1. A design may still be registered after becoming publicly known!
A design must have a novelty to be registered. Under some circumstances, however, applicants need to make a design publicly known before filing the design application. In such cases, the applicant can obtain an Exception to Lack of Novelty of Design (Section 4(2) of the Design Law) by filing the necessary documents to preserve the novelty of the design.
Under the Japanese Design Law, the applicant can obtain an Exception to lack of novelty if the applicant made the design publicly known in exhibitions; presentations in academic conventions; distributions, advertisements, presentations to the media and presentations to a third person.
If the design application is already filed in another country, the applicant can claim a priority in the Japanese application. In that case, an Exception to Lack of Novelty is unnecessary.
2. Specific procedures and required information
To obtain an Exception to Lack of Novelty, the applicant must file the application for a design within six months from the day the design became publicly known. The applicant is required to notify the JPO that the design lacks novelty at the time of filing the application and submit documents which prove that the design became publicly known within 30 days from the filing date.
If you plan to file an application for a design which became publicly known through your own actions, we would appreciate it if you would provide us with the following information:
- The fact that the novelty is lost
- How the design became publicly known
- Whether you can provide documents that will prove that the design became publicly known.
The deadline for the documents was originally within 14 days from the filing date but the revision of the design law which came into force in 2006 extended the deadline to within 30 days from the filing date. The extended deadline is especially beneficial for applicants filing applications from foreign countries, who need more time to prepare the documents.
3. Note
An Exception to lack of novelty can only provide recognition that the application has not lost the novelty and will not provide any advantages over earlier or later applications. As it may take some time to prove that the applicant made the design publicly known, we normally suggest that the application be filed before making the design publicly known.
It should also be noted that whileEuropeand theUnited Statesprovide a one-year grace period after the design became publicly known,Japanprovides only six months.
