Exception to Lack of Novelty (Grace period in Japan )

When an applicant desires to have a design registered, the design is required to have novelty and creative difficulty.

Therefore, principally, a design cannot be registered if the design is disclosed prior to filing of an application for design registration.

However, an applicant may have the provisions on exception to lack of novelty applied to a design as an extreme measure, for example, in a case where the design was disclosed in an exhibition prior to filing an application for design registration, a case where the design was disclosed as a result of starting sales on the Internet, or a like case.

When the provisions on exception to lack of novelty are applied to a design for which an application for design registration is filed, the application for design registration will not be rejected by lack of novelty or creative difficulty due to the fact of disclosure described on a proving document submitted to the Japan Patent Office (JPO).

- The provisions on exception to lack of novelty cannot be applied to any design which has been published in a gazette such as a publication relating to an invention, a publication relating to a design, or a foreign publication.
- Unlike in cases where a priority is claimed, in cases where an exception to lack of novelty is applied to a design, no retroactive effect to the filing date (relevant date for examination) is produced. Therefore, if a third party discloses or files an application for the design or another design similar to the design, registration of the design may not be allowed.
- The regulations for exceptions to lack of novelty (grace periods)in Japan differ from those in Europe or the U.S. in which no procedure is required for application of an exception to lack of novelty. In Japan, at the time of filing an application, the applicant needs to explicitly state that for the application, the applicant is seeking application of an exception to lack of novelty.

Requirements for application of exception to lack of novelty
In order to have the provisions on exception to lack of novelty (Article 4(2) of the Japanese Design Act) applied, all of the following requirements (1) to (3) need to be satisfied.
(Note that disclosure against the will of the person having the right to obtain a design registration (Article 4(1) of the Japanese Design Act) is omitted here.)

(1) The design has fallen under the following design (i) or (ii) as a result of an act of the person having the right to obtain a design registration (the creator of the design or his/her successor in title).

(i) A design that was publicly known in Japan or a foreign country, prior to the filing of the application for design registration.
(ii) A design that was described in a distributed publication or that was made publicly available through an electric telecommunication line in Japan or a foreign country, prior to the filing of the application for design registration.

(2) The person having the right to obtain a design registration for the above design (1) has filed the application for design registration.

(3) The application for design registration has been filed within one year from the date on which the above design (1) was disclosed for the first time.

(Reference: JPO Examination Guidelines for Design)

Specific Procedures
In order to have an exception to lack of novelty applied, the following procedures (a) to (c) need to be taken.
(a) To file an application for design registration within one year from the date on which the design was disclosed.
(b) To submit a document stating that the applicant is seeking application of the provisions on exception to lack of novelty to the design, at the time of filing the application for design registration (Instead of submitting the document, it is possible to explicitly state, in the application form, that the applicant is seeking application of the provisions on exception to lack of novelty to the design).
(c) To submit a document proving that the requirements for application of the provisions on exception to lack of novelty are satisfied, within 30 days from the date of filing the application for design registration.

In the proving document, the following (1) to (4) are stated:
(1) the date on which the design is disclosed, (2) the place where the design is disclosed (URL in the case of the Internet), (3) a person(s) who disclosed the design, and (4) the content of the disclosed design.
Also, for example, the following is/are stated (submitted): photographs/images of the disclosed design, a relation between the applicant and the person(s) who disclosed the design, and/or the like.

Note that not only in a case where the design of the application for design registration has been disclosed but also in a case where another design similar to the design of the application has been disclosed, it is necessary to have the provisions on exception to lack of novelty applied.

(Reference) JPO Examination Guidelines for Design

Also, in a case where an application for a related design registration is filed, it is necessary to make sure to have the provisions on exception to lack of novelty applied to the related design.

(Reference: JPO Examination Guidelines for Design)

Our Advice
Even in cases where a new design was accidentally disclosed prior to filing an application for design registration, there may still be a chance to have the design registered if more than one year has not yet elapsed since the date of the disclosure. In such cases, if you contact us, our patent attorney will prepare an appropriate proving document after having a hearing with you for information on, for example, the fact of disclosure, the content of succession of the right to obtain a design registration, and the relation between the disclosed design and a design you would like to register.