AIPLA Annual Meeting 2014
Pre-Meeting with Japan Practice Committee
Tomohiro(Tom) Nakamura
Konishi & Nakamura
Co-Chair, Internationalｌ Committee
Japan Trademark Association(JTA)
OVERVIEW
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• Join Hague Agreement
• Op. starts on Mid-April 2014 (expected)
• Relax Requirement of Design of Digital
Image ----- Continue Discussion!
• Stopgap: Will Amend Guideline of Exam.
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A US company Has Two Routes to Come.
Hague
GENEVE
JPO
TOKYO
Direct
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No Need US
Application
US
Applicant
WIPO Web
WIPO
International
Bureau
Not Through
USPTO
S. Korea
Japan
(US)
WIPO
International Bureau
Published
File
Received
Formality
Check
Registered
6-months
exam
S. Korea
exam
Singapore
exam
Notification of Allowance
Int’l Bureau
Published
WIPO
Japan
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6-months Grace Period Allowable
NATIONAL
HAGUE
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
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H07 Gyo KE 159 Connector Case
Judges said no need statement
on 2nd disclosure. But……..
1st Disclosure
June 4, 2012
Filed Nov. 9, 2012
2nd Disclosure
July 18, 2012
Dec. 10, 2012
Evidence
Not identical to 1st
disclosure design
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Appeal for Reexamination 2011-14081
Filed Mar 1, 2012
Judges said no need statement
on 2nd disclosure. But……..
1st Disclosure
in US
Sept 8, 2009
2nd Disclosure
in Japan
Nov 2, 2009
Mar 15, 2012
Evidence
1st
Not identical to
disclosure design
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NATIONAL
HAGUE
FA 6.0 months average
File & Register
Immediately
6 Months
Enforceable Right
Standing
THEN
Published by WIPO
Remain
Confidential
Published
No Enforceable
Right in Japan
Examine by JPO
6 Months
Deferment Up to 36
months if request
Enforceable Right Stand
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Hague Official Gazette
HOW DEAL
BY
EXAMINER
IF EXTEND
TO JAPAN?
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A1
A2
A3
• Refuse Designation of Japan
• Send Provisional Refusal; Lacking Formality of
Drawings.
• Send Provisional Refusal; Lacking Substantial
Requirement “Design is Ambiguous”.
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A3: Supplement drawings,
completing 6-dimention of
design.
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A1
A2
A3
• Refuse Designation of Japan
• Send Provisional Refusal, Then
Must Divide Design Each
• Go Through without Objection!
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A3: Examiner ex-officio
divides design by design.
DM72794
DM72794-1
Examiner X
Grant
DM72794-2
Examiner Y
Refuse
DM72794-3
Examiner Z
Grant
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CLAIM
The ornamental design for a
surface configuration of a
vehicle, toy and/or other
replicas, as shown and
described.
CAN YOU USE
SUCH CLAIM IN
NATINAL
APLICATION
with JPO?
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A1
•You Can.
A2
•You Can’t.
What is Design?
US: 35 U.S35 U.S.C. 171 Patents for designs
Whoever 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, Renewable
Pay In-Advance, and Refundable
Direct:
Every 1-year, Pay After Grant
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JPO Accepts,
(Not Send Objection)
But
Government Fee
Multiplies.
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How
Protect
in
Japan?
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Hague: Applicable in Class 32
Locarno Classification
Class 32 Graphic symbols and logos,
surface patterns, ornamentation
How is in National
Phase?
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Japan: Objection!
Dinosaur Prince of Design Act
“Design is Shape, Pattern,
Ornamentation, Color etc for
Industrial Products” Article 2-1
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Computer Generated Design
Industrial Products
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Acceptable
******
Design
for
Cell Phone
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How
Protect
Downloadable
Application?
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NO WAY EXCEPT
Design for Cell Phone
Unenforceable
to DVD PLAYERS
using same computer
generated design, or
consider Contributory
Infringement.
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Software Industry
Hardware
Manufacture
JPO
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Continue Discussion,
As Stopgap
Amend Guideline of
Examination
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Article 2(2) of Design Act
The 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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CONTACT
Tom Nakamura, Konishi & Nakamura
Tel: +81 52 229 1070 Fax: +81 52 229 1074
[email protected]
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