JPO Revised Design Law Enforcement Regulations

JPO Revised Design Law Enforcement Regulations

On March 31, 2021, the Japan Patent Office (JPO) announced issuance of the Ministerial Ordinance, which relates to a partial, but significant revision to the Enforcement Regulations of Design Law and other related administrative regulations.

The outline of the revisions is as follows:

1. Introduction of a multiple design application system

• A single application can contain up to 100 designs, regardless of the Locarno Class and without any special conditions.

• Information concerning the Applicant, Agent, Claim of Priority, Request for Secret Design, Application for Exception to Loss of Novelty, etc. may be provided in the application request form to cover all of the designs in the application. On the other hand, information concerning creators, descriptions and the article relating to the claimed design may be provided per design.

• Once a multiple-design application is filed, the JPO notifies the applicant of a “Docketing Number” assigned to the application. Then, after the application passes the formality examination, the JPO notifies the applicant of a filing number assigned to each design.

• The substantive examination is conducted per design, and a Notice of Reasons for Rejection or a Notice of Allowance is also issued per design. A registration fee is required per design, too.

• The JPO official fee for a multiple design application is JPY16,000 per design. There is no discount for the second and subsequent designs contained.

2. Acceptance of More Comprehensive Name of Article

A more comprehensive name may be used to specify an article to which a claimed design is applied, so long as the intended use and/or the function is/are clearly understandable from the description provided in the application request form or the drawings showing the claimed design. 

For example, if the term “Dishware” is used as the name of article to which the claimed design is applied, the application request form should contain such a description as “The article to which the claimed design is applied is a dish used as a tableware”.   

3. Expansion of Remedial Procedures

• Extension of the deadline set by an Examiner

1. The deadline set by an Examiner, for example, the deadline for filing a response to a Notice of Reason for Rejection may be extended by up to two months at the applicant’s request. Under the old practice, an extension is allowed only for one month.

1. In addition, the deadline set by an Examiner may be extended for two months, even after the initial deadline has passed, provided that the applicant files a request for extension within two months from the initial deadline.

• Acceptance of a priority claim after priority period expires

The applicant can file a design application with a claim of priority within two months after the six-month priority period from the filing date of the first application has passed, so long as there is a legitimate reason for not filing the application with the JPO within the priority period.

4. Late-filing of Priority Document / DAS code

In the case where a priority document or a DAS code is not submitted to the JPO within three months from the filing date of the relevant design application, the JPO will issue a notification and allow the applicant to submit a priority document or a DAS code within two months from the date of the notification.

5. Transition Period

The multiple design application system (Para. 1) and the acceptance of more comprehensive name of article (Para. 2) are applicable to applications filed on or after April 1, 2021.

The expanded remedial procedures (Para. 3) and the late-filing of priority document / DAS code (Para. 4) are applicable to applications in which the deadline set by an Examiner passes or the priority period expires on or after April 1, 2021.

More detailed information on the above is available at the following pages on the JPO website (Japanese only):

https://www.jpo.go.jp/system/laws/rule/syoreikaisei/isho/ishoho-20210331.html

https://www.jpo.go.jp/news/shinchaku/event/seminer/text/isho_kaisei_shiryo_2020.html