact details, as the selection results will be communicated to the contact address stated in the Written Explanation.

Points to be Noted

In cases to which the followings apply, it may be impossible to give a first notice of examination result within one month from the date of filing a request for accelerated examination.

(1) In case of flaws in the application procedure

Where there is a flaw in the application procedure, such as insufficiency in the application form/attached drawings or non-payment of an application fee, and consequently, an invitation for amendment is issued, or where proving documents of exception to lack of novelty or priority certificates have not been submitted, it may not be possible to give a first notice of examination result within one month from the date when a request is filed for accelerated examination.

The same applies where there is a flaw in the requesting procedure for accelerated examination.

Also, where there is a defect in the requesting procedure for accelerated examination, since it is impossible to decide on whether the application should be eligible for accelerated examination, the examination cannot be started and therefore it will be impossible to give a first notice of examination result within one month from the date of filing a request for accelerated examination.

(2) In cases other than online request for accelerated examination

In this operation, in order for applicants to quickly prepare a Written Explanation and submit it online, they can briefly describe the column of “Explanation of the Needs for Accelerated Examination,” and thereafter explain more in detail in an interview, etc.

With this operation, the JPO will quickly and accurately specify applications with a request for accelerated examination, promptly carry out the accelerated examination selection procedure, and start examinations. Therefore, if you want to file a request for accelerated examination, expecting a first notice of examination result will be given within one month from the date of filing the request, you need to submit the application and the Written Explanation online.
Even in the case where the application or the Written Explanation is submitted on paper, the JPO will make every effort to process it and to give a first notice of examination result as soon as possible.

5.How to describe in the “Written Explanation of the Needs for Accelerated Examination”

Contents to be described in the “Written Explanation of the Needs for Accelerated Examination” are basically the same as for the regular accelerated examination.

Please refer to the “Guidelines for Accelerated Examination and Accelerated Appeal Examination for Applications for Design Registration” (Japanese version only) (PDF: 399KB)

Also, if you want to explain more in detail in an interview, please state your wish for an interview in the column of “Explanation of the Needs for Accelerated Examination.”

[Last updated 27 February 2023]