Japan IP News

DESIGN LAW REVISION

Major Points of Revisions

  1. Term of design registration is extended to 20 years
    Current Law: The term of a design registration is fifteen years from the registration date.
    Revised Law: The term of a design registration will be twenty years from the registration date.
  2. Protection scope expands to "image for operation"
    Current Law: Only an initial image displayed in a product is protected as "partial design."
    Revised Law: Any image after the initial image will also be protected as long as that image is used for operation of the product.
  3. Similarity test is performed based on "demand-side" standard
    Current Law: Similarity between a registered design and an accused product is determined based on the examiner’s discretion, i.e., either "suppliers-side standard" or "demand-side standard."
    Revised Law: Similarity will be determined by the demand-side standard, such as a common sense among consumers.
  4. Time limit for partial design application is relaxed
    Current Law: An applicant can file an application for partial design on the same day or before the applicant files an application for an entire design.
    Revised Law: The applicant can file an application for partial design even after filing the application for the entire design until an official gazette that depicts registration of the entire design is issued.
  5. Time limit for related design is relaxed
    Current Law: An applicant has to file an application for related design on the same day the applicant files an application for principal design.
    Revised Law: The applicant can file an application for related design after filing the application for principal design until an official gazette that depicts registration of the principal design is issued.
  6. Another chance is given for requesting secrecy
    Current Law: An applicant has to file a secrecy request for a design application at the time of filing.
    Revised Law: The applicant can also file a secrecy request when the applicant pays a registration issue.
  7. Time limit for grace period document is relaxed
    Current Law: An applicant should furnish a document for grace period application within fourteen days from the filing date.
    Revised Law: The applicant can furnish the document within thirty days from the filing date.
  8. Exportation is "working" of the registered design
    Current Law: Exportation is not "working" of the registered design.
    Revised Law: Exportation will be included in the working of the registered design.
    Current Design Law, Article 2(3) stipulates that manufacturing, using, assigning, leasing and importing, and offering for assignment or lease is "working of the registered design."
  9. "Retaining a product for assigning, releasing or exportation" is indirect infringement
    Current Law: Retaining a product for the purpose of assigning, releasing or exportation does not infringe the design right.
    Revised Law: Such retaining of a product will be indirect infringement of the design right.
  10. Penalty applied to infringers is enhanced
    Current Law: An infringer shall be jailed three years or less, or fined three million yen or less.
    Revised Law: An infringer shall be jailed ten years or less, and/or fined ten million yen or less.
  11. Penalty applied to legal persons is enhanced
    Current Law: A legal person shall be fined one hundred and fifty million yen or less if an employee of that legal person infringes someone’s design right in connection with the business of that legal person.
    Revised Law: The fine will be increased to three hundred million yen.