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Topic 5: Some Key Issues for Consideration in a National IP Strategy Industrial Designs for Value Addition Oct 27-28, 2009 WIPO ASIA-PASIFIC Conference.

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Presentation on theme: "Topic 5: Some Key Issues for Consideration in a National IP Strategy Industrial Designs for Value Addition Oct 27-28, 2009 WIPO ASIA-PASIFIC Conference."— Presentation transcript:

1 Topic 5: Some Key Issues for Consideration in a National IP Strategy Industrial Designs for Value Addition Oct 27-28, 2009 WIPO ASIA-PASIFIC Conference on national Intellectual Property Strategies for Development Manila, Philippine YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Shinjiro Ono Yuasa and Hara (Former Deputy Commissioner Japan Patent Office)

2 1 Contents 1.Roles of Design and its Registration 2.History of Design Policy in Japan G-Mark System 3.Protection of Design Japanese Design Registration System 4.Outstanding issues with respect to IPRs, which require registration in a non- substantive examination country

3 2 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

4 3 Gold Prize Takaratomy i-SOBOT Takaratomy i-SOBOT Registration No.1309129 Registration No.1309129 Gold Prize Sony Handycam HDR-TGI Sony Handycam HDR-TGI Registration No. 1341477 Registration No. 1341477 Grand Prize Toyota iQ Toyota iQ Registration No.1327677 Registration No.1327677 FY2008 Good Design Award (G-Mark)

5 4 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.1244650

6 5 Example: Role of design registration Prevention by Customs Office of importation of counterfeit products Sharp AQUOS Registration No.1127562 Counterfeit product

7 6 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.

8 7 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)

9 8 History of Good Design Awards (The G-Mark system) in Japan-1 Foundation 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.

10 9 History of Good Design Awards (The G-Mark system) in Japan-2 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.

11 10 History of Good Design Awards (The G-Mark system) in Japan-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.

12 11 History of Good Design Awards (The G-Mark system) in Japan-4 Ensuring 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.

13 12 History of Good Design Awards (The G-Mark system) in Japan-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.

14 13 200420052006200720082008* Japan (JPO)40,75639,25436,72436,54433,56988.2% US (USPTO) 24,02225,63525,51127,73727,78153.4% 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)110,849163,371201,322267,668312,90495.4% Korea (KIPO)42,87946,61552,87955,66256,29693.0% 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 20042005200620072008 Total*1,0121,2659618651,221 Foreign476619485434 Japan119113105112205 *Source: ECAP II HP and the county report of WIPO long term trainee at the JPO

15 14 I. Japanese Design Registration System Features of Japanese Design Registration System II. Content of Amendment 1. Extending of the term of right 2. Clarifying the scope of the similarity of designs 3. Enhancing the protection of screen designs 4. Enhancing the protection of related and partial designs 5. Enhancing the protection of secret designs 6. Facilitating application system Protection of Design

16 15 I. Japanese Design Registration System

17 16 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)

18 17 Features of Japanese Design Registration System 1) Substantive Examination Principle 2) First-to-file Principle 3) Subject of Protection 4) 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

19 18 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

20 19 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

21 20 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

22 21 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

23 22 Rejected design (Design B) Registered design (Design A) Registered design (Design C) Rejection Registration No. 829945 Application No. S60-026559 Registration No. 744780 Case: How to judge similarity ? Source: The JPO

24 23 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

25 24 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 Industry Intellectual Property Rights (IPR) Cooperation Project in China ( February 2002 – March 2004)

26 25 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 IPR To achieve shared awareness of the need to protect IPR Step 3: Study on IPR Management Methods in Japan Project Profile-1

27 26 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

28 27 Projects Result of Step 1-3 for 2 years Participants over 800 persons Set up in-house IP management division 10% 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

29 28 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 Conciliators 3. List of Motorcycle Experts

30 29 Results of JAMA-CAAM Motorcycle Industry Intellectual Property Rights Project 2002 J F M A M J J A S O N D 2003 J F M A M J J A S O N D 2004 J F M A STEP 1 Design Similarity Study Workshop STEP 2 Symposiums on Intellectual Property Rights STEP 3 Study on Intellectual Property Rights management methods in Japan STEP 4 Establishment of Dispute Conciliation Body 1st workshop Apr.22-25 Tianjin 2nd workshop Nov.26-28 Guangzhou 3rd workshop Nov.25-28 Wenzhou 1st symposium Jun.14 Beijing 2nd symposium Sep.19 Beijing 1st study session Oct.21-25 Tokyo, Hamamatsu 2nd study session Dec.8-12 Tokyo, 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.19 Launching ceremony suspension by SARS CAAM: (China Association of Automobile Manufacturers) News from JAMA Motorcycle April 2004

31 30 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

32 31 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 Ordinary technique

33 32 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) Example 2: Design without creativity Such a design method is well known. Source: The JPO

34 33 Ordinary Combination 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 Example 3: Design without creativity Source: The JPO

35 34 5. Unique Systems: -1. Partial Design System Reg. No. 1104550 A 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

36 35 - 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

37 36 Related Designs PrincipalDesign PrincipalDesign vacuum cleaner refrigerator Examples of related designs Source: The JPO

38 37 ball-point Pen Reg. 1199219 1199457 1199459 1199461 1201746 1199458 1199460 1199462 PrincipalDesign Related Designs Source: The JPO

39 38 - 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

40 39 II. Content of Recent Amendment

41 40 Term of design right is extended. (20 years after registration) Motorcycle Beverage container 1. Extending of the term of right Source: The JPO

42 41 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

43 42 3. Enhancing the protection of screen designs Subject 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) W S Setting screens of digital cameras Operation screens of video recording / play back devices Source: The JPO

44 43 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 Filing on the same date Automobile (the whole design) Headlight (Partial design of the whole automobile) By the issue of Gazette (Application) AutomobileHeadlight Later

45 44 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

46 45 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.)

47 46 Outstanding issues with respect to IPRs, which require registration in a non-substantive examination 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)

48 47 Thank you - Thank you for your kind attention - I would be pleased to answer any questions - You may contact me at: ono-ch@yuasa-hara.co.jp URL: http://www.yuasa-hara.co.jp YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING


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