YUASA AND HARA LAW PATENT TRADEMARK DESIGN and

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

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 nonsubstantive examination country 1

Roles of Design and its Registration Means to add high value to products and to differentiate products, especially in a market flooded by alternative products or dominated by mature technology 1. Discourage competitors from marketing the same and similar products 2. Economical and easy means of preventing copying products (counterfeit goods) 2

FY 2008 Good Design Award (G-Mark) Grand Prize 　Toyota　i. Q 　　Registration No. 1327677　 Gold Prize 　Sony Handycam　HDR-TGI　　 　　 Registration No. 1341477 　 Gold Prize 　Takaratomy i-SOBOT 　 Registration No. 1309129 3

Example of value addition by design “Animal Rubber Band” (h concept co. , ltd. ) ◆FY 2003 SME Special Prize Global Market including Museum of Modern Art (Mo. MA) N. Y. Shop ◆The Development Bank of Japan (DJB) lent 10 million yen loan on registered designs of Animal Rubber Band in January 2007. Registration No. 1244654 Registration No. 1244650 4

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

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. 6

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) 7

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. 8

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. 9

History of Good Design Awards (The G-Mark system) in Japan-3 Seeking “Superiority Designed Products” • In the 1970 s, 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 GMark 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. 10

History of Good Design Awards (The G-Mark system) in Japan-4 Ensuring ”Quality of Life” • In 1984, the range of products considered for GMark 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. 11

History of Good Design Awards (The G-Mark system) in Japan-5 Ensuring “New International Standard” • In the 1990 s, 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. 12

Table 1. The number of Design applications and ratio of Domestic applications 2004 2005 2006 2007 2008* Japan (JPO) 40, 756 39, 254 36, 724 36, 544 33, 569 88. 2% US (USPTO) 24, 022 25, 635 25, 511 27, 737 27, 781 53. 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, 849 163, 371 201, 322 267, 668 312, 904 95. 4% Korea (KIPO) 42, 879 46, 615 52, 879 55, 662 56, 296 93. 0% *Ratio of Domestic applications Table 2. The number of Designs applications in Philippines 2004 2005 2006 2007 2008 1, 012 1, 265 961 865 1, 221 Foreign 476 619 485 434 Japan 119 113 105 112 Total* 205 *Source: ECAP II HP and the county report of WIPO long term trainee at the JPO 13

Protection of Design 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 14

I. Japanese Design Registration System 15

Intellectual Property Act Laws for protecting intellectual creations Patent law Invention Utility model law Design law Copyright law Seed and seeding law IP Related Laws Act concerning the circuit layout of a semiconductor integrated circuit Utility model Design Creative work New plant variety Circuit Layout of a semiconductor Integrated circuit Laws for protecting credit maintenance Unfair competition prevention law Shape of goods, Well-known indication regarding goods, Trade secret, Geographical indication Trademark law Trademark Commercial law Trade name Source: The Japan Patent Office (JPO) 16

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 17

1. Substantive Examination Principle Substantive examination system: 　　　 Japan, US, Korea, 　 Vietnam, etc. Non-Substantive Examination system: OHIM, France, Germany, Italy, China etc. 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 18

3. Subject of Protection “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 　-- the shape of article itself Movable toy Tied point of tie Source: The JPO 19

4. Requirements for Registration -1. Industrial applicability Design should be mass productive by Industrial methods. Fine Arts like painting and sculpture or natural objects cannot be protected under the design law. i. e. ) Fine Art bonsai Source: The JPO 20

4. Requirements for Registration -2. Novelty　 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. Source: The JPO 21

Case: How to judge similarity ? Registered design (Design A) Rejected design (Design B) Registered design (Design C) Rejection Registration No. 829945 Application No. S 60 -026559 Registration No. 744780 Source: The JPO 22

Similar points and Different points among designs A, B and C ◆Overall shape Design A Design B Design C ◆Front grill and Head light ◆Fender ◆Rear Gate, Combination Lamp and Pillar Source: The JPO 23

Promotion of JAMA-CAAM Motorcycle Industry Intellectual Property Rights (IPR) Cooperation Project　in China　(February 2002 – March 2004) u Purpose: Ø To raise the shared awareness of IPR To prevent disputes before they can occur Ø 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 24

Project Profile-1 u Step 1: Design Similarity Study Workshop To promote shared awareness of the knowledge required to understand design similarity To avoid infringement of design rights u Step 2: Symposium on IPR To achieve shared awareness of the need to protect IPR u Step 3: Study on IPR Management Methods in Japan 25

Second Design Similarity Study Workshop in Guangzhou (02. 11. 26 ~ 28) Discussed in 3 Groups • Similarity Study on the basis of recent examples • Study on Patentability Results of JAMA-CAAM Motorcycle IPR Project Reference from JAMA 26

Project Profile-2 u 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 27

Project Profile-3 u 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 u Purpose: To achieve a prompt and economical resolution u Three provisions: 1. The Consultation Consignment Agreement 2. List of Conciliators 3. List of Motorcycle Experts 28

Results of JAMA-CAAM Motorcycle Industry Intellectual Property Rights Project 2003 2002 2004 J F M A M J J A S O N D 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 1 st workshop 2 nd workshop 3 rd workshop Apr. 22 -25 Tianjin Nov. 26 -28 Guangzhou Nov. 25 -28 Wenzhou 1 st symposium 2 nd symposium Jun. 14 Beijing Sep. 19 Beijing suspensi on by SARS 1 st study session 2 nd study session Oct. 21 -25 Tokyo, Hamamatsu Dec. 8 -12 Tokyo, Motegi Discussion by JAMA-CAAM “Conciliation Body” Study Committee Creation 1 st meeting 2 nd 3 rd Aug. 29 Oct. 29 Jan. 23 CAAM: (China Association of Automobile Manufacturers) 4 th 5 th 6 th 7 th Mar. 19 Launching Jul. 30 Sep. 20 Nov. 27 Feb. 5 ceremony News from JAMA Motorcycle April 2004 29

4. Requirements for Registration -3. Creativity No design without creativity can be registered under design law, even though the design satisfys novelty requirement. i. e. ) Eiffel Tower Ornament of Eiffel Tower Source: The JPO 30

Example 1: Design without creativity “Paperweight” Ordinary technique Mere representation of the shape of a Green Pepper Natural object Publicly known design: Paperweight Actual case of ordinary technique Source: The JPO 31

Example 2: Design without creativity “Gas Stove / Cooking Stove” Publicly known design 1 Such a design method is well known. Publicly known design 2 Ordinary replacement “Cylinders are commonly used in this type of article. ” (Tokyo High Court, Case No. 1990 (Gyo-ke) 148) Source: The JPO 32

Example 3: Design without creativity “Speaker Box” [Reference] Ordinary Combination Publicly known design: 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 Publicly known design: Speaker Source: The JPO 33

5. Unique Systems: -1. Partial Design System “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)) Reg. No. 1104550 A short shoe Source: The JPO 34

5. Unique Systems: -2. Related Design System - 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 Source: The JPO 35

Examples of related designs “vacuum cleaner” Principal Design Related Designs “refrigerator” Principal Design Related Designs Source: The JPO 36

“ball-point Pen” Principal Design Reg. 1199219 Related Designs 1199457 1199459 1199461 1201746 1199458 1199460 1199462 Source: The JPO 37

5. Unique Systems: -4. Secret Design System - 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 Source: The JPO 38

II. Content of Recent Amendment 39

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

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 41

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) <Examples of screen designs to be newly protected> W S Operation screens of video recording / play back devices Setting screens of digital cameras Source: The JPO 42

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. ) <Example of partial designs (current)> Filing on the same date Automobile (the whole design) 　　Headlight (Partial design of the whole automobile) <After amendment> (Application) Automobile By the issue of Gazette (Application) Later Headlight Source: The JPO 43

5. Enhancing the protection of secret designs 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. ) 44

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. ) 45

Outstanding issues with respect to IPRs, which require registration in a non-substantive examination country No registration No enforcement u 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 u 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) 46

YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING 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 47