1. Expansion of the subjects of protection (Articles 2, 8 and 8-2)
1-1 Graphic Image Designs (Article 2)
(1-1-1) Graphic Image Design itself, separated from the article (New)
It is required that:
(i) the subject matter be used for operation of an equipment (“Operation Image”), and/or
(ii) the subject matter be displayed as a result of the equipment performing its function (“Display Image”).
It does not matter whether or not the data to display the relevant graphic image is installed into the article or what kind of things the graphic images are displayed on. For example, the data may be stored on the Cloud, and the graphic images may be displayed on a wall or a road.
(1-1-2) Design including a graphic image on a screen as a part of the article/building which is displayed on the display part of the article/building
It is required that:
(i) graphic image be used for the operation of equipment to perform the function of articles/building, and/or
(ii) graphic image be provided on a display necessary to serve the function of the article/building.
This is limited to graphic images recorded on an article or building and shown on the display part of the article or building.
Media content such as graphic images of TV shows, graphic images of movies or games, landscape photographs, etc. are not found to be designs under the Design Act.
1-2 Building designs (Article 2) (New)
Subject matter that meets all of the requirements (i) and (ii) as below:
(i) Land fixtures, and
(ii) Artificial construction (including civil engineering construction).
This includes any landform such as a flat surface or slope. It also includes the bottom of a body of water such as a seabed or lakebed.
An object continuously fixed and used on the land which also cannot be moved arbitrarily.
The definition has a broader meaning than the term used in the Building Standards Act and refers to objects that are constructed which include the civil engineering construction. For those constructions whose internal configurations are visible under the normal conditions of use, the internal configurations are also included.
Commercial Buildings, Residences, Factories, Stadiums, Bridges, Chimneys
1-3. Design for a set of articles (Article 8) (Expanded)
Subject matter meets all of the requirements (i), (ii), and (iii) as below:
(i) The subject matter stated in the column of “Article to the design” of the application is designated to the Ordinance of the Ministry of Economy, Trade and Industry,
(ii) The subject matter be a combination of articles, buildings, and/or graphic images used at the same time, and
(iii) The subject matter be coordinated as a whole.
(1-3-2) Partial designs for a set of articles can be registered. (New)
(1-3-3) Not only the combination of article designs, but also the combination of building designs, the combination of graphic image designs, and the combination of different kinds of designs can be registered. (New)
(1-3-4) The scope of the designs which can be registered as Designs for a Set of Articles was very limited. Based on the requests by users, it has been expanded, for example, as follows.(Expanded)
A set of buildings/graphic images (New) <---- (before) none
A set of processed foods (New) <---- (before) none
A set of clothing (New) <---- (before) a set of underwear
1-4. Interior designs (Article 8-2) (New)
Subject matter is required:
(i) to be the inside of shops, offices, or other facilities,
(ii) to consist of multiple articles, buildings, or graphic images under the Design Act, and
(iii) to consistently create an aesthetic impression as the entire interior.
(1-4-2) If the subject matter is designed for people to spend some time therein, it is determined as “shops, offices, or other facilities”.
(1-4-3) This excludes the scope where the users of the relevant facility will not recognize by the naked eye under the normal conditions of use in view of the use and the function of the facility such as when they only enter for the purpose of maintenance.
Shops, Offices, Accommodation facilities, Medical facilities, Entertainment facilities, Residences, Passenger ships, Railroad cars
2. Enhancement of related design system (Article 10)
Protection of a registered design covers the same design and its similar designs (Article 23). The related design system is an exception to double patenting for the owner of a design right. Namely, a design (principal design) and its similar design (related design) of the same owner can be registered (Article 10). Before the amendment, the related designs must be similar to only one principal design, and the related design can be filed until the registration of the principal design is published. The expiration date of the related design right is the same as that of the principal design right.
(2-2) Newly defined
(i) Designs which are similar only to a related design can be registered (D3, D4).
(ii) A related design can be filed within ten years from the filing date (priority date, if applicable) of the basic design D1.
3. Change to protection period for design rights (Article 21)
Protection period for design rights is 25 years from the application date. (New)
(Previously: 20 years from the registration date)
Protection period for related design rights is 25 years from the application date of the basic design. (New)
(Previously: 20 years from the application date of the principal design)
4. Higher standard of creative difficulty (Article 3(2))
(4-1) Materials as the basis of the determination of creative difficulty has been expanded. Specifically, in addition to the shapes etc., “publicly known” in Japan and foreign countries prior to the filing of the application, the shapes etc. and the graphic images that “described in a distributed publication” and “had been available to the public through telecommunication lines” were added.
5. Expanded scope of protection from indirect infringement (Article 38)
(5-1) In light of expanding protection of the design right, the scope of indirect infringement has been expanded to actions of providing parts with malicious intent (while knowing that the design of the parts are the same as or similar to the registered design and that the parts will be used for infringement).
(5-2) For example, regarding anti-counterfeiting measures, manufacturing or importing products which have been broken up into parts for the purpose of avoiding crackdowns will also be punishable.
6. Revision of determination of damages (Article 39)
(6-1) Determination of damages for any portion beyond rights-holder’s production/sales capacity (sum equivalent to licensing fee)
Before the amendment, damages for any portion beyond rights-holder’s production/sales capacity were not allowed. By the amendment, such damages have become allowed as “sum equivalent to licensing fee” assuming that the rights-holder provided licensing to the infringer.
(6-2) Increase in “sum equivalent to licensing fee”
It is clearly stated that in the court’s determination of damages based on “sum of equivalent to licensing fee” that the patent is valid and that an infringement has occurred can be taken into consideration to increase the “sum equivalent to licensing fee”.
7. Simplification of application procedures (Article 7)
[Note] Did not come into force on April 1, 2020, but coming into force within two years from May 17, 2019
(7-1) Introduction of system whereby multiple designs can be bundled into a single application
Overview of Revision of Examination Guidelines for Design
Reviews of the Patent Litigation System and the Design and Trademark Systems