1. 1.Recent revision

 Article 4 of the revised Design Act shall come into effect on June 9, 2018. The grace period of the exceptional provision for loss of novelty of a design shall be extended from six months to one year in accordance with this revision.

 This provision shall come into effect as from June 9, 2018 and shall be applied to any application filed on or after the same day; however, please note that Article 4 of the revised Design Act shall not be applied to any design disclosed by December 8, 2017 even if such design is filed on or after the same day.

 Since the major countries such as the United States, Europe and Korea have one year grace period, it can be said that this revision makes Japan equal to such countries in the grace period, provided, however, that the effective period is reckoned not from a priority date but from the date of filing an application in Japan or the date of an international application.

2. 2.Notes for being subject to the exceptional provision for loss of novelty in Japan

 The following procedures must be taken to be subject to the exceptional provision for loss of novelty in Japan while no procedures are required in the United States, Europe, etc.

 (1) Upon filing an application, to specify a request for being subject to said provision in the request form (in case of an international application, a request for being subject to said provision shall be specified in the request form [DM1] to be submitted to WIPO or "a written request for the exceptional provision for loss of novelty" shall be submitted to Japan Patent Office within 30 days from the date of international publication).

 (2) To submit a document for proving that a design is applicable to said provision within 30 days from the date of filing an application (in case of an international application, within 30 days from the date of international publication).

 Especially, attention shall be paid to draft the written proof described in (2) above, because all of the facts of any disclosure by means of submission of products, distribution of catalog, business negotiation, exhibition and homepage and any disclosure attributable to applicant's behavior are generally required to be specified therein.

3. 3.Introduction of a judicial precedent regarding the written proof of the exceptional provision for loss of novelty

(The decision of July 19, 2018, the year of 2017 (administrative litigation case, the first instance) No. 10234)

<Outline leading to the trial decision>

 The plaintiff is the owner of a registered design No. 1537464 (Subject Registered Design) classifying "coat" as the name of an article, and the application of the Subject Registered Design was filed on January 30, 2015 with a request for being subject to the exceptional provision for loss of novelty (Article 4(2) of the Design Act) and registered on October 9, 2015.

 A basic form of "coat" in the Subject Registered Design comprises of a main body, a hood part and sleeve parts, and fur is attached to both ends of the sleeve parts and a peripheral edge of the hood opening. It is disclosed from pictures and a description of explanation of the article except for the basic form that the fur attaching to the hood part and the sleeve parts are removable, and the fur of both sleeve parts can be connected and attached to a neck part, and also brooches can appropriately be attached to the main body (See figures below).

 The plaintiff has requested for being subject to the exceptional provision for loss of novelty since the plaintiff's own coat was listed on the website on August 1, 2014 for its sale. The coat listed on the website shall be hereinafter referred to as the disclosed design. Although the pictures disclosed as the disclosed design show various styles of the coat as indicated in figures below, there is no pictures showing the same forms as the basic form of the Subject Registered Design and no description of the form attaching the fur to the peripheral edge of hood opening is disclosed in the explanation of the article.

 Although the plaintiff listed a limited version of the coat (Cited Design) on the website for its sale on November 29, 2014, the fact of this behavior was not specified in the written proof for the exceptional provision for loss of novelty. The Cited Design has the same form as the basic form of the Subject Registered Design listed in the picture (left end of the figures below) with the wordings of "… the limited point, … attached the fur to the sleeves and the hood."

 Based on the Cited Design, the defendant (a person who files a request for a trial for patent invalidation) filed a request for a trial for patent invalidation due to the lack of novelty and creative difficulty in the Subject Registered Design. Meanwhile, the Patent Office made a trial decision (Subject Trial Decision) to invalidate this design registration on November 21, 2017.

<Outline of this trail>

 The plaintiff filed a lawsuit seeking cancellation of the trial decision since the Cited Design should be allowed to apply the exceptional provision for loss of novelty on the ground that it is substantially the same design as the disclosed design (the design applicable to the exceptional provision).

 However, the court made the decision that:

 "In order to be subject to said application, it is a prerequisite that the Cited Design is also specified in the written proof, and it is difficult to understand that the Cited Design is substantially the same as the disclosed design since the publication page of the disclosed design specified therein does not mention that the fur is attached to the hood and the fur of the hood can be detached.

 On the contrary, it is also described that the Cited Design is the limited version of the disclosed design and characterized by the fur attached to the edge of the hood opening in the page listing the Cited Design. Even though the hood with the fur is a common form, it is obvious that the real impression of consumers received from the design is different depending on whether the fur is attached or not.

 Accordingly, it is reasonable to consider that the difference as to whether the fur is attached to the hood or not is substantial. Since it cannot be said that the written proof regarding the Cited Design has been submitted, there is no error in this trail decision with no room to be subject to this exceptional provision."

4. 4.Conclusion

 It is concerned that the number of times to disclose the design related to the application increases due to the grace period of exceptional provision for loss of novelty extending from six months to one year. Therefore, in order to prevent your own design from being rejected or invalidated as explained in the judicial precedent above, it is required that the information on the fact of disclosure and the disclosed design should be properly managed and taken much care of avoiding any omission in the written proof. However, the provision is only an "exceptional" one enabling you to be exempted from rejection based on the design disclosed by yourself so that the date of filing the application is not retroactive to the date of publishing the design. Hence, in spite of this exceptional provision, it is recommendable to file an application as soon as possible.

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