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

November 29, 2023
Japan Patent Office

In order to seek for the application of Exception to Lack of Novelty of Design under the Design Act Article 4(2), a document must be submitted at the time of filing of the application for design registration, a document stating that the person is seeking the application and, within 30 days from the filing date to prove the fact that the “disclosed design” is a design to which the provision of Article 4(2) may be applicable (in this article, hereinafter, referred to as a “proving document”).

NEW  Revision of Procedures for Seeking the Application of Exceptions to Lack of Novelty of Design under Amended Design Act of 2023（updated November, 2023）

The revised law promulgated on June 14, 2023 relaxed the procedures to apply the exception to lack of novelty of design. For applications filed on or after January 1, 2024, the exception to lack of novelty applies not only to the design shown in a proving document, but also to any identical or similar designs subsequently published through an act of the person entitled to obtain a design registration or his/her successor in title. In other words, even in the case of numerous public disclosures of the identical or similar design, it is sufficient to include in a proving document any of the public disclosures on the first date.

Revision of Procedures for Seeking the Application of Exceptions to Lack of Novelty of Design under Amended Design Act of 2021（updated October, 2021）

Pursuant to Article 60-7(2) of the revised Design Act, applicants who designates Japan in an international application under the “Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs” may submit proving documents proving the fact that the design meets the requirements for exception to lack of novelty with ANNEX II at the same time international applications are filed. This will be applicable to applications filed on or after October 1, 2021. For details, please see “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”.

Abolishing Affixation of Seal and Signature in the proving document（updated December, 2020）

In order to seek for the application of Exception to Lack of Novelty of Design under the Design Act Article 4(2), a document must be submitted within 30 days from the filing date to prove the fact that the “disclosed design” is a design to which the provision of Article 4(2) may be applicable (in this article, hereinafter, referred to as “proving document”). For the proving document, Affixation of Name and Seal or Signature by all applicants has been required so far.

However, based on the decision to carry out a review about the procedure of the required Affixation of Seal in the “implementation plan for regulatory reform” (Cabinet Decision, 17 July, 2020) and the discussion to aim to improve user convenience by digitizing application procedures (Promoting Paperless and Abolishing Affixation of Seal) at the 13th meeting of the Intellectual Property Committee of the Industrial Structure Council, Abolishing Affixation of Seal and Signature for the proving document has been decided.

On the other hand, while Affixation of Name, which can be carried out either by handwriting or typing, continues to be required, it is sufficient if at least one applicant’s name (among all applicants’) is included. 

This new procedure shall be also applied to the proving document to be submitted from now on, even to the ones to be submitted for the design applications that have already been filed. That is, Affixation of Seal and Signature to the proving document thereof is no longer necessary and Affixation of Name for the proving document thereof is to be completed by including at least one of the applicants’ names.

As for “Handling of Procedures Affected by COVID-19”, if you have already submitted the proving document with Affixation of Name but without Affixation of Seal or Signature because it was impossible to affix the Seal or Signature within the designated time limits, no further action would be necessary.

In regard to relief measures due to the adverse effects of the COVID-19, the relief measures under the Design Act Article 4 (4) are available for applicants who are even unable to prepare the proving document itself within the designated time limits. For further details, 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.

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 29 November 2023]

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