About the Design System in Japan – 4
The “Secret Design System” in Japan
What is a Secret Design?
The design registration process starts with the examination of the respective application for registration in order to ensure that all requirements are being met. After successful examination, a Decision of Registration will be issued, followed by payment of the registration fee, which will finally lead to registration of the respective design. At the same time, the Design Bulletin will be published. The respective publication of the above-mentioned Design Bulletin is usually already taking place within 6 to 10 months after the registration of the design.
The Secret Design however allows us to extend this relatively short time period between Registration and Publication of the Design Bulletin. In applying for a Secret Design System, the postponement of the publication can be made for up to three years starting from the date of registration.
How effective is the Secret Design?
Applying for a Secret Design enables you to keep the registered design secret even after its registration. You might not want your new designs to be publicly known before the respective products are being launched on the market.
Japan adapts the so-called “First-to-File-System”, which makes earlier filing preferable. However, earlier filing may lead to an earlier than expected exposure of the design bulletin.
In such case, applying for a Secret Design is an effective way to keep the registered design secret.
How can we apply for a Secret Design?
Postponement of the publication of the Design Bulletin can already be requested while filing applications. The time period of postponement needs to be stated in the application itself.
As stated above, the registration fee generally needs to be paid after receipt of the Decision of Registration. At this point, there is a second chance to request postponement of the publication. In this case, the desired time period of postponement needs to be stated in the payment notice for the registration fee.
How long can we keep the registered design secret?
A design can remain secret for up to three years starting from the date of registration (not the filing date). Within this period it is possible at any time to change its expiration date.
What will happen if we apply for a Secret Design?
When the design is registered, the Japanese Patent Office (JPO) will issue only a formality bulletin (without pictures / drawings):
When the time period of postponement expires, the JPO will issue a substantive bulletin with pictures / drawings:
Does a Secret Design have any disadvantages?
The owner of a design right with a Secret Design status can make a demand for injunction towards a third party only after giving written warning. This warning needs to include documents stating the substantive matters such as pictures / drawings of the registered design certified by the Commissioner of the Patent Office.