Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

Many countries including Japan operate “grace periods” which allow an earlier disclosure not to be considered as a prior design to a subsequent design application.
The basic information provided here is about a grace period for disclosure in the Japanese design system.

1. Basic requirements

The basic requirements to apply a grace period for disclosure in the Japanese design system are:
(1) filing a design application within six months from the day of disclosure,
(2) a statement for seeking a grace period (exception to lack of novelty of design) in the request for design registration, and
(3) submitting a document proving the fact that the design can be applicable for a grace period with material evidence within thirty days from the filing date.

2. Period

As stated above, the time length of a grace period is six months from the day of disclosure.
The point to be noted here is that an application claiming priority has to be filed within six months from the disclosure in and out of Japan (even if the application has been applied to a grace period in a foreign county).

3. Situation of disclosure

The person having the right to obtain a design registration (a creator or anyone subsequently receiving the right of such creator) can seek a grace period when she/he or the person who received instructions from her/him disclosed the design, but NOT when the design is disclosed in IP gazettes.

4. Required documents and materials

A document proving the fact that the design can be applicable for a grace period *1 is needed which includes:
(1) information of date and place of disclosure, the person who disclosed the design and etc., and
(2) material evidence（e.g.. a picture of the design, a copy of the corresponding page of paper publication）.

When the creator, the person who disclosed the design and the applicant are different, a document may be needed to explain the relationship among them.

*1 a certification by a third party will be demanded depending on the situation, but it can be submitted later.

5. Multiple disclosures

It is sufficient to prove the earliest disclosure when multiple disclosures were done by the person having the right to obtain a design registration.

6. Our comments

As you may have noticed in the above parts, the unique points where attention should be paid are:
i ) a document proving the fact that the design can be applicable for a grace period with material evidence should be submitted within thirty days from the filing date,
ii ) there is no seeking for grace period when the design is disclosed in IP gazettes, and
iii) an application claiming priority has to be filed within six months from the disclosure in and out of Japan.

Also, please be noted that there is possibility that an application be objected by a third party’s prior disclosure.

HIROTA, Miho
AIGI Intellectual Property Law Firm