The Ministry of Economy, Trade and Industry (METI) recently announced on its website that the Cabinet has approved the Bill for the Reform of the Patent and Design Acts, which will now be submitted to the Diet.
It is likely that the bill will be passed and that the reformed acts will be implemented in January or April 2020.
This article provides a summary of the changes to the Design Act.
Under the current Design Act, only graphic images which are recorded or displayed on articles (eg, computers or smartphones) are considered protectable designs.
Under the bill, the scope of what constitutes a protectable design is expanded to include graphic images which are not:
- recorded on articles but provided via computer networks; or
- displayed or shown on articles, such as images which are displayed on roads or walls.
However, graphic images which are unrelated to the function of, for example, machines, apparatuses and devices (eg, computer wallpapers or video game or movie images) cannot be protected.
On filing a design application, applicants must specify how the graphic image will be used.
The protection afforded to graphic images which are registered as designs will cover:
- "creating, using, providing graphic images of registered designs via communication networks, etc."; and
- "assigning, leasing, importing and exporting, etc., of (a) storage media bearing graphic images data and/or (b) machines, apparatus, devices etc. incorporating graphic images data".
Interior and exterior building designs
Under the current Design Act, designs of real estate or immovable property (eg, land or buildings) cannot be protected.
Under the bill, protectable designs include exterior and interior building designs. Interior building designs include shop, restaurant and office interior designs, among others.
The protection afforded to registered exterior and interior building designs covers the building's construction, use, assignment and lease.
Under the current Design Act, an applicant can file an application for designs (ie, related designs) which are similar to its prior applied-for or registered design (ie, the principal design) before the principal design's publication in the Design Official Gazette. Design applications are generally published eight months after the application date.
Under the bill, applicants can file applications for related designs for 10 years from the principal design's application or priority date. This means that the period in which applications for related designs can be filed will be extended.
In addition, under the bill, applicants can file applications for designs which are similar only to their related designs in order to protect variant designs more effectively.
Under the current Design Act, the duration of a design right is 20 years from the registration date. Under the bill, this will be extended to 25 years from the application date.
Under the current Design Act, an application must be filed for each design. Applicants cannot file one application for two or more designs.
However, under the bill, applicants can file one application for multiple designs. According to the February 2019 report of the Design Subcommittee of the METI Industrial Structure Council IP Committee, the number of designs which can be covered by one application will be limited (as is the case for international applications under the Hague Agreement). However, there may be no requirements for including multiple designs in one application.
Under the current Design Act, if a third party manufactures or imports the main components of a finished product for which a design right exists, such manufacturing or importing will not constitute design infringement because the protection of the design right cannot be extended to individual components.
Under the bill, a third party's manufacturing or import of such a component may be deemed indirect infringement under certain conditions. This will enable registered designs for finished products to be protected more effectively.
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.