2019.10.04

As for a major revision of the Design Act

DESIGN

As for a major revision of the Design Act

 "The Bill to Partially Amend the Patent Act, etc." was passed and enacted on May 10, 2019 and then promulgated on May 17, in which major revisions of the Design Act are included. The design system of Japan to be revised soon is introduced with the information for other revision as follows:
 

1) Introduction of electronic exchange system of priority documents in design 
 Since the Digital Access Service (DAS) is also used in design, it becomes possible to electronically exchange priority documents of the application for design registration under the Paris Convention and the international application for design registration. The electronic exchange is applicable to the application for design registration filed after the execution of the revised law.
 

2) Expansion of protection of screen design
 Although only the image recorded in "an article" and displayed on "an article" can be the subject to be protected under the current Design Act, any image can be protected in spite of whether it is recorded in and displayed on "an article" in this revision.
 Specifically, not only an image stored among the cloud and provided through network but one projected on a wall or a road can be protected.
 

3) Expansion of protection of spatial design
 "Real estate (architecture)" and "a design of interior" with unity of shops, both of which are not the subject to be protected under the current Design Act, can be newly protected under the revised Design Act.
 

4) Review of the related design system
 In the related design system, the registration of the similar design(s) to your own design of which application was filed is granted, and the similarity range of the principal design is clarified and the range of your design right can be expanded.
 Under the current Design Act, the application of the related design must be filed after the filing date of the principal design and prior to issuance of its design bulletin (the period of approximately eight (8) months from the application of the principal design) and also the design which is not similar to the principal design and is similar only to the related design cannot be protected.
 In this revision, however, the possible period of filing the application of the related design is allowed to be within ten (10) years from the application of the principal design and the design which is similar only to a related design can be also allowed to be registered as a related design.
 Therefore, this revision of Design Act allows protecting a design of the product going through a number of model changes over a long period, which has been rejected by your own registered design even though an application of the design had been filed.
 

5) Revision of duration of design right
 The duration of design right shall be changed from "twenty (20) years from the registration date" to "twenty-five (25) years from the date of filing the application". Please also note that the initial date of reckoning the duration is changed.
 

6) Expansion of provision of indirect infringement
 Since the current Design Act stipulates that "the design right shall be infringed by an act of manufacturing and assigning, etc. of any product to be used exclusively for manufacturing an article to the registered design or a design similar thereto as a business" (Article 38), any act avoiding infringement by manufacture, etc. of infringement products divided into constitutive components (which are not dedicated) cannot be regulated.
 This revision of Design Act stipulates the subjective elements such as "to have knowledge that the articles, etc. are to be used to execute the design" so that manufacture and import of non-dedicated constitutive components of a product infringing a design right shall be deemed to infringe the design right.
 

7) Allowing to file an application for plural designs collectively
 Although an application shall be filed for a single design under the current Design Act, it becomes possible to file an application for plural designs after the revision following other foreign countries. Therefore, a classification of articles is to be abolished.
 However, any examination is performed for each design as before and any design right is established for each design. Also, any related fee does not largely change compared to the case of the application filed for each design.
 

Effective dates are as follows:
・The effective date of 1) above is January 1, 2020.
・The effective dates of 2) to 6) above will be within one (1) year from the promulgation date of May 17, which will probably be the next spring.
・The effective date of 7) above will be within two (2) years from the promulgation date of May 17.
 

Should you have any question, please feel free to contact us.

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