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Topic 5:Topic 5:Some Key Issues for Consideration in a Some Key Issues for Consideration in a
National IP StrategyNational IP StrategyIndustrial Designs for Value AdditionIndustrial Designs for Value Addition
Oct 27-28, 2009WIPO ASIA-PASIFIC Conference on national Intellectual Property Strategies for DevelopmentManila, Philippine
YUASA AND HARALAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING
Shinjiro OnoYuasa and Hara
(Former Deputy Commissioner Japan Patent Office)
2
Contents
1. Roles of Design and its Registration
2. History of Design Policy in JapanG-Mark System
3. Protection of DesignJapanese Design Registration System
4. Outstanding issues with respect to IPRs, which require registration in a non-substantive examination country
3
Roles of Design and its Registration
1. Discourage competitors from marketing the same and similar products
2. Economical and easy means of preventing copying products (counterfeit goods)
Means to add high value to products and to differentiate products, especially in a market flooded by alternative products or dominated by mature technology
4
Gold PrizeGold Prize TakaratomyTakaratomy i-SOBOTi-SOBOT RegistrationRegistration No.1309129No.1309129
Gold PrizeGold Prize Sony HandycamSony Handycam HDR-TGIHDR-TGI
Registration No.Registration No. 13414771341477
Grand PrizeGrand Prize ToyotaToyota iQiQ Registration No.Registration No.13276771327677
FY2008 Good Design Award (G-Mark)
5
◆FY 2003 SME Special Prize Global Market including Museum of Modern Art (MoMA) N.Y. Shop
◆The Development Bank of Japan (DJB) lent 10 million yen loan on registered designs of Animal Rubber Band in January 2007.
Example of value addition by design“Animal Rubber Band” (h concept co., ltd.)
Registration No.1244654Registration No.1244654Registration No.1244650Registration No.1244650
6
Example: Role of design registrationPrevention by Customs Office of importation of counterfeit productsSharp AQUOS
Registration No.1127562
Sharp AQUOSRegistration No.1127562
Counterfeit product
Counterfeit product
7
Purpose of Design Protection
• Japanese Design Law*• Section 1• The purpose of this Law shall be encourage
the creation of designs by promoting their protection and utilization so as to contribute to the development of industry
*Design Law was first enacted in 1988. Current Law was enacted in 1959 and
amended many times.
8
History of Design Policy in Japan Design Promotion by the
Government (MITI)
Action against design copying Promotion of exports
• 1957 Establishment of Export Inspection Law G-Mark started (privatization in 1998)
• 1958 Establishment of Design Promotion Office Establishment of Design Promotion Council
(-’98)
• 1959 Establishment of Exported Product Design
Law (Law against design copying)
9
History of Good Design Awards(The G-Mark system) in Japan-
1Foundation of the System
• The purpose of “G-Mark system (formerly “Good Design Selection System” by Ministry of International Trade and Industry (MITI) – sponsored until 1997) can be summarized as “attaining Improvement in quality of lives and advancement of industry through design.
• G-mark system was established in 1957 against a background of problems regarding international intellectual property rights, specifically in connection with copied merchandise.
10
History of Good Design Awards(The G-Mark system) in Japan-
2
Promotion of Export
• In 1963 the G-Mark system changed over to a system open to general submission.
• The MITI stated its clear objective of using design to encourage exports.
• Japanese exports obtained a good market share on account of outstanding quality and low cost; but originality of design was not emphasized.
11
History of Good Design Awards(The G-Mark system) in Japan-
3
Seeking “Superiority Designed Products”
• In the 1970s, as industry underwent major structural change, electric goods and electronic devices leaped to the forefront to replace furniture, interior goods and daily sundries, which had until then been the main products bearing G-Mark logo.
• In 1980, the Grand Prize, Categorize Prize and Long Selling Good Design Prize (15-years, now reduced to 10 years) were added to the G-Mark System to single out products leading the way in Japanese design innovation.
12
History of Good Design Awards(The G-Mark system) in Japan-
4Ensuring ”Quality of Life”
• In 1984, the range of products considered for G-Mark status was expanded to encompass” all industrial goods.”
• The G-Mark system adopted the objective of “ensuring quality in all aspects of life”, and toward this end incorporates design in capital goods, healthcare, education, and the public sector.
13
History of Good Design Awards(The G-Mark system) in Japan-
5
Ensuring “New International Standard”
• In the 1990s, the G-Mark system adopted its next objective of global standards in terms of interactive design, universal design, and ecological design.
• In 1998, the G-mark system was privatized as a result of administrative reform.
14
2004 2005 2006 2007 2008 2008*
Japan (JPO) 40,756 39,254 36,724 36,544 33,569 88.2%
US (USPTO) 24,022 25,635 25,511 27,737 27,781 53.4%
EU (OHIM) 53,892 (14,051)
63,648(16,817)
69,279(17,628)
77,237(19,213)
72,756(18,751)
77.9%
China (SIPO) 110,849 163,371 201,322 267,668 312,904 95.4%
Korea (KIPO)
42,879 46,615 52,879 55,662 56,296 93.0%
Table 1. The number of Design applications and ratio of Domestic applications
Table 2. The number of Designs applications in Philippines
*Ratio of Domestic applications
2004 2005 2006 2007 2008
Total* 1,012 1,265 961 865 1,221
Foreign 476 619 485 434
Japan 119 113 105 112 205*Source: ECAP II HP and the county report of WIPO long term trainee at the JPO
15
I. Japanese Design Registration SystemFeatures of Japanese Design Registration
System
II. Content of Amendment1. Extending of the term of right2. Clarifying the scope of the similarity of
designs3. Enhancing the protection of screen
designs4. Enhancing the protection of related and
partial designs5. Enhancing the protection of secret designs6. Facilitating application system
Protection of Design
16
I. Japanese Design Registration System
17
Intellectual Property Act
IP Related Laws
Laws for protecting intellectual creations
Unfair competition prevention law
Trademark law Trademark
Shape of goods,Well-known indication regarding goods,Trade secret, Geographical indication
Commercial law Trade name
Copyright law
Utility model law
Design law
Patent law Invention
Utility model
Design
Creative work
Act concerning the circuit layout of a semiconductor integrated circuit Circuit Layout of a semiconductor Integrated circuit
Seed and seeding law New plant variety
Laws for protecting credit maintenance
Source: The Japan Patent Office (JPO)
18
Features of Japanese Design Registration System
1) Substantive Examination Principle2) First-to-file Principle3) Subject of Protection4) Requirements for Registration (Registrability):
-1. Industrial Applicability-2. Novelty (Publicly-known in the world, Absolute Novelty) -3. Creativity (Creative Difficulty) etc.
- One application per design - Duration: 20 years
5) Unique Systems: -1. Partial Design System -2. Design for a Set of Articles
-3. Related Design System -4. Secret Design System
Source: The JPO
19
Substantive examination system: Japan, US, Korea, Vietnam, etc.
Non-Substantive Examination system: OHIM, France, Germany,
Italy, China etc.
1. Substantive Examination Principle
2. First-to-file Principle
In order to grant the design registration in Japan it is necessary to file an application subject to a formality to the Japan Patent Office, and only the first applicant can be granted design right.
Source: The JPO
20
“Design” in this law means a shape, pattern or color or any combination thereof in an article (including part of an article) which produces an aesthetic impression on the sense of sight (Sec. 2(1)).
-- should be admitted as article
Cell phone Fire works
Movable toy
Tied point of tie
3. Subject of Protection
-- the shape of article itself
Source: The JPO
21
Design should be mass productive by Industrial
methods. Fine Arts like painting and sculpture or
natural objects cannot be protected under the
design law.
Fine Art
i.e.)
4. Requirements for Registration -1. Industrial applicability
bonsai
Source: The JPO
22
Examiners conduct search not only within the range
of prior arts in Japan but also look into those in
foreign countries to judge whether design in
question has novelty and creativity.
4. Requirements for Registration -2. Novelty
Source: The JPO
23
Rejected design
(Design B)
Registered design
(Design A)
Registered design
(Design C)
Reje
ctio
n
RegistrationNo. 829945
Application No. S60-026559
RegistrationNo. 744780
Case: How to judge similarity ?
Source: The JPO
24
◆Overall shape
◆Front grill and Head light
◆Fender
◆Rear Gate, Combination Lamp and Pillar
Similar points and Different points among designs A, B and C
Design A Design B Design C
Source: The JPO
25
Purpose: To raise the shared awareness of IPR
To prevent disputes before they can occur
To raise awareness of the need to respect the IPR of others while advancing the independent development of technology
To expand the presence of motorcycles and contributing to the growth of the motorcycle industry
• JAMA: Japan Automobile Manufacturers Association, Inc• CAAM: China Association of Automobile Manufacturers
Promotion of JAMA-CAAM Motorcycle IndustryIntellectual Property Rights (IPR) Cooperation Project in China (February 2002 – March 2004)
26
Step 1: Design Similarity Study Workshop
To promote shared awareness of the knowledge required to understand design similarity
To avoid infringement of design rights
Step 2: Symposium on IPRTo achieve shared awareness of the need to protect IPR
Step 3: Study on IPR Management Methods in Japan
Project Profile-1
27
Discussed in 3 Groups
• Similarity Study on the basis of recent examples
• Study on Patentability
Results of JAMA-CAAM Motorcycle IPR Project
Second Design Similarity Study Workshop in Guangzhou (02.11.26 ~ 28)
Reference from JAMA
28
Projects Result of Step 1-3 for 2 years
• Participants over 800 persons
• Set up in-house IP management division10% to 60% of all participating companies
• Number of applications for IPR filed by Chinese motorcycle manufacturers steadily increase 2001 75 2003 638
Project Profile-2
29
Project Profile-3
Step 4: Establishment of Conciliation Body for Motorcycle IPR Disputes on March 19, 2004, mutually agreed by the China Chamber of International Commerce (CCOIC), CAAM and JAMA
Purpose: To achieve a prompt and economical
resolution
Three provisions: 1. The Consultation Consignment Agreement 2. List of Conciliators3. List of Motorcycle Experts
30
Results of JAMA-CAAM Motorcycle Industry
Intellectual Property Rights Project2002
J F M A M J J A S O N D2003
J F M A M J J A S O N D2004
J F M A
STEP 1Design SimilarityStudy Workshop
STEP 2Symposiums on Intellectual Property Rights
STEP 3Study on IntellectualProperty Rightsmanagement methodsin Japan
STEP 4Establishment ofDispute ConciliationBody
1st workshop
Apr.22-25Tianjin
2nd workshop
Nov.26-28Guangzhou
3rd workshop
Nov.25-28Wenzhou
1st symposium
Jun.14Beijing
2nd symposium
Sep.19Beijing
1st study session
Oct.21-25Tokyo, Hamamatsu
2nd study session
Dec.8-12Tokyo, Motegi
Discussion by JAMA-CAAM “Conciliation Body” Study Committee Creation
1st meeting
Aug.29
2nd
Oct.29
3rd
Jan.23
4th
Jul.30
5th
Sep.20
6th
Nov.27
7th
Feb.5
Mar.19Launchingceremony
suspensionby SARS
CAAM: (China Association of Automobile Manufacturers)News from JAMA Motorcycle
April 2004
31
No design without creativity can be registered under design law, even though the design satisfys novelty requirement.
Eiffel Tower
i.e.)
4. Requirements for Registration -3. Creativity
Ornament of Eiffel Tower
Source: The JPO
32
“Paperweight”
Example 1: Design without creativity
Source: The JPO
Mere representation of the shape of a Green Pepper
Natural object
Publicly known design: Paperweight
Actual case of ordinary technique
Ordinarytechnique
33
“Gas Stove / Cooking Stove”
Publicly known design 2
Publicly known design 1
Ordinary replacement
“Cylinders are commonly used in this type of article.”(Tokyo High Court, Case No. 1990 (Gyo-ke) 148)
Example 2: Design without creativity
Such a design
method is well known.
Source: The JPO
34
Ordinary Combinatio
n
“Speaker Box”
Example where a speaker box is NOT recognized as constituted by collection of designs which were publicly known (middle) by ordinary technique of a person skilled in the art
[Reference]
Publicly known design: Speaker Box
Publicly known design: Speaker
Example 3: Design without creativity
Source: The JPO
35
5. Unique Systems: -1. Partial Design System
Reg. No. 1104550A short shoe
“Design” in this law means a shape, pattern or color or any combination thereof in an article (including part of an article) which produces an aesthetic impression on the sense of sight.” (Section 2(1))
Source: The JPO
36
- A design similar to the principal design is allowed to be registered as a “related design.”-- Applications containing such designs must be filed
before publication date of the principle design by the same applicant.
- The term of design right of a related design:
-- 20 years from the date of registration of the principal design right
- Fees, effects of the right:
-- Same as the ordinary application
5. Unique Systems: -2. Related Design System
Source: The JPO
37
Related DesignsRelated DesignsPrincipalPrincipalDesignDesign
Related DesignsRelated DesignsPrincipalPrincipalDesignDesign
“vacuum cleaner”
“refrigerator”
Examples of related designs
Source: The JPO
38
“ball-point Pen”
Reg. 1199219 1199457 1199459 1199461 1201746 1199458 1199460 1199462
PrincipalPrincipalDesignDesign
Related DesignsRelated Designs
Source: The JPO
39
- Contents of the registered design may be kept secret without being published in the Design Gazette
- Maximum period:
3 years from the date of registration - Protecting the registered design against
imitation by third parties before launched to (launch into) the market
- Request must be submitted at the time of
filing the design application
5. Unique Systems: -4. Secret Design System
Source: The JPO
40
II. Content of Recent Amendment
41
Term of design right is extended. (20 years after registration)
Motorcycle Beverage container
1. Extending of the term of right
Source: The JPO
42
2. Clarifying the scope of the similarity of designs
The basis of judgment on the similarity of
designs is made clear to be a sense of aesthetic
of people who buy the relevant goods
(i.e. consumers and industrial buyers).
Source: The JPO
43
3. Enhancing the protection of screen designsSubject matter to be protected by Design Law is enlarged for designs in the operating screen of display of home information appliances, etc. (A screen design other than initial screen and a screen shot design displayed on a separate display unit are newly protected)
<Examples of screen designs to be newly protected>
W
S
Setting screens of
digital cameras
Operation screens of video
recording / play back devices
Source: The JPO
44
4. Enhancing the protection of related and partial designs The time limit in filing an application for design variations (related designs) and for the designs of components and part of an article (partial designs) is extended. (Before: Acceptable on the filing date of a principal design or on the filing date of a design for a whole article. Now: Acceptable until the issuing date of the Design Gazette.)
Source: The JPO
<Example of partial designs (current)>
Filing on the same date
Automobile(the whole design)
Headlight(Partial design of the whole automobile)
<After amendment> By the issue of Gazette(Application)(Application)
Automobile HeadlightLater
45
Additional occasion is provided for the request of
using the secret design registration system (in
which the registered design is not made public for
a period up to three years). (Before: Acceptable
on the filing date only. Now: Acceptable on the
date of registration fee payment, as well.)
5. Enhancing the protection of secret designs
46
6. Facilitating application system
The time limit to submit certificates to avoid loss
of novelty for filed design application is extended
in case where the design of the applicant himself
has been publicly known.
(Within 30 days from the filing date.)
47
Outstanding issues with respect to IPRs, which require registration in a non-substantive examinatio
n country No registration No enforcement
File similar or identical applications by local companies on the basis of IPR publication of original applications or related publications Unfair Competition Law is limited Need for proactively filing
Utility model and design patent applications are registered without substantive examination Safe guards are necessary such as, easier way to invalidate them or prerequisite for enforcement (such as a warning in the form of a report of a technical opinion under Japanese Law)
48
Thank youThank you- Thank you for your kind attention- Thank you for your kind attention
- I would be pleased to answer any questions- I would be pleased to answer any questions
- You may contact me at:- You may contact me at:[email protected]@yuasa-hara.co.jp
URL: http://www.yuasa-hara.co.jpURL: http://www.yuasa-hara.co.jp
YUASA AND HARALAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING