tomohiro(tom) nakamura konishi & nakamura co-chair, international l committee japan trademark...
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DESIGN LAW REFOM IN 2014
Tomohiro(Tom) NakamuraKonishi & Nakamura
Co-Chair, International l CommitteeJapan Trademark Association(JTA)
MUST TO KNOW
NICE TO KNOW
AIPLA Annual Meeting 2014Pre-Meeting with Japan Practice
Committee
2
OVERVIEW
1• Join Hague Agreement• Op. starts on Mid-April 2014 (expected)
2
• Relax Requirement of Design of Digital Image ----- Continue Discussion!
• Stopgap: Will Amend Guideline of Exam.
WIPO Web
Japan (US)S. Korea
USApplicant
WIPO
International Bureau
Not ThroughUSPTO
No Need US Application
LOOK HAGUE FLOW
WIPOInternational
BureauFile R
eceived
Registered
Published
6-months
LOOK HAGUE FLOW
Fo
rmality
Ch
eck
Published
WIPOInt’l Bureau
Japan
S. Korea
Singapore
exam
exam
exam
Notification of Allow
anceLOOK HAGUE FLOW
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NATIONAL HAGUE
6-months Grace Period Allowable
MUST STATE simultaneously When Filing. You retained JP counsel, so he/she advise you.
MUST STATE simultaneously or after an International Filing within certain period since publication. You don’t retain JP counsel, you must be aware.
MUST Supplement Evidence of Disclosure within 30-days
MUST supplement evidence of disclosure within certain time
H07 Gyo KE 159 Connector Case
1st DisclosureJune 4, 2012
Filed Nov. 9, 2012
Dec. 10, 2012 Evidence
3
2nd DisclosureJuly 18, 2012
Not identical to 1st disclosure design
Judges said no need statement on 2nd disclosure. But……..
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Appeal for Reexamination 2011-14081
1st Disclosure in USSept 8, 2009
2nd Disclosure in JapanNov 2, 2009
Filed Mar 1, 2012
Mar 15, 2012EvidenceNot identical to 1st
disclosure design
Judges said no need statement on 2nd disclosure. But……..
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NATIONAL HAGUE
FA 6.0 months average
Enforceable Right Standing
Published
THEN
File & Register Immediately
Published by WIPO
Examine by JPO
6 Months
Enforceable Right Stand
No Enforceable Right in Japan
Remain Confidential
6 Months
Deferment Up to 36 months if request
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A1 •Refuse Designation of Japan
A2 •Send Provisional Refusal; Lacking Formality of Drawings.
A3 •Send Provisional Refusal; Lacking Substantial Requirement “Design is Ambiguous”.
Drawing: You Answer…
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A1 •Refuse Designation of Japan
A2 •Send Provisional Refusal, Then Must Divide Design Each
A3 • Go Through without Objection!
Unity of Appl icati on. You Answer…
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A3: Examiner ex-officio divides design by design.
DM72794
DM72794-1
DM72794-2
DM72794-3
Examiner X
Examiner Y
Examiner Z
Grant
Refuse
Grant
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Identi fy Arti cle Design Appl ied for
CAN YOU USE SUCH CLAIM IN
NATINAL APLICATION with JPO?
CLAIMThe ornamental design for a surface configuration of a vehicle, toy and/or other replicas, as shown and described.
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A1 •You Can.
A2 •You Can’t.
Identi fy Arti cle Design Appl ied for
What is Design?US: 35 U.S35 U.S.C. 171 Patents for designsWhoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.JP: Design Act Article 2(1) "Design" in this Act shall mean the shape, patterns or colors, or any combination thereof, of an article (including a part of an article, the same shall apply hereinafter except in Article 8), which creates an aesthetic impression through the eye.
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Hague:Lump-Sum in 5-years, RenewablePay In-Advance, and Refundable
Direct:Every 1-year, Pay After Grant
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COMPUTER GENERATED DESIGN
Locarno ClassificationClass 32 Graphic symbols and logos, surface patterns, ornamentation
Hague: Applicable in Class 32
How is in National Phase?
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COMPUTER GENERATED DESIGN
Dinosaur Prince of Design Act“Design is Shape, Pattern,
Ornamentation, Color etc for Industrial Products” Article 2-1
Japan: Objection!
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NO WAY EXCEPTDesign for Cell Phone
Unenforceableto DVD PLAYERSusing same computer generated design, or consider Contributory Infringement.
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Article 2(2) of Design ActThe shape, patterns or colors, or any combination thereof, of a part of an article as used in the preceding paragraph shall include those in a graphic image on a screen that is provided for use in the operation of the article (limited to the operations carried out in order to enable the article to perform its functions) and is displayed on the article itself or another article that is used with the article in an integrated manner.
My Idea: A Guideline reads:A graphic image on a screen includes those generated by post-installed software after purchasing articles.
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