About the Design System in Japan – 3
The Grace Period and lack of novelty in Japan
What is the grace period?
If an application will be filed for a design which is already publicly disclosed, the application will be rejected for reason of lack of novelty.
However, if the application is filed during the “grace period”, the design is regarded as having maintained novelty even though it was already disclosed. This grace period allows registration of a design that was already available to the public before the application was filed. The grace period is six months from the date of first disclosure.
In order to take advantage of the grace period, the following requirements have to be satisfied:
1.The application must be filed within six months from the date of first disclosure along with a request for an exception to be made concerning the lack of novelty (grace period).
Once the design is available to the public, the application must be filed with the Japanese Patent Office within six months from the date of the first disclosure.
If the application is filed in Japan with a priority claim according to the Paris Convention, the grace period remains the same, i.e. six months from the date of the first disclosure.
Further, the application must be filed along with the request for exceptions to be made regarding lack of novelty (grace period). The request cannot be made after the application has been filed.
2. First disclosure must be conducted by the designer or his successor in title
The disclosure of the design must be conducted by the person entitled to obtain the design or his successor. Therefore, the grace period does not apply to disclosures conducted by third parties.
3.First disclosure shall not be in an official gazette
When launching the product onto the market, virtually any manner of disclosure is acceptable as the first disclosure, e.g. press announcement, test marketing, etc. However, publication in an official gazette of a design (patent) registration is not permitted for the grace period.
4. Evidence must be submitted to clarify how and when the first disclosure took place
Within 30 days of the filing date in Japan, a written statement along with evidence showing how and when the first disclosure took place have to be filed. Copies of the magazine article, newspaper article, Webpages, etc., are usually accepted as evidence. If the first disclosure was in an exhibition, a certificate from the event management may be required.
Disclosure of several designs
To take advantage of the grace period, evidence must filed for each disclosed design. For example, if a new red car is disclosed at a press conference and the next day the same car will be disclosed in blue on a website, it is necessary to file evidence not only for the red car, but also for the blue car. Failure of filing evidence for the blue car will lead to the rejection of the application because the design has already been publicly known, even if appropriate evidence has been filed to take advantage of the grace period for the red car.
However, if the second disclosed design is identical with the first one (identical shape and color), it is not necessary to file evidence for the subsequent disclosure. If it is not identical (identical shape but different color, or identical color but with modified design, etc.), evidence for all disclosed designs have to be filed.