https://www.tmi.gr.jp/uploads/2023/07/24/jptu_issue24.pdf#page=5

 

Contents of the Amendment

This article introduces a relaxation of procedural requirements for the exception to lack of novelty of a design which was a part of an amendment of the laws (hereinafter referred to as the "Amendment") and was approved by the Cabinet on March 10, 2023, as well as by the Diet on June 7, 2023.

Under the current Design Law, a 12-month grace period is available for a pre-filing disclosure if a design is made public as a result of an act of the person having the right to obtain a design registration (Design Act 4 (2)) provided that
a request for the exception to lack of novelty is made at the time of filing the application and a document stating the details of ALL pre-filing disclosures must be submitted to the Japan Patent Office (“JPO”) within 30 days of the date of filing the application (or the international publication date for international design application).

However, there existed the following issues with the current system:
(1) In the process of design development, numerous variations of a design are often created simultaneously, and these design variations are also often disclosed in marketing and product PR.
(2) In light of the developments of diversified and complicated sales and product PR methods through e-commerce sites and social networking services, it has become challenging to manage the disclosed information.
(3) For small and medium-sized enterprises, when using crowdfunding, designs need to be made public to attract investment before deciding to commercialize the product. Further, these enterprises tend to develop and manufacture the product in collaboration with external partners which increases opportunities for pre-filing disclosure during the development process.

In order to remedy these issues, the Amendment significantly eases the procedural requirements for the exception to lack of novelty such that only the very first pre-filing disclosure is required to be stated in the document.
More specifically, for example, under the current law, if a design is made public first at a fashion show and later disclosed on several social media and also through sales, it is mandatory to state all of these disclosures in the document to be entitled to the exception to lack of novelty. However, under the amended law, the disclosures other than the very first one (fashion show) may be omitted.

It is important to note that the design entitled to the exception is those that become public / disclosed due to the acts by the person / entity having the right to obtain a design registration, which will remain the same even after the Amendment. In other words, since the pre-filing disclosure in the publication or the database by the foreign IP Office is not subject to the exception, it is imperative that an application must be filed in Japan within the 6-month Convention priority period if a design is filed in foreign countries.

 

Conclusion

The Amendment was passed and enacted by the National Assembly on June 14, 2023. The amendment is expected to become in force in early 2024.
While we believe that the Amendment would significantly reduce the burden on the users, we should note that absolute novelty is one of the requirements for design registration and also that there are countries and regions where a remedy for pre-filing disclosure is not available.
Therefore, in principle, a design should be filed before disclosure, particularly when the users consider obtaining the design registrations abroad.
In the meantime, some countries (e.g., US and EU) do not necessitate any procedures for pre-filing disclosure which occurs within one year prior to filing an application.
We continue to closely monitor as to how the JPO would balance the needs and trends surrounding pre-filing disclosure and will introduce more details once the updated Japanese Design Guideline is available.