1. Tomohiro(Tom) Nakamura Konishi & Nakamura Co-Chair, International ｌ Committee Japan Trademark Association(JTA) AIPLA Annual Meeting 2014 Pre-Meeting with Japan Practice Committee

2. 2 OVERVIEW 1 Join Hague Agreement Op. starts on Mid-April 2014 (expected) 2 Relax Requirement of Design of Digital Image ----- Continue Discussion! Stopgap: Will Amend Guideline of Exam.

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4. 4 Hague Direct JPO TOKYO GENEVE A US company Has Two Routes to Come.

5. WIPO Web Japan (US) S. Korea US Applicant WIPO International Bureau Not Through USPTO No Need US Application

6. WIPO International Bureau File Received Registered Published 6-months Formality Check

7. Published WIPO Int’l Bureau Japan S. Korea Singapore exam Notification of Allowance

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9. 9 NATIONAL HAGUE 6-months Grace Period Allowable 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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11. H07 Gyo KE 159 Connector Case 1 st Disclosure June 4, 2012 Filed Nov. 9, 2012 Dec. 10, 2012 Evidence 3 2 nd Disclosure July 18, 2012 Not identical to 1 st disclosure design Judges said no need statement on 2 nd disclosure. But……..

12. 7 Appeal for Reexamination 2011-14081 1 st Disclosure in US Sept 8, 2009 2 nd Disclosure in Japan Nov 2, 2009 Filed Mar 1, 2012 Mar 15, 2012 Evidence Not identical to 1 st disclosure design Judges said no need statement on 2 nd disclosure. But……..

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14. 14 NATIONAL HAGUE FA 6.0 months average Enforceable Right Standing Published THEN File & Register Immediately Published by WIPO Examine by JPO 6 Months Enforceable Right Stand No Enforceable Right in Japan Remain Confidential 6 Months Deferment Up to 36 months if request

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16. 16 Hague Official Gazette HOW DEAL BY EXAMINER IF EXTEND TO JAPAN?

18. 18 A1 Refuse Designation of Japan A2 Send Provisional Refusal; Lacking Formality of Drawings. A3 Send Provisional Refusal; Lacking Substantial Requirement “Design is Ambiguous”.

19. 19 A3: Supplement drawings, completing 6-dimention of design.

20. 20 A1 Refuse Designation of Japan A2 Send Provisional Refusal, Then Must Divide Design Each A3 Go Through without Objection!

21. 21 A3: Examiner ex-officio divides design by design. DM72794 DM72794-1 DM72794-2 DM72794-3 Examiner X Examiner Y Examiner Z Grant Refuse Grant

22. 22 CAN YOU USE SUCH CLAIM IN NATINAL APLICATION with JPO? CLAIM The ornamental design for a surface configuration of a vehicle, toy and/or other replicas, as shown and described. CLAIM The ornamental design for a surface configuration of a vehicle, toy and/or other replicas, as shown and described.

23. 23 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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26. 26 Hague: Lump-Sum in 5-years, Renewable Pay In-Advance, and Refundable Direct: Every 1-year, Pay After Grant

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29. 29 JPO Accepts, (Not Send Objection) But Government Fee Multiplies.

30. 30 How Protect in Japan?

31. 31 Locarno Classification Class 32 Graphic symbols and logos, surface patterns, ornamentation Hague: Applicable in Class 32 How is in National Phase?

32. 32 Dinosaur Prince of Design Act “Design is Shape, Pattern, Ornamentation, Color etc for Industrial Products” Article 2-1 Japan: Objection!

33. 33 Computer Generated Design Industrial Products

34. 34 Acceptable ****** Design for Cell Phone

35. 35 How Protect Downloadable Application?

36. 36 NO WAY EXCEPT Design for Cell Phone Unenforceable to DVD PLAYERS using same computer generated design, or consider Contributory Infringement.

37. 37 Hardware Manufacture Software Industry JPO

38. 38 Continue Discussion, As Stopgap Amend Guideline of Examination

39. 39 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.

40. 40 CONTACT Tom Nakamura, Konishi & Nakamura Tel: +81 52 229 1070 Fax: +81 52 229 1074 nakamura@ipworld.jp