The grace period (Exception to lack of novelty of design)
What is the grace period?
If an application will be filed for a design which was already publicly disclosed, the application will be rejected for reason of lack of novelty.
However, if the application is filed during the so called grace period, the design is regarded as having maintained novelty even though it was already disclosed. Thus, the grace period allows registration of a design that was already available to the public before the application was filed. The grace period is 12 months from the date of the 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 12 months from the date of the first disclosure along with a request for exceptions to be made regarding the lack of novelty (Grace Period).
Once the design is available to the public, the application must be filed with the Japan Patent Office within 12 months from the date of the first disclosure.
Note: Even if the application claims a priority in accordance with the Paris Convention, the grace period remains the same, 12 months from the date of the first disclosure.
The application must be filed together 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. Disclosures must be made by the designer or his successor in title
The prior disclosures of the design must be made by the person entitled to obtain the design or his successor. Therefore, the grace period does not apply to disclosures by third parties.
3. Disclosures shall not be in an official gazette
When launching the product onto the market, virtually any manner of disclosures are acceptable, 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. Disclosures, contrary to the wishes
Under Article 4(1) of the Japan Design Act, in the case where a design is available to the public, contrary to the wishes of the designer or his successor in title, such design can be registered on condition that the requirements for the exception to lack of novelty are satisfied.
5. A declaration with evidence must be submitted to clarify how and when the prior disclosures took place
Within 30 days from the filing date, a declaration with evidence showing how and when the prior disclosures took place has to be filed. Copies of magazine article, newspaper article, webpages, etc. are usually accepted as the evidence. If the disclosure was on an exhibition, a certificate of the fair management may be required.
