News & Topics

[Basic rule]
According to the Japanese design patent law, if an applicant wishes to claim Novelty-Grace-Period (exception to lack of novelty so that the novelty is not lost despite a disclosure of the design open to the public), a Certificate providing facts proving a publication of a design which is the same as or similar to the design claimed in the application must be submitted within 30 days from the filing date in Japan.

[Old Act]
Before the revision of the Japanese Design Act, a Certificate providing facts proving publications had to be submitted for each and every disclosure of the design which is the same or similar to the application design.

[New Act]
For design applications filed on or after January 1, 2024 on which the revised Design Act came into effect, the Certificate needs to be submitted only for the first publication of the design. It is not necessary to submit the Certificate for the subsequent publications, provided that the designs in the subsequent publications are the same as or similar to the design in the first publication. If two or more publications are carried out on the earliest publication date, only the one selected by the applicant is subject to the Certificate.

[Tips]
Whether subsequently-published designs are “similar” to the firstly-published design is determined by an article and features of the designs. It is likely that two designs are recognized as “similar” when the difference is merely a color change, minor change of contour, or simple design variation. However, “similarity” between the firstly-published design and subsequently-published designs has to be carefully determined. If the Certificate is not submitted for subsequently-published designs and an examiner considers any of the subsequently-published designs as non-similar to the firstly published design, such subsequently-published design may be cited as a prior art. It would, therefore, be safer to submit the Certificate for subsequently-published designs if there is any doubt about the similarity with the firstly-published design.

NOTE:  The above change does not apply to utility patent applications, for which the Certificate providing facts proving publication must be submitted for each and every disclosure of the claimed invention.