Changing the design law

Possible revisions to the design law were discussed on November 19, 2012 at the design system subcommittee, established under the IP Policy Committee of the Industrial Structure Council; the first part of that discussion was about whether Japan should sign the Geneva Act of the Hague Agreement on the international registration of industrial designs.

The subcommittee agreed that it should hold further talks and accordingly, at subsequent meetings held throughout 2013, the subcommittee discussed such issues as the advantages of using a single application for multiple designs, what action Japan should take regarding the period of deferred publication, and what action Japan should take regarding self-designation.

The subcommittee also recognised the advantages to Japanese companies in general of Japan signing the Locarno Agreement, which establishes an international classification for industrial designs. That was because signing that agreement would provide an effective prior-art search tool for Japanese companies conducting global business activities.

"In order to promote overseas business by Japanese companies, it is necessary to protect their products not only by patents but also by design rights."

As for enhancing the protection of graphic image designs, the subcommittee’s secretariat proposed to introduce into Japan’s classification of designs a new category—information technology (IT) equipment—to include personal computers, smartphones and other such IT-related equipment and devices of all types.

However, some subcommittee members expressed concern about (a) vagueness in the scope of the description of goods; (b) increasing the burden on applicants of the prior-art searches necessary to avoid engaging in actions that would or might constitute infringement; and (c) what conduct constitutes infringement.

Design systems

After discussing these concerns, and considering the opinions of IP people in industries in general, the subcommittee concluded that design systems as described below might be feasible.

The first would be a design system that, within the framework of the examination and registration of designs protects:

Graphic image designs displayed on a screen for every function of a software application, regardless of the type of IT equipment or device used to display those designs; and

As a part of the IT equipment or device used, operations image designs of software applications and the like that are displayed.

The second would be a mid and long-term design system that alleviated the burden of prior-art searches that are necessary to avoid infringement, ie, a design system that attaches importance to early registration of designs without requiring any substantive examination, such as the systems used by the Office for Harmonization in the Internal Market and European countries.

The subcommittee also discussed the need for a registered designs search tool that would alleviate the burden of prior-art searches that are necessary to prevent infringement.

Our view on this subject is that in order to promote overseas business by Japanese companies, it is necessary to protect their products not only by patents but also by design rights, so as to maintain those companies’ ability to compete overseas. Demand by Japanese companies is increasing for Japan to sign the Geneva Act of the Hague Agreement, which simplifies the procedures relating to international design applications, and reduces the administrative work relating to design rights after registration.

In addition, the rapid increase in the number of smartphones and mobile terminals as a consequence of the expansion and development of IT technologies has increased the demands for protection for graphic image designs displayed on a screen and for international harmonisation of measures for protecting graphic image designs displayed on a screen.

The subcommittee’s discussions of revisions to Japan’s design system reflect those demands, and as a result Japan’s design law is sure to be revised in the near future.

Hiroshi Hari is a patent attorney at Kyosei International Patent Office. He can be contacted at: info@kyosei.or.jp