Determining Whether the Designs are the Same
The Japan Patent Office (JPO) is planning to revise the items related to priority claims under the Paris Convention in the Examination Guidelines for designs. The JPO published the draft revision for Design Examination Guidelines and invited public comment last month.
When the JPO receives a design application claiming priority under the Paris Convention, the JPO will examine, depending on circumstances, whether the application is qualified to claim the priority. Because there are differences in the design registration systems of various countries, it can be difficult to determine whether or not the design in the first application and the design in the subsequent application filed before the JPO are the same. The purpose of the revision is to compile a list of specific cases described in detail that further clarify the Design Examination Standards.
The basic criteria for determining whether the two designs are the same are as follows:
(1) If the design described in the first application is substantially the same as the design described in the subsequent design application filled before the JPO, the design application should be considered to be qualified to claim the priority right, regardless of drawing method used to present the design.
(2) To determining whether the design described in the first application and the design described in the subsequent application filed before the JPO are the same, it is necessary to make a comprehensive evaluation, including a thorough inspection and verification of the priority certificate, based on the knowledge that a person skilled in the art would have normally acquired.
(3) In identifying the design described in the Priority Certificate, the JPO should take into account any differences between the Acts/regulations in Japan and those of the country in which the application for the design was first filed.
Various examples are discussed based on the above criteria (1)-(3) in the draft revision and we would like to review two of those examples here. The first example is in regard to an article to which the design is applied.
The title of an article is indicated as “Bottle” in the Priority Certificate and the configuration of a PET bottle is shown in the drawings. However, the title of the article in the Japanese design application is “Bottle for Packaging.” In this case, the Guidelines state that the article in the first application and that in the subsequent application should be regarded as being the same.
The second example is in regard to a partial design for a flip mobile phone. The drawings attached to the Priority Certificate shows the configuration of the article when it is closed but do not show the configuration of inner part of the article when it is open. The Japanese application is a partial design application which shows the configuration of the article when it is open in dotted lines and the configuration of the article when it is closed in solid lines. In this case, the first application is considered to be a partial design application directed to the configuration of the article in the closed state, and, thus, the designs are considered to be the same.
As design intellectual property law specialists, we often find it difficult to determine whether a priority claim under the Paris Convention will be allowed. We hope that the revisions will make it easier to determine whether the designs in the priority application and the Japanese application are the same. Please note that even after the revisions are in force, allowability of the priority claim will still depend on the specific facts in each case. If you have any questions concerning a certain case, we recommend that you seek expert advice.