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Home> Systems/Procedures> Laws and Policies> Laws and Guidelines> Other Information> Designs> Procedures for Seeking the Application of Exceptions to Lack of Novelty of Design, corresponding to the Design Act Article 4

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Procedures for Seeking the Application of Exceptions to Lack of Novelty of Design, corresponding to the Design Act Article 4

April 30, 2020
Japan Patent Office

NEW Handling of Procedures Affected by COVID-19 Pandemic (updated April, 2020)

The JPO has been asking applicants to submit an original certificate (the document proving that the requirements for seeking application of Exceptions to Lack of Novelty of Design are satisfied) with Affixation of Name with Seal or Signature by responsible person , which must be submitted within 30 days from the filing date*. (For details of the required certificate, see the 2.Procedures for Seeking the Application of Exceptions to Lack of Novelty of Design)

  • * In case that international application which designates Japan under the “The 1999 Act of the Hague Agreement Concerning the International Registration of Industrial Designs”, within 30 days from the International Publication date.

However, in response to COVID-19 Pandemic, the JPO will provide the following measures to help applicants having trouble submitting the certificate with Affixation of Name with Seal or Signature.

  • If you are having the above-mentioned COVID-19 related trouble, please submit the certificate without Affixation of Name with Seal or Signature within 30 days from the filing date.
    • * In case that international application which designates Japan under the “The 1999 Act of the Hague Agreement Concerning the International Registration of Industrial Designs”, within 30 days from the International Publication date.
  • In this case, please declare the following statements for the section of the form where Affixation of Name with Seal or Signature is:
    • - Affixation of Name with Seal or Signature is not currently available due to COVID-19 pandemic.
    • - The certificate with Affixation of Name with Seal or Signature will be submitted as soon as it is ready.
  • Please submit the certificate with Affixation of Name with Seal or Signature (not a copy) to the JPO as soon as it is ready through a Written Report.
    Note: If it is not submitted, Exceptions to Lack of Novelty of Design may not be applied.

Further, if Applicants or Representatives are not able to submit the certificate within 30 days from the filing date due to COVID-19 Pandemic, the relief measures under Article 4 (4) of the Design Act are also available. The relief measures can be applied to applicants who are having trouble creating the certificate itself, in addition to the condition that the applicants are not able to submit the certificate with Affixation of Name with Seal or Signature.

For details on the relief measures under Article 4 (4) of the Design Act, see the Handling of Procedures Affected by COVID-19 Coronavirus (1.(1)).

1. Purpose of Exceptions to Lack of Novelty of Design (the Design Act Article 4)

In 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. It may be too severe to applicants to apply this principle to all cases and never grant a design registration to the designs that have been published by the applicants through exhibitions conference, presentation, or the like prior to filing. Moreover, such practice does not match 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 treat 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 one year from the publication date.

2. Procedures for Seeking the Application of Exceptions to Lack of Novelty of Design

For seeking the application of Exceptions to Lack of Novelty of Design, an applicant should submit:

  • (1) the document stating that the applicant is seeking application of Exceptions to Lack of Novelty of Design, at the time of filing(*1); and
  • (2) the document proving that the requirements for seeking application of Exceptions to Lack of Novelty of Design are satisfied, within 30 days from the date of filing(*2).
  • *1 In case that international application which designates Japan under the “The 1999 Act of the Hague Agreement Concerning the International Registration of Industrial Designs”, at the time of filing or within 30 days from the International Publication date.
  • *2 In case that international application which designates Japan under the “The 1999 Act of the Hague Agreement Concerning the International Registration of Industrial Designs”, within 30 days from the International Publication date.

The time period when Exceptions to lack of Novelty of Design may be applied was expanded to one year from 6 months due to the revision of the Design Act Article4 in 2018.

In principle, a design registration application whose filing date is on or after June 9, 2018 is subject to the Design Act Article 4 revised in 2018. However, a design registration application for a design that was published on or before December 8, 2017 is not subject to the application of Design Act Article 4 revised in 2018.

3. Matters to be taken into consideration

  • It should be noted that the Design Act Article 4 is an exception to the principle where a design registration shall not be granted to the designs disclosed prior to the filing of a design registration application. Even in cases where your application is covered by the Article 4, if, for example, a third party had filed a design registration application for the identical 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.
  • If you are planning to file at foreign office(s), you have to give an attention to Exceptions to Lack of Novelty of Design at the office(s). In some cases, you can't obtain a design registration for your design due to domestic laws/regulations at the office(s) if you publish the design by yourself before application.
  • If you are planning to seek for the application of Exceptions to Lack of Novelty of Invention for two or more published designs, you have to take the procedure for seeking the application of Exceptions to Lack of Novelty of Design for each of the published designs.

[Last updated 30 April 2020]

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Design Examination Standards Office,
Design Division,
Japan Patent Office

E-mail:PA1D00@jpo.go.jp

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