What is a Secret Design?
The design registration procedure starts with the examination of the respective application for registration in order to ensure that all requirements are being met. After successful examination, a Notice of Grant will be issued, followed by payment of the registration fee, which will finally lead to registration of the respective design. Soon after registration, the design will be published in the Design Bulletin. The respective publication is usually taking place already in 1 to 3 months after registration of the design.
The Secret Design, however, allows to extend this relatively short time period between registration and publication of the Design Bulletin. Applying for a Secret Design System, deferment 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 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 remain secret.
How can we apply for a Secret Design?
Deferment of the publication in the Design Bulletin can already be requested when filing an application. The time period of deferment needs to be stated in the application request itself.
As stated above, the registration fee generally needs to be paid after receipt of the Notice of Grant. At this point, there is a second opportunity to request deferment of the publication. In this case, the desired time period of deferment needs to be stated in the payment notice for the registration fee.
In both opportunities described above, it is required to pay an additional official fee for deferment of the publication.
How long can we keep the registered design remain secret?
A design can be kept remain secret up to three years starting from the date of registration (not from the filing date). Within this period, it is possible at any time to change the deferment period.
What will be happen if we apply for a Secret Design?
When the design is registered, the Japan Patent Office (JPO) will issue only a formality bulletin (without the name of designer, indication of products and pictures/drawings):
When the time period of deferment expires, the JPO will issue a substantive bulletin with the pictures/drawings and other information:
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 Japan Patent Office.