Topic 5: Some Key Issues for Consideration in a National IP Strategy Industrial Designs for Value...

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)

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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

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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

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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)

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◆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

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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

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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.

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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)

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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.

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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.

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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.

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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.

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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.

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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

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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

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I. Japanese Design Registration System

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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)

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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

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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

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“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

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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

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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

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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

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◆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

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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)

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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

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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

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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

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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

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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

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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

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“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

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“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)


Such a design

method is well known.

Source: The JPO

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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


Source: The JPO

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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

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- 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

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Related DesignsRelated DesignsPrincipalPrincipalDesignDesign

Related DesignsRelated DesignsPrincipalPrincipalDesignDesign

“vacuum cleaner”

“refrigerator”

Examples of related designs

Source: The JPO

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“ball-point Pen”

Reg. 1199219 1199457 1199459 1199461 1201746 1199458 1199460 1199462

PrincipalPrincipalDesignDesign

Related DesignsRelated Designs

Source: The JPO

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- 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

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II. Content of Recent Amendment

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Term of design right is extended. (20 years after registration)

Motorcycle Beverage container

1. Extending of the term of right

Source: The JPO

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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

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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

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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

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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

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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.)

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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)

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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

Topic 5: Some Key Issues for Consideration in a National IP Strategy Industrial Designs for Value...

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